Centre Ice Ltd. v. National Hockey League
T-986-92
Muldoon J.
7/12/93
21 pp.
Application for interlocutory injunction restraining defendants from passing off wares under name "Center Ice" or "Authentic Center Ice Collection" or any other colourable imitation of plaintiff's trademark "Centre Ice" within Alberta -- Since 1986 plaintiff using trade mark "Centre Ice" in connection with sale of sports clothing, operation of retail outlet specializing in sale of sports clothing, equipment in Alberta -- Extensively advertising, promoting trade mark, including advertisements in publications of defendant NHL and member clubs -- "Centre Ice" registered with Government of Alberta Consumer and Corporate Registry with regard to retail sporting goods since 1986 -- NHL unincorporated association whose members consisting of American and Canadian hockey teams -- Claiming ownership of trade mark "Center Ice", although not filing any evidence registered trade mark owner -- Plaintiff alleging confusion arising as result of defendants' use of "Center Ice" -- Defendant alleging plaintiff selling hard sporting goods and related services, non-licensed sports clothing (other than hockey jerseys), none of which labelled "Centre Ice" -- Application allowed -- Plaintiff raising serious question to be tried i.e. whether defendants' use of "Center Ice" over past couple of years violating Trade-marks Act, s. 7 -- Evidence showing use of trade name "Centre Ice" for six years and defendants recently using "Center Ice" in its advertisements for line of sports clothing -- Pleadings neither frivolous nor vexatious -- Plaintiff clearly showing allowing defendants to continue using trade name "Center Ice" will result in harm not compensable in damages -- Evidence as to irreparable harm must be clear and not speculative: Imperial Chemical Industries PLC v. Apotex, Inc., [1990] 2 F.C. 221 (C.A.) -- Uncontradicted evidence indicating confusion resulting from defendants' use of trade name "Center Ice" -- Destruction of goodwill constituting irreparable harm[cad 211]Trade-marks Act, s. 7(b) juxtaposing wares, services and business in condemning causing of confusion in unrestricted cross-reference, one to other -- S. 7(b) denouncing causing confusion between plaintiff's trade or business name and defendants' wares, goods and services, or vice versa -- Evidence indicating Centre Ice store in Calgary has excellent reputation in hockey equipment industry -- Also sufficient evidence defendants' use of trade name "Center Ice" confusing to public -- Evidence confusion resulting in members of public being discontent to learn plaintiff not carrying products advertised by defendants -- Rule in passing off cases that final consumer to be considered in determining whether tort of passing off committed -- Reasonable to conclude allowing defendants to continue using trade name "Center Ice" will result in confusion between litigants' products and loss of goodwill not compensable in damages -- Plaintiff undertaking to compensate defendant if injunction refused in final action -- Undertaking coupled with strong evidence of consumer confusion, loss of goodwill supporting grant of interlocutory injunction -- Defendants enjoined from passing off their wares by advertising or sales thereof in city of Calgary and that part of Alberta south thereof -- If broadcasting[qj] advertisements propagated within that area of southern Alberta, but evince range beyond it, or such broadcasting advertisements be propagated outside that area and range into it, they must be terminated within area by whatever means required -- Injunction not operating against French language version of "Center Ice", if exhibited alone -- Injunction extending to all broadcast and print media, i.e. CBC, CTV, Global, satellite reception rebroadcasting or propagation, Calgary Herald, Herald Neighbour -- Plaintiff may serve copies of injunction upon any of such persons, firms and corporations -- All of Alberta too extensive area in which injunction to operate based on plaintiff's customer list -- Balance of convenience, given size of defendants' enterprise compared to plaintiff's business, operating in favour of denying stay of operation of injunction pending appeal by defendants -- Federal Court Rules, C.R.C., c. 663, R. 469 -- Trade-marks Act, R.S.C., 1985, c. T-13, ss. 6, 7.