Federal Court orders permanent injunctive relief within nine months of start of lawsuit

Canada

The recent decision of the Federal Court in Black & Decker Corporation v Piranha Abrasives Inc (2015 FC 185) is yet another example of how trademark owners can expeditiously enforce trademark rights and obtain permanent injunctive relief in Canada.

In this case, the applicants, The Black & Decker Corporation and its licensee, Stanley Black & Decker Canada Corporation, successfully moved by way of application for permanent injunctive relief, damages and legal fees in respect of their claims that the respondent, Piranha Abrasives Inc, had infringed Black & Decker’s registered trademarks PIRANHA and PIRANHA (and design), for use in association with “[s]aw blades for power saws” and “[c]ircular saw blades”. The entire proceeding, from the date of filing of the notice of application to the date of the court’s decision, took less than nine months.

The court found a likelihood of confusion between Black & Decker’s registered PIRANHA trademarks and the respondent’s trademark PIRANHA ABRASIVES (and design), as used by the respondent in association with abrasive circular saw blades. First, the court, having “consider[ed] the use of PIRANHA and the piranha fish design by the [r]espondent and the same PIRANHA word mark and quite similar fish design covered by the [a]pplicants’ PIRANHA trademark registrations”, had “little trouble” finding a significant degree of resemblance between the marks. Second, the affidavit evidence filed in support of the application demonstrated that the parties’ circular saw blades could be used “on some of the same power tools”, and are available for purchase “at a similar price point” at home improvement, building supply and hardware stores by “potentially” the same consumers. Each statutory factor of the confusion analysis favoured the applicants.

This decision clearly demonstrates that, in the right circumstances, a summary application to the Federal Court is a viable alternative to an action for trademark owners seeking relief from trademark infringement (as well as passing off and depreciation of goodwill). Typically, proceeding summarily by way of an 'application' is much less expensive, and far quicker, than the usual manner of proceeding by way of an 'action, and may nevertheless provide applicants with the relief sought by plaintiffs in more traditional actions for trademark infringement.

In Piranha Abrasives, the applicants availed themselves of this cost-effective and expeditious procedure in order to enforce their trademark rights against the respondent. Although the proceeding was contested, the court quite easily found that the respondent had infringed Black & Decker’s registered trademark rights. And while the applicants necessarily chose to forego any opportunity for pre-trial discovery by deciding to proceed by way of application, their affidavit evidence was sufficient to establish trademark infringement (but not passing off or depreciation of goodwill), and the court awarded the applicants permanent injunctive relief, C$10,000 in nominal damages and C$20,000 in costs.

As shown in Piranha Abrasives, where the strength of an applicant’s 'paper record' alone is enough to prove an applicant’s rights and the unlawful activities alleged, and significant financial compensation is not at stake, trademark owners may bring a summary application to the Federal Court to quickly enforce their rights against infringers, and obtain permanent injunctive and compensatory relief, while saving time and money.

Mark K Evans and Graham A Hood, Smart & Biggar/Fetherstonhaugh, Toronto

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