Supertek Canada Inc. v. Gatien, 2001 FCT 1433

Date: 20011224

Docket: T-2058-01

                                                                                                        Neutral Citation: 2001 FCT 1433

BETWEEN:

                                                            SUPERTEK CANADA INC.

                                                             IDEAVILLAGE.COM LLC

                                                                                                                                Plaintiffs/Applicants

AND:

                                                                 JACQUES GATIEN

                                                    LES PROMOTIONS ATLANTIQUES

                                                 INC./ATLANTIC PROMOTIONS INC.

                                                                                                                    Defendants/Respondents

                                                              REASONS FOR ORDER

[1]                 On December 17, 2001, I entertained an application by the Plaintiffs/Applicants who were seeking interim injunctive relief against the Defendants/Respondents with respect to the sale of a product under the trade name "The Perfect Edger" which may be described briefly as a painting device consisting of a small roller equipped with a handle and a removable plastic plate for the purpose of painting with precision around borders, edges and other architectural details. The Plaintiffs/Applicant's device is sold under the name "Edgemaster".

[2]                 By Order dated December 18, 2001, I denied the injunctive relief.

[3]                 Both parties to this dispute are engaged in the business of selling and distributing novelty items which are generally promoted through saturation television advertising.

[4]                 The product itself is not protected by patent or industrial design. The Plaintiffs/Applicants acquire it from a U.S. distributor while the Defendants/Respondents purchase the almost identical paint roller edger from the Far East.

[5]                 The Plaintiffs/Applicants in seeking the interim injunctive relief alleged that the Defendants/Respondents when introducing the product to the Canadian market in October or November, 2001, met with some success by taking advantage and relying on both spill-over advertising from the United States as well as Canadian television promotion which began in the fall 2001, which advertising made the product known to the public and contributed to its success in the marketplace.

[6]                 The Plaintiffs/Applicants alleged that by the Defendants/Respondents introducing its product "The Perfect Edger" they violated subsection 7(b) of the Trade-marks Act, R.S.C. 1985, c. T-13, which provides as follows:

7. Prohibitions - No person shall

[...]

(b) direct public attention to his wares, services or business in such a way as to cause or be likely to cause confusion in Canada, at the time he commenced so to direct attention to them, between his wares, services or business and the wares, services or business of another.

[7]                 The question that the Court had to decide on this motion was whether or not an injunction should issue. Before such relief can be granted, the Court must be satisfied that the three-part test enunciated by the Supreme Court of Canada in RJR-MacDonald Inc. v. Canada (A.G.), [1994] 1 S.C.R. 311, 54 C.P.R. (3d) 114, has been met.

1. Is there a serious issue to be tried?

2. Will the applicant suffer irreparable harm if the injunction is not granted?

3. Does the balance of convenience favour granting the injunction?

[8]                 I will be brief in these reasons primarily because should I elaborate with too much particularity into the arguments submitted by both the Applicants and Respondents, I could be dangerously close to resolving the ultimate issue on a less than adequate evidentiary basis.

[9]                 The urgency of the application arises by way of a submission that the product may have a short shelf life. This is contested by the Defendants/Respondents who agree that sales may be greater during the festive season but counter by suggesting that the product, if found useful, would certainly be available for sale in hardware department and paint stores year round.

[10]            Essentially, it was advanced that this is a passing-off case and the manner in which the goods of the Defendants/Respondents are presented was such as to convey in the minds of the consumers that they were the goods of the Plaintiffs/Applicants. Since the device itself is not protected by intellectual property law, it was advanced by the Plaintiffs/Applicants that the "get-up" or packaging used by the Defendants/Respondents may lead the ultimate consumer with the impression that the Defendants/Respondents' goods were those of the Plaintiffs/Applicants.

[11]            I noted that the television advertising which I viewed during the interim injunctive relief application failed to depict or denote the packaging or "get-up". No evidence whatsoever was offered with respect to confusion arising within the consuming public.

[12]            There may be a serious issue to be tried but I was not convinced that the Plaintiffs/Applicants would suffer irreparable harm. Though it was alleged by the President of the Plaintiffs/Applicants' company that the retailers to whom he had sold the device were concerned, there was no evidence of loss of sales or return of product.

[13]            In the case Centre Ice Ltd. v. National Hockey League et al, 53 C.P.R. (3d) 34, at page 48, the Federal Court of Appeal refers to the underlying principle in passing-off cases:

"The rule in passing-off cases, stated unanimously by the Supreme Court in Ciba-Geigy Canada Ltd. v. Apotex Inc. (1992), 44 C.P.R. (3d) 289 at p. 315, 95 D.L.R. (4^th) 385, [1992] 3 S.C.R. 120, is that the final consumer is to be taken into account in determining whether the tort of passing-off has been committed."

[14]            At page 52, the Court wrote as follows in dealing with irreparable harm:

"The Cutter decision was followed by the Imperial Chemical Industries Co. case in 1989 where it was said: "The jurisprudence in this court establishes that the evidence as to irreparable harm must be clear and not speculative."

[15]            There is no evidence of confusion, loss of goodwill or irreparable harm and without such evidence, as the Court of Appeal wrote in Centre Ice, supra, "even if loss of goodwill through the use of a confusing mark was shown, a case for irreparable harm would not have been made out because such loss could be fairly compensated for in damages".

[16]            The application for injunctive relief is denied.

     JUDGE

OTTAWA, Ontario

December 24, 2001

                                                    FEDERAL COURT OF CANADA

                                                                 TRIAL DIVISION

                              NAMES OF COUNSEL AND SOLICITORS OF RECORD

DOCKET:                                             T-2058-01

STYLE OF CAUSE:                           SUPERTEK CANADA INC. ET AL. v. JACQUES

GATIEN ET AL.

PLACE OF HEARING:                     MONTRÉAL

DATE OF HEARING:                       DECEMBER 17, 2001

REASONS FOR ORDER : ROULEAU, J.

DATED:                                                DECEMBER 24, 2001

APPEARANCES:

ALLEN ISRAEL

FRANCE LESSARD                                                                     FOR THE PLAINTIFFS

JEAN TREMBLAY

STÉPHANIE MARIN                                                                  FOR THE DEFENDANTS

SOLICITORS OF RECORD:

LAPOINTE ROSENSTEIN

MONTRÉAL                                                                                  FOR THE PLAINTIFFS

GILBERT SIMARD TREMBLAY

MONTRÉAL                                                                                  FOR THE DEFENDANTS