TRADE MARKS |
Practice |
Arxx Building Products Inc. v. Polyform Cellular Plastics Inc.
T-523-01
2001 FCT 505, Pelletier J.
17/5/01
17 pp.
Motion for interim injunction enjoining group of defendants from infringing plaintiff's trade-marks or passing off their goods as goods of plaintiff--Plaintiff owner of unregistered trade-mark "Blue Maxx" and registered trade-mark "The Maxx" allegedly used in connection with insulated concrete forms--Prior motion for injunctive relief by plaintiff against defendants settled by written agreement in which defendants agreed to refrain from using or infringing plaintiff's trade-marks--Subsequent breach of settlement agreement--Motion dismissed--Unauthorized use of "Blue Maxx" occurred and use of "NuMaxx" persisted beyond execution of settlement agreement--Plaintiff's change of name did not divest it of its intellectual property--Law does not admit of monopoly à deux--As trade-mark contested, not appropriate to grant injunction which would require Court to decide issues of ownership and validity on interlocutory basis--Furthermore, all defendants have undertaken to either cease conduct of which plaintiff complains or claim to be entitled to act as did--If offending conduct has ceased, nothing for Court to enjoin--If conduct cloaked in claim of right, interlocutory proceedings not appropriate forum for determination of those issues--Also, none of authorities deal with situation where plaintiff has indicated, as here, intention to abandon use of unregistered trade-mark--Finally, some authority that injunction does not lie in circumstances where defendant able to pay any damages which may be assessed--Therefore, plaintiff has failed to establish its entitlement to injunction as against all defendants--Same conclusion with respect to plaintiff's complaint of passing off--While some evidence of passing off, in absence of evidence of lost sales, and in face of defendants' undertaking to cease using words to which objection taken, no basis for finding of irreparable harm--Quia timet does not lie where defendants have affirmed intention to avoid causing harm--Plaintiff awarded costs in amount of $2,500 in any event of cause from original defendants--Costs of added defendants shall be costs in the cause.