Cooper v. Barakett International Inc.
T-1569-92
Rothstein J.
21/10/92
35 pp.
Interlocutory injunctions-Application for interlocutory injunction restraining defendants from manufacturing, importing advertising, selling and distributing wares infringing plaintiffs' trade mark "Indian Motorcycle" -- Trade mark used in association with sweatshirts, rugger shirts, T-shirts, leather jackets, cotton jackets, baseball hats, mugs, wall clocks and key chains -- Plaintiffs using trade mark since 1986 on these wares -- Defendants commenced distribution of T-shirts and other apparel displaying design of Indian Motorcycle Manufacturing Company of Albuquerque, New Mexico pursuant to licence agreement in June 1992 -- Application allowed -- Defendants admit serious issues of validity and infringement to be tried -- Both plaintiffs' and defendants' wares using "Indian Motorcycle" -- Some evidence of confusion in minds of public or retailers arising as result of similarity of wording -- Evidence of irreparable harm must be clear and not speculative -- Infringement not of itself constituting irreparable harm where validity of trade mark challenged -- Defendants' wares available at substantially lower price than plaintiffs' -- Price difference likely reflecting difference in quality -- Defendants approaching retailers already selling plaintiffs' wares as familiar with mark to "get a lead" on these customers -- Inconsistent for defendants to attack validity of plaintiffs' trade mark as not distinctive, yet entered into licensing agreement to manufacture products bearing same words -- Nothing before Court indicating defendants financially able to pay damages if interlocutory injunction not granted and plaintiffs successful at trial -- Not all harm compensable in damages -- In some instances may be impossible to assess plaintiffs' damages with respect to loss of sales, goodwill, reduction in value of trade mark -- Clear evidence of harm not reasonably quantifiable and compensable in damages -- Plaintiffs would suffer irreparable harm if interlocutory injunction not granted -- Evidence plaintiff partnership will be out of business if interlocutory injunction not granted -- Defendants having several licensee opportunities -- No indication bankruptcy imminent for defendants if interlocutory injunction granted -- Fact defendants seeking delay of hearing of this application although buying period imminent indicating defendants less anxious to get back into market than plaintiffs -- As Court not satisfied as to adequacy of security posted pursuant to order granting interim injunction, considered balance of convenience -- Balance of convenience favouring plaintiffs -- Trade mark in use since 1986 -- "Indian Motorcycle" wares sold in Canada since May 1989 -- Mark registered in 1991 -- Plaintiff partnership's exclusive business distribution of "Indian Motorcycle" wares -- Attempting to establish market niche in higher end of market for "Indian Motorcycle" wares -- Defendants obtaining licence in 1992 -- Defendants' business consists of holding variety of licences and catering to fad markets -- Defendants, "with their eyes wide open", with knowledge someone else entered market utilizing trade mark "Indian Motorcycle" before them, chose to proceed regardless of consequences -- "Woods Defence" raising question of whether grant or refusal of interlocutory injunction would effectively dispose of action finally because nothing left on which in unsuccessful party's interest to proceed to trial -- On facts herein, "Woods Defence" favouring grant of interlocutory injunction -- If plaintiffs successful at this stage and defendants successful at trial, defendants merely losing marketing opportunity during time injunction in effect -- Free to return to market after trial -- If defendants successful herein, exclusivity of plaintiffs' trade mark lost -- No purpose in proceeding to trial to try to reestablish exclusivity after both lower and higher end markets flooded with "Indian Motorcycle" wares -- Preservation of status quo prior to time defendants entered market assuming plaintiffs acted without delay consistent with balance of convenience favouring plaintiffs -- Federal Court Rules, C.R.C., c. 663, RR. 317, 469 -- Trade-marks Act, R.S.C., 1985, c. T-13, ss. 2, 6, 7, 19, 20, 22, 52(4).