Son enjoined from using his mother's trademarks

Canada
In Toges Grand Maitre Inc v Côté (Case 450-17-002610-088, April 14 2009), the Superior Court of Québec has granted an injunction preventing the defendant from continuing to use the trademarks TOGES GRAND MAITRE or TGM.
 
Toges Grand Maître Inc is owned by Gisèle Côté, a dressmaker. Toges Grand Maître makes, repairs, distributes and sells robes for lawyers, judges and bailiffs under the trademarks TOGES GRAND MAITRE and TGM. When the company received a large order for university graduation gowns, Gisèle Côté hired her son Yves, who was unemployed, to take care of this new sector of the business.
 
Gisèle Côté spent a lot of time and money creating a database of lawyers and educational institutions. However, Yves believed that he was not getting sufficient commissions based on the new business sector, so he secretly decided to continue the robe rental business on his own. Yves incorporated a company under the name Toges Glands Mortiers Canada Inc and operated it using the name TGM. He copied and used the client list of his mother's company and systematically diverted orders and clients from his mother's company to his company. In addition, he started to make use of the email address '[email protected]', which is similar to the email address of his mother's company ('[email protected]').
 
When the new sector of business disappeared, Gisèle Côté investigated and learned of her son's activities. She also learned of actual confusion in the marketplace. Her company then sued her son's company for passing off and unfair competition, requesting an interlocutory injunction.
 
Under the Québec Civil Code (Article 752), an interlocutory injunction is available if:
  • there is a serious issue to be tried;
  • the plaintiff will suffer serious or irreparable harm; and
  • the balance of convenience favours the grant of the injunction. 
However, if the appearance of the legal right of the plaintiff is clear, the balance of convenience does not have to be considered.
 
With respect to passing off, the court found that all legal elements were present to support an injunction being granted:

  • Gisèle Côté had an existing clientele and goodwill;
  • There was actual confusion of the public caused by misrepresentations of Yves Côté; and
  • Actual or possible damage was being suffered by Gisèle Côté.  
In view of the finding that there was a strong prima facie case, the court did not consider the issue of the balance of convenience. 
 
Although Yves Côté had, in fact, consented to a fairly narrow injunction which would have ordered him to cease using either directly or indirectly the names and trademarks TOGES GRAND MAITRE and TGM, the court granted a far broader injunction:
  • preventing Yves Côté from continuing to use the names or trademarks TOGES GRAND MAITRE or TGM;
  • ordering him immediately to transfer back to Gisèle Côté all the databases that belonged to her, and destroy any copies which may be in his possession;
  • ordering Yves Côté to cease using the email address '[email protected]' and to take all necessary steps to transfer that address to Gisèle Côté; and
  • ordering Yves Côté to cease soliciting or attempting to solicit any person who was a client or contact person of his mother.
The court also dispensed Gisèle Côté with the necessity of making any undertaking as to damages.
 
It is very unlikely that a similar interlocutory injunction would have been granted by the Federal Court of Canada. The Federal Court would not have found irreparable harm and would have refused the injunction, notwithstanding a strong prima facie case. The wording of Article 752 of the Québec Civil Code refers to serious or irreparable damage, and this offers the court a greater latitude for granting an interlocutory injunction.

John Macera, Macera & Jarzyna - Moffat & Co, Ottawa

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