Caterpillar Inc. v. Chaussures Mario Moda Inc.
T-2981-94
Tremblay-Lamer J.
11/7/95
10 pp.
Application for interlocutory injunction enjoining defendant from using trade marks and hang-tags on work boots -- Plaintiff granting exclusive license with respect to use of "Caterpillar" marks in association with footwear in Canada-Defendant company selling work boots similar to licensees' under trade marks bearing uncanny resemblance to those of plaintiff-Test for interlocutory injunction evolving from test focussing on merits of case to test focussing on interlocutory nature of equitable remedy -- Three-part test for interlocutory injunction: (1) serious issue; (2) irreparable harm; (3) balance of convenience-Plaintiff making strong prima facie case of infringement; positive finding of serious issue -- Although plaintiff demonstrating strong prima facie case, must also satisfy irreparable harm and balance of convenience components of test- Relative economic strengths of parties not to be assessed under irreparable harm component of test but rather under balance of convenience (RJR MacDonald Inc. v. Canada (Attorney General), [1994] 1 S.C.R. 311) -- Irreparable harm requiring actual evidence of loss of goodwill or reputation, i.e. cannot infer irreparable harm from evidence of confusion (Centre Ice Inc. v. National Hockey League (1994), 53 C.P.R. (3d) 34 (F.C.A.)) -- Centre Ice requirement for actual evidence of irreparable harm rendering interlocutory injunction test considerably more difficult -- Absence of evidence regarding loss of goodwill or loss of sales not compensable in damages: no evidence confusion resulting in consumers refusing to buy footwear at present or in future -- Absence of evidence regarding impecuniosity precluding finding of irreparable harm on basis of inability to pay damages -- Adverse finding of irreparable harm -- In light of Centre Ice requirement for actual evidence of irreparable harm, longer periods of time between discovery of alleged infringement and filing of action allowable to enable accumulation of necessary evidence -- Application dismissed.