Mattress Mart Limited v. 910883 Ontario Ltd., docket T-1001-92

Date: 19990621

Docket: T-1001-92

BETWEEN:

     MATTRESS MART LIMITED

Plaintiff

     - and -

910883 ONTARIO LTD.

Defendant

     REASONS FOR ORDER

REED J:

     Upon motion dated the 26th day of April, 1999, on behalf of the Plaintiff, for:

a)      An Order granting summary judgment to the plaintiff in this action, namely:

     (i) A declaration that the Defendant's adoption and use of the trade name and trade

     mark MATTRESS MART in association with the operation of a retail store selling

     mattresses, beds and related products, is an infringement of the plaintiff's rights

     with respect to Canadian trade mark registration TMA 488,785- MATTRESS

     MART;

         (ii) An injunction enjoining the Defendant, its employees, agents, servants,

         licensees, heirs, assignees and all those over whom it exercises control,

         from:     

             using the trademark or trade name MATTRESS MART in     

             association with the operation of a retail store selling mattresses,

             beds and related products; and using any other trade mark or trade

             name confusing with the trade mark MATTRESS MART, subject

             of Canadian trade mark registration TMA 488,785 ;

    

         (iii) An Order directing the Defendant to deliver up under oath to the

         Plaintiff all signs, advertising material, printed matter, proofs, plates, dyes,

         negatives, screens, prints, stencils, film, video tapes, audio tapes (including

         masters) and any other materials or apparatus in the Defendant's possession

         or under its control bearing the trade mark and/or trade name MATTRESS

         MART or any other marking which offend any injunction granted herein;

         (iv) Damages or, at the election of the Plaintiff, an accounting of the profits

         made by the Defendant from its infringing use of the trade mark and trade

         name MATTRESS MART as foresaid;

         (v) An Order directing the holding of a reference to determine and assess

         the damages and/or profits awarded to the Plaintiff;

         (vi) The Plaintiff's costs of this action;

         (vii) Pre and post-judgment interest on damages, profits and costs awarded

         to the Plaintiff herein; or, in the alternative.

     (b) An Order striking out paragraph 18 of the Amended Statement of Defence filed

     June 12, 1999 on the ground that it discloses no reasonable cause of action or

     defence; is scandalous, frivolous or vexatious; or is an abuse of the process of the

     Court.

     (c) Costs of this motion;

     (d) Such further and other relief as may seem just to this Honourable Court.

     REASONS (revised version of reasons given orally)

     I am persuaded that summary judgment in the terms sought should be granted (an order finding infringement from the date of the plaintiff"s registration of its trade-mark).

     I am not persuaded that there is any debatable issue that warrants a trial.

     With respect to the argument that the parties do not presently operate in the same geographical area, and at present have no intention of expanding into the same area, I do not understand the law with respect to "likelihood of confusion" to consider that to be a governing factor. The present intention of the parties with respect to future business activities (their geographical area) is not controlling. "Likelihood of confusion" depends on the similarity of the marks and the goods or services with respect to which they are used. In this case the marks are identical as are the services to which they relate. There can be no serious argument that likelihood of confusion does not exist.

     With respect to the argument that the date of first use is a serious issue, the material on the file does not support that claim. The plaintiff started business in Kingston in 1976, in Ottawa in 1986, and has now obtained registration of its trade-mark MATTRESS MART. The defendant started its business in Toronto in 1990. On discovery, the plaintiff gave evidence as to the use of the mark. While the defendant asserts that the plaintiff"s assertion of use is in dispute, it could provide no relevant evidence or reason for that assertion.

     Applying the test applied by Mde Justice Tremblay-Lamer in Granville Shipping Co Ltd v. Pegasus Lines Ltd., [1996] 2 F.C. 853 at 859-860 and by the Federal Court of Appeal in Feoso Oil Limited v. The "Sarla", [1995] 3 F.C. 68 at 81-82, I have concluded that summary judgment in the limited terms sought should be granted.

     Ms. Beaubien is asked to prepare a draft order, approved as to form by opposing counsel.

     "B. Reed"

     J.F.C.C.

Toronto, Ontario

June 21, 1999.