Ski resort's permanent injunction request goes downhill

Canada
In Le Massif Inc v Station Touristique Massif du Sud (1993) Inc (2009 QCCS 5338, November 16 2009), the Superior Court of Quebec has refused to grant a permanent injunction preventing the defendant from using the commercial name Massif du Sud in association with the operation of a ski centre based on the plaintiff’s use and registration of the trademark LE MASSIF.

The plaintiff, Le Massif Inc, operates a ski centre famous for its breathtaking view of the Saint Lawrence river. Known to many skiers as 'Le Massif de la Petite-Rivière St-François', the development of the centre was delayed for many years due mainly to lack of funding and political will. Even though a trademark registration for LE MASSIF (and design) was obtained in 1988, it is only in recent years that a particular emphasis was put on the name Le Massif to promote the ski centre. The plaintiff’s objective since its purchase of the centre in 2002 was to further develop the area in a recreotouristic centre known internationally as 'Le Massif'.
 
The defendant, Station Touristique Massif du Sud (1993) Inc, is located on the other side of the Saint Lawrence river and also operates a ski centre. Initiatives to develop a ski centre in the park called Parc Régional du Massif du Sud began in the 1960s and the first mechanical lift was in operation in 1988-1989. One of the witnesses testifying for the plaintiff confirmed that he knew of the existence of Le Massif du Sud in the late 1980s/early 1990s, but that he hoped at the time that the defendant would cease its activities due to financial difficulties.
 
In geography, a 'massif' refers to a distinct mountainous region which is independent from the rest of the area. The court’s opinion was largely influenced by the fact that the plaintiff wished to enforce a monopoly on a geographic expression. In the court’s opinion, a trademark registration does not justify, by itself, the granting of an injunction.
 
The court was not convinced by the evidence of the plaintiff on the issue of actual confusion. The court also came to the conclusion that:

  • the trademark LE MASSIF had little distinctiveness; and
  • the addition of another distinctive element in the defendant’s commercial name was sufficient to differentiate it from the plaintiff’s mark.
The court considered that the addition of 'du Sud' was distinctive of the location of one mountain as opposed to the other. The court also highlighted the fact that a ski centre called Massif du Sud existed prior to the plaintiff’s trademark registration. The plaintiff argued that its trademark was famous, but the court concluded that the ski centre, the location and the landscape were notorious, not the trademark. 
 
The court also relied, despite the plaintiff’s objection, on the testimony of a toponymy expert. The expert explained that the name Station Touristique du Massif du Sud was officially recognized by the Commission de Toponymie du Québec on July 18 1987, a decision that was published in the Official Gazette. The expert also explained that from a toponymy point of view, it is essential that a location be described with both a generic and a more specific name to avoid any confusion. In the expert’s mind, using a generic expression such as 'le massif' is equivalent to using 'the lake' or 'the river'.
 
In refusing the injunction, the court also pointed out that the phrase 'Massif du Sud' was used to designate a regional park, as well as the road leading to the park. The court reminded the plaintiff that it could not object to the development of this park in any manner whatsoever for any type of activity, including skiing.
 
The plaintiff’s hope of becoming the one and only 'Le Massif' thus went downhill with the court’s refusal, but an appeal was filed on December 17 2009 (court file 200-09-006902-099). In the meantime, the plaintiff filed new trademark applications for LE MASSIF DE CHARLEVOIX in October 2009.

France Lessard, ROBIC LLP, Montreal

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