Federal Court Decisions

     Date: 19971222

     Docket: T-1459-97

Between :

     ITV TECHNOLOGIES, INC.

     Plaintiff

     (Defendant by Counterclaim)

     - and -

     WIC TELEVISION LTD.

     Defendant

     (Plaintiff by Counterclaim)

     REASONS FOR ORDER

PINARD, J. :

[1]      These Reasons are filed in support of the Order I made in Vancouver, on December 17, 1997, dismissing a motion by the defendant (plaintiff by counterclaim), WIC Television Ltd. ("WIC"), for an interlocutory injunction, and related relief, for alleged infringement by the plaintiff (defendant by counterclaim), ITV Technologies Inc. ("Technologies"), of WIC's rights in its registered trade-marks, Nos. TMA 467,002 and TMA 286,066 (the "ITV trade-marks"). The alleged infringements are said to arise from the plaintiff's use of WIC's ITV trade-mark in its corporate name, in its trade-name, in its domain name or Internet address "www.itv.net", and its programming from that Internet address.

Background

[2]      Technologies has since 1995 operated a website with the domain name "itv.net", and used this domain name as its trade-name in its business of netcasting over the Internet. Technologies does not operate a television station.

[3]      WIC, a Canadian communications and broadcasting company, owns and operates television stations "ITV" in Edmonton, Alberta. The ITV trade-marks have been used continuously since 1974 by WIC and its predecessors in title in association with broadcasting, television and production. WIC also displays its ITV trade-marks in the operation of its Internet website "itv.ca" which, since March 1995, has provided information on ITV's broadcasting. ITV's television signal has also been broadcast on its itv.ca website.

[4]      In January of 1997, WIC began to complain about the use by Technologies of the trade-name "itv.net", claiming infringement of its ITV trade-marks. Ultimately, on July 4, 1997, Technologies chose to bring an action challenging the ITV trade-marks. On October 24, 1997, WIC filed a Statement of Defence and Counterclaim asserting the validity of its trade-marks and their applicability to Technologies' business operations.

[5]      On November 10, 1997, WIC filed an application for an interim, interlocutory and permanent injunction, and related relief, for alleged infringement by Technologies of the ITV trade-marks. This application was made returnable November 24, 1997, in Edmonton, Alberta. Technologies' then counsel wrote a letter to the Court seeking an adjournment, but neglected to appear on the return date of the latter application. Given the circumstances, the application was allowed to proceed unopposed and my colleague MacKay J. issued an interim injunction against Technologies and ordered a hearing on the application for interlocutory injunction for December 17, 1997, in Vancouver, British Columbia.

Issues

[6]      The only questions at issue in this matter are:

1.      Will WIC suffer irreparable harm if an interlocutory injunction does not issue, and if so,

2.      does the balance of convenience favour the issuance of the interlocutory injunction sought?

[7]      The parties agree that the test for an interlocutory injunction is the test set out by the Federal Court of Appeal in Turbo Resources Ltd. v. Petro Canada Inc. (1989), 24 C.P.R. (3d) 1, that requires the applicant to meet three criteria:

(i)      the applicant must show that it has a serious issue to be tried;

(ii)      the applicant must satisfy the Court that it will suffer irreparable harm if an injunction does not issue; and

(iii)      the balance of convenience must favour the injunction.

[8]      In the case at bar, it is not disputed that the applicant for interlocutory relief has shown a serious issue to be tried. Indeed, like MacKay J., I also am of the opinion, upon reviewing the evidence, that "the action initiated by the plaintiff, and the defendant's counterclaim, raise serious issues".¹

Analysis

[9]      The defendant WIC relies on three cases decided by the Trial Division of this Court to support the propositions that where "there is arguably an infringement of the trade-mark owner's proprietary right in his trade-mark, that is of itself sufficient to constitute irreparable harm not compensable in damages", and that "where the goodwill attaching to an applicant's trade-marks is a very important asset, the erosion of that goodwill will cause irreparable damage to it".² Those three cases were decided prior to the following four cases decided by the Federal Court of Appeal, stating clearly the applicable law: Turbo Resources, supra, Syntex Inc. v. Novopharm Ltd. (1991), 36 C.P.R. (3d) 129, Nature Co. v. Sci-Tech Educational Inc. (1992), 41 C.P.R. (3d) 359, Centre Ice Ltd. v. NHL et al. (1994), 53 C.P.R. (3d) 34, and Man and His Home Ltd. v. Mansoor Electronics Ltd. (1996), 62 C.P.R. (3d) 239.

[10]      In Turbo Resources, supra, at page 19, Stone J.A. expresses the following view:

. . . Where a plaintiff's recoverable damages resulting in the continuance of the defendant's activities pending trial would be an adequate remedy that the defendant would be financially able to pay, an interlocutory injunction should not normally be granted;

[11]      In Syntex, Nature and Centre Ice, supra, the Federal Court of Appeal restates clearly that the evidence that the applicant will suffer irreparable harm must be clear and not speculative before an interlocutory injunction will be granted. The Court of Appeal also teaches that mere infringement of a proprietary right in a trade-mark does not, of itself, constitute irreparable harm where the validity of the trade-mark is contested. In Syntex, supra, Heald J.A. writes, at page 135:

. . . The jurisprudence in this court establishes that the evidence as to irreparable harm must be clear and not speculative: . . .

And at page 138:

. . . In my view, a determination of the merits which involve extensive evidence and contentious and disputed factors which address the vital question of the validity of the mark should not be decided at the interlocutory injunction stage. In such a situation a conclusion that mere infringement of a proprietary right in a trade mark constitutes, of itself, irreparable harm is somewhat contradictory since it is the very "proprietary right" which is at issue. When a court decides via an interlocutory injunction that an aggrieved party has "proprietary rights in a trade mark", that court is deciding the very issue which is to be determined at trial. In my view such a determination should not be made at an interlocutory stage where, as in this case, the question of validity is strenuously addressed by the parties.

[12]      The same principles are reiterated by the Federal Court of Appeal in Nature, supra, at page 367, and in Centre Ice, supra, at pages 52 to 54.

[13]      In the case at bar, the validity of the ITV trade-marks is very much at issue. The evidence of possible confusion in this case does certainly not by itself establish a loss of goodwill or the inability to compensate in damages. In Nature, supra, at page 367, Stone J.A. states:

. . . While, as the motions judge stated, there was in the present case some evidence of actual confusion, that evidence did not go so far as to show, in my view, that the confusion would cause irreparable harm to the respondent. As I understand it, the learned judge was able to arrive at his conclusion from what he viewed as loss of distinctiveness in the respondent's mark if this confusion were allowed to go unchecked. This latter conclusion, it seems was in turn dependent on the assumption that this contested mark should be taken to be valid in determining the issue of irreparable harm.

[14]      Also, in Centre Ice, supra, at page 53, the Federal Court of Appeal expresses the following view:

I am unable to agree that a finding of confusion between competing products necessarily leads to a loss of goodwill for which the plaintiff cannot be compensated in damages. . . .

[15]      I agree with the following statement made by my colleague Tremblay-Lamer J., in Carterpillar Inc. et al. v. Chaussures Mario Moda Ltd. (1995), 62 C.P.R. (3d) 338 at 344:

. . . Centre Ice should be interpreted to state that the court cannot infer from the existence of confusion the existence of a loss of goodwill or reputation. Actual evidence of irreparable harm is necessary.

[16]      Furthermore, although the alleged offending representation to the public has been in the marketplace for some two years, there is no evidence of established harm, which is a relevant factor, in this case, leading to the conclusion that WIC's alleged harm is merely speculative.

[17]      In the circumstances, the plaintiff's undertakings, which were made only before me, constitute additional valid reason to deny the interlocutory relief sought by the defendant. Through its attorney at the hearing, the plaintiff has undertaken:

-      to indicate clearly in its website that "itv.net" has no affiliation with the CITV website and at the same time to offer a link to the CITV website;

-      not to netcast any productions of CITV, or bearing the trade-name ITV as identified with the defendant until disposition of this matter; and

-      to maintain accounts of its revenues and its customers until trial.

[18]      It is for all the above reasons that I concluded that no case for irreparable harm had been established, that accordingly it was not necessary to deal with the issue of the

---

balance of convenience, and that I dismissed the application for interlocutory injunction on December 17, 1997.

                            

                                     JUDGE

OTTAWA, ONTARIO

December 22, 1997

__________________

     ¹      At page 7 of the written Reasons filed in support of MacKay J.'s Order granting an interim injunction in this matter.

     ²      See Joseph E. Seagram & Sons, Ltd. v. Andres Wines Ltd. (1987), 16 C.P.R. (3d) 481 at 494, Coca-Cola Ltd. v. Fisher Trading Co. Ltd. (1988), 25 C.P.R. (3d) 200 at 210, and Boutique Au Coton Inc. v. Pant-O-Rama (1987), 17 C.P.R. (3d) 409 at 418.