Actual or Potential Damage required for a Statutory Passing-Off Claim
PharmaCommunications Holdings Inc. v. Avencia International Inc. 2009 FCA 144 (Sexton, J.A.)

May 5, 2009

Mr. Bigioni for the Appellant, PharmaCommunications Holdings Inc. (“PharmaCommunications Holdings”)
Dan MacKeigan for the Respondents, Avencia International Inc. et al. (“Avencia International”)

This was an appeal brought by the Plaintiff, PharmaCommunications Holdings, to set aside the Federal Court’s decision to dismiss thePplaintiff’s application for a declaration that the Defendants have engaged in statutory passing-off, as defined by Section 7(b) of the Trade-marks Act.

The Plaintiff, PharmaCommunications Holdings, alleged that it or its predecessors had used the unregistered trade-mark “PharmaCommunications” since 1982. The Defendant, Avencia International, registered the business name “Pharmacomm” in December 2004 and carries on business in Ontario under that name. Both parties provide services to the pharmaceutical industry. The Plaintiff made an application to the Federal Court for a declaration that, inter alia, the Defendants had engaged in statutory passing-off. The Federal Court dismissed the application because the Plaintiff failed to adduce any evidence of actual or potential damage. The Plaintiff appealed.

The issue on appeal was whether it is necessary in a statutory passing-off action for the plaintiff to establish actual or potential damage.

The Federal Court of Appeal referred to the Supreme Court’s decision of Ciba-Geigy v. Apotex Inc., [1992] 3 S.C.R. 120, which established a tripartite test for establishing passing-off: (1) the existence of goodwill, (2) the deception of the public due to a misrepresentation, and (3) actual or potential damage to the plaintiff. The Court confirmed that the requirement of actual or potential damage applies to both a common law and statutory passing-off case.

In this case, since the Plaintiff had not led any evidence of actual or potential damage, its claim for statutory passing-off failed. The Plaintiff’s appeal was dismissed.

By: Hung Nguyen, Deeth Williams Wall LLP