Date: 20000817
Docket: T-1241-00
BETWEEN:
MAMAR, INC.
Plaintiff
- and -
RESULTS MARKETING LTD.
carrying on business as HANDYMAN
SOLUTIONS and the
said RESULTS MARKETING LTD.
Defendant
REASONS FOR ORDER
ROTHSTEIN J. (ex officio)
[1] This is an application for an interlocutory injunction based on trade-mark infringement. The plaintiff is the registered owner of the trade-mark HANDYMAN CONNECTIONS - name and design, for use and association with the business of repairing and remodelling houses, apartments and offices. By agreement dated December 30, 1997, the plaintiff granted to CMD Enterprises Inc. a licence to use the plaintiff"s trade-marks in the City of Kelowna, British Columbia.
[2] In April 2000, the plaintiff learned that the defendant was carrying on business in Kelowna under the name HANDYMAN SOLUTIONS. The defendant is in the coupon book business. However, when a customer seeking repairs or remodelling contacts HANDYMAN SOLUTIONS, the customer is referred to Beaver Lumber or another contractor that HANDYMAN SOLUTIONS considers appropriate for the job. As such, the defendant is in competition with the plaintiff. While the defendant receives no remuneration for the referral, the referral is intended as an inducement for Beaver Lumber and other contractors to participate in future coupon books and pay the defendant for doing so.
[3] A review of the defendant"s advertising in the coupon book shows that its initial coupons contained a font and design that is virtually the same as the plaintiff"s HANDYMAN CONNECTIONS font and design. Saws, wrenches and other tools adorn the letters H, N, Y and N in the word HANDYMAN of both the plaintiff"s and defendant"s logos. After the plaintiff contacted the defendant with a request to cease and desist, the defendant minimally altered its advertising by moving the tool adornments on the letters, but there is little doubt that it was still attempting to represent itself in a manner similar to its initial advertising. When the plaintiff was still threatening or had brought Court proceedings against the defendant, the defendant again adjusted its advertising by adding the word "ok" in small letters just before and under the words HANDYMAN SOLUTIONS. The font of the letters in HANDYMAN SOLUTIONS remained the same but the tool adornments were removed.
[4] The plaintiff"s franchisee has used the trade-mark HANDYMAN CONNECTIONS in Kelowna since the beginning of 1998. The defendant started to use the name HANDYMAN SOLUTIONS in mid-1999. I am satisfied that there is here a serious issue of blatant passing off and trade-mark infringement with intent by the defendant to appropriate the plaintiff"s good will.
[5] As to irreparable harm, the plaintiff"s evidence is that its Kelowna franchisee noticed a sudden and drastic decrease in the number of calls it received immediately after distribution of the defendant"s coupon book with the HANDYMAN SOLUTIONS advertising. The franchisee deposes that his business is a small family business and that by the time this matter could be brought to trial, it is very likely that the business will cease to exist unless an interlocutory injunction is granted.
[6] The plaintiff appears to be a substantial corporation and has undertaken to compensate the defendant for its damages, should an interlocutory injunction be granted and the defendant be successful at trial. The defendant"s evidence is that it is a very small business and cannot afford legal counsel for these proceedings. I infer that it could not pay damages if no interlocutory injunction was granted but the plaintiff was successful at trial.
[7] In the particular circumstances of this case, I am satisfied that the plaintiff has established irreparable harm.
[8] I am also of the view that the balance of convenience favours the plaintiff. The defendant does not offer any explanation for what appears to be blatant passing-off and appropriation of the plaintiff"s trade-marks and good will. Further, the plaintiff"s Kelowna franchisee generates revenue from the calls it receives for repairs and remodelling. The defendant receives no remuneration for the calls it receives. Rather, it refers its calls to other participants in its coupon book with the intention that they will continue to participate in subsequent editions of the book. I see no reason why the defendant, if it wishes to continue its coupon book and referral business, cannot do so using a name and advertising that does not create confusion with that of the plaintiff.
[9] The interlocutory injunction is granted. The defendant shall immediately cease operating and advertising under the name HANDYMAN SOLUTIONS or any derivative thereof. However, if the defendant so chooses and if it has the consent of the plaintiff, it may operate under the name KERN HANDYMAN SOLUTIONS, provided the font on the letters HANDYMAN SOLUTIONS is different than the plaintiff"s and no tools adorn the letters. Furthermore, the defendant shall immediately cease its referral business, except that if it so chooses, it may refer customers to the plaintiff"s franchisee at Kelowna. The defendant shall immediately arrange for the disconnecting of its telephone line 762-9040 with instructions that there is to be no forwarding number. The matter of costs is adjourned sine die to be brought before the Court by the plaintiff, when and if it considers it appropriate to do so.
Marshall Rothstein
Judge
Montreal, Quebec
August 17, 2000
| carrying on business as HANDYMAN |
| said RESULTS MARKETING LTD. |
FEDERAL COURT OF CANADA
TRIAL DIVISION
NAMES OF COUNSEL AND SOLICITORS OF RECORD
DOCKET: T-1241-00
STYLE OF CAUSE: MAMAR, INC.
Plaintiff
- and -
RESULTS MARKETING LTD.
carrying on business as HANDYMAN
SOLUTIONS and the
said RESULTS MARKETING LTD.
Defendant
PLACE OF HEARING: OTTAWA (ONTARIO)
DATE OF HEARING: AUGUST 16, 2000
REASONS FOR ORDER OF THE HONOURABLE MR. JUSTICE ROTHSTEIN
DATED: AUGUST 17, 2000
APPEARANCES:
Mr. Randie Kushnier FOR PLAINTIFF
Mr. Douglas Kern FOR DEFENDANT
SOLICITORS OF RECORD:
Myers, Wineberg FOR PLAINTIFF
Winnipeg, Manitoba
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