TRADE-MARKS
Practice
Application for injunction preventing defendants from using name “Advantage” pending trial—Application dismissed— Jurisdiction of Court to issue interlocutory injunction preventing holder of registered trade-mark from using its mark—Although Trade-marks Act, s. 19 containing powerful expression of rights of holders of registered marks (Molson Canada v. Oland Breweries Ltd. (2002), 59 O.R. (3d) 607 (C.A.); affg (2001), 11 C.P.R. (4th) 199 (Ont. S.C.J.)), Act cannot be read as preventing Court from enjoining use of registered mark when validity of mark under attack—Applicant for injunction must meet tripartite test set out in RJR — MacDonald Inc. v. Canada (Attorney General), [1994] 1 S.C.R. 311: serious legal issue to be tried; irreparable harm to applicant’s interests if injunction not granted; applicant will suffer greater harm than respondent—To acknowledge trade-mark holders immune from injunction because Act protecting their rights until mark definitely declared invalid would simultaneously constrict Court’s powers to issue injunctions too greatly and would broaden protection provided by Act too far—Fact Court generally wary of interfering with rights of trade-mark holder on injunction application not meaning Court lacking jurisdiction even to embark on analysis—Act, s. 19 not to be read as saying trade-mark holder has right to exclusive use of mark “unless and until it has been declared invalid,” nor interpreted so broadly as to eliminate possibility of trade-mark holder being object of injunction—Although plaintiff has shown genuine issue about registrability of defendant’s mark for “Advantage Rent-A-Car,” irreparable harm not established —Customers’ accusations aimed at plaintiff intended for defendants—Confusion primarily harming defendants; defendants ones ultimately receiving complaints from disgruntled travellers—Harm compensable in damages if plaintiff successful at trial—Plaintiff not showing harm of nature or magnitude as to meet test for irreparable harm established in case law—Trade-marks Act, R.S.C., 1985, c. T‑13, s. 19 (as am. by S.C. 1993, c. 15, s. 60).
Advantage Car & Truck Rentals v. 1611864 Ontario Inc. (T-1760-04, 2005 FC 325, O’Reilly J., order dated 7/3/05, 10 pp.)