Nelligan O’Brien Payne gratefully acknowledges the contribution of Suzie Dunn, Student-at-Law in writing this blog post.
On November 13, 2015, Canadian Tire brought a claim against Wal-Mart and two Taiwanese manufacturing companies for an alleged violation of its intellectual property rights, including registered industrial design and trade-marks. The dispute centres on something that usually brings about holiday cheer at this time of year – outdoor Christmas lights.
In 2013, Canadian Tire developed a line of “uniquely shaped” outdoor clip-on Christmas lights, called “Quick-Clip” lights. According to the claim, these particular lights are designed to clip on to eaves, shingles, trees, bushes and railings. Once attached, the clip swivels to adjust the position of the light so the decorator can create the look they would like.
Canadian Tire’s Quick-Clip Lights:
The lights have been on sale under Canadian Tire’s Noma brand since 2013 and have been a substantially successful product for the company.
Canadian Tire is the registered owner of the Quick-Clip industrial design. This grants Canadian Tire a ten-year exclusive right to make and sell the lights, as well as ongoing use of the industrial design associated with the article.
Over the holiday season, Wal-Mart has begun marketing a similar clip on outdoor Christmas lights under the name “Quick Clip”, which, according to the Canadian Tire claim, are an “inferior, lightweight copy” of its Quick-Clip Christmas lights.
In their statement of claim, Canadian Tire also alleges that Wal-Mart is using a picture of the Noma lights on the Wal-Mart Christmas lights packaging in an attempt to “bait and switch” the customer.
By marketing this product, Canadian Tire claims that Wal-Mart is “trying to obtain a marketing ‘free ride’ … while avoiding product design and advertising costs that they would otherwise need to expend if they were attempting to legitimately create such public awareness and reputation in their own brand and products”.
Canadian Tire is seeking an injunction that would prevent Wal-Mart from producing or selling their Quick Clip lights, and to stop Wal-Mart from using packaging or advertising that would infringe on Canadian Tire’s intellectual property rights. They also seek damages, including any unjust profits Wal-Mart gained due to its infringement of the Quick-Clip industrial design and trade-mark, and $500,000 in punitive damages.
As of yet, Wal-Mart has not filed a statement of defence with the Federal Court. There is no set date for a settlement conference or hearings, but stay tuned to our blog as more details come to light.