No stopping use of BOSTON MARKET before trial

In Boston Pizza International Inc v Boston Market Corporation, the Federal Court of Canada has refused to grant an interlocutory injunction against the defendant so as to prevent its pre-trial use of the mark BOSTON MARKET in association with restaurant services and the sale of prepared foods.

In this latest battle in an on-going skirmish between the parties, Boston Pizza contended that it would suffer irreparable harm should Boston Market be permitted to use the BOSTON MARKET mark in Canada until trial. Boston Pizza contended that infringement of its BOSTON PIZZA mark would result in business losses, loss to long-term market share, loss of consumer loyalty, dilution of brand equity and harm to its franchise system.

Reflecting the high threshold required to obtain pre-trial injunctive relief in Canada, and consistent with previous jurisprudence, the Federal Court held that Boston Pizza had failed to provide evidence of harm that was clear and not speculative. The court also found that any harm that Boston Pizza might suffer would be reasonably quantifiable at trial.

As for the issue of the balance of convenience, the court noted that Boston Market would suffer certain and tangible loss if it were obliged to change the name of its restaurant in Canada and could not benefit from the significant advertising efforts it had already made. The court also noted that Boston Pizza had delayed in seeking the pre-trial injunction as it had known of the defendant's intentions for almost a year.

For discussion of another case involving Boston Pizza's efforts to protect its mark, see BOSTON CHICKEN plucked from registry.

Mark Evans, Smart & Biggar/Fetherstonhaugh & Co, Toronto