T-1205-88
Stadium Corporation of Ontario Limited (Plain-
tiff)
v.
Wagon-Wheel Concessions Ltd., Environmental
Innovations Limited and Gary Gladman (Defen-
dants)
INDEXED AS: STADIUM CORPORATION OF ONTARIO LTD. V.
WAGON-WHEEL CONCESSIONS LTD. (T.D.)
Trial Division, Jerome A.C.J.—Toronto, October
4, 5 and November 10, 24, 1988; Ottawa, April
28, 1989.
Trade marks — Injunctions — Plaintiff incorporated to
build Skydome at Toronto, seeking interlocutory injunction —
Defendant, souvenir concession operator, applied for trade
mark Skydome hoping to become exclusive souvenir conces
sionaire — Defendant not chosen as concessionaire at stadium
— Constitutional issues raised by defendants not to be
resolved upon application for interlocutory relief — Regis
trar's determination StadCo is public authority not at issue
Injunction granted based on balance of convenience, irrepa
rable harm considerations.
The plaintiff was incorporated in 1984, its main object being
the construction of a retractable dome stadium in Toronto.
Upon completion, the project was to be transferred to a part
nership consisting of the plaintiff and Dome Consortium.
Before the name "Skydome" was officially chosen, the respon
dent made an educated guess and filed an application to
register it as a trade mark. The plaintiff brought an action to
have the name "Skydome" declared a prohibited mark within
the meaning of subparagraph 9(l)(n)(iii) of the Trade Marks
Act and to stop the defendant from using it. At the same time,
the plaintiff brought this application for an interlocutory
injunction. The defendant argues that the plaintiff is not a
public authority within the meaning of the Act, that subpara-
graph 9(1)(n)(iii) is ultra vires Parliament's trade and com
merce powers and that it is contrary to section 15 of the
Charter.
Held, the application should be allowed.
Since there is no definition of "public authority" in the
Trade Marks Act, it falls on the Registrar to satisfy himself
that the applicant is indeed a public authority. And since this is
not an appeal from the Registrar's decision, his determination
that it is must stand. Furthermore, for the purpose of this
application, subparagraph 9(1)(n)(iii) is assumed to be consti
tutionally valid.
So, there remains only to determine whether the applicant
meets the tests for the issuance of an interlocutory injunction.
In this case, it is not necessary to choose between the less
onerous "serious question" test and the more demanding "pri-
ma facie case" test since the applicant has established a prima
facie case of use of the mark "Skydome" and that the respon
dent's mark is identical to the applicant's mark. Were the
injunctive relief sought not granted, doubt would be cast on the
status of the Skydome project which is under construction. The
defendants had not generated a great deal of business. Accord
ingly, considerations of irreparable harm and balance of conve
nience favoured granting the injunction.
STATUTES AND REGULATIONS JUDICIALLY
CONSIDERED
Business Corporations Act, 1982, S.O. 1982, c. 4.
Canadian Charter of Rights and Freedoms, being Part I
of the Constitution Act, 1982, Schedule B, Canada Act
1982, 1982, c. 11 (U.K.), s. 15.
Constitution Act, 1867, 30 & 31 Vict., c. 3 (U.K.)
[R.S.C. 1970, Appendix II, No. 5] (as am. by Canada
Act 1982, 1982, c. 11 (U.K.), Schedule to the Consti
tution Act, 1982, Item I), s. 91.
Trade Marks Act, R.S.C. 1970, c. T-10, ss. 7(l)(a),(b),
9(1)(n)(iii), 11.
CASES JUDICIALLY CONSIDERED
APPLIED:
Canadian Olympic Association v. Donkirk International,
/nc. (1989), 17 C.P.R. (3d) 299 (F.C.T.D.).
CONSIDERED:
Registrar of Trade Marks v. Canadian Olympic Asso
ciation, [1983] 1 F.C. 692; (1982), 139 D.L.R. (3d) 190
(C.A.); American Cyanamid Co. v. Ethicon Ltd., [1975]
A.C. 396 (H.L.).
REFERRED TO:
Reference re legislative jurisdiction of Parliament of
Canada to enact Natural Products Marketing Act 1934,
and the Natural Products Marketing Act Amendment
Act, 1935, [1936] S.C.R. 398; [1936] 3 D.L.R. 622;
Labatt Breweries of Canada Ltd. v. Attorney General of
Canada, [1980] I S.C.R. 594; (1979), 110 D.L.R. (3d)
594; MacDonald et al. v. Vapor Canada Ltd., [1977] 2
S.C.R. 134; (1976), 22 C.P.R. (2d) I; Turbo Resources
Ltd. v. Petro Canada Inc., [1988] 3 F.C. 235; (1988), 17
F.T.R. 28; affld [1989] 2 F.C. 451 (C.A.).
COUNSEL:
W. A. Kelly, Q.C., Colleen E. R. Spring-
Zimmerman and David G. Allsebrook for
plaintiff.
Ian J. Tod and Ronald D. Manes for
defendants.
SOLICITORS:
Fasken & Calvin, Toronto, for plaintiff.
Torkin, Manes, Cohen & Arbus, Toronto, for
defendants.
The following are the reasons for order ren
dered in English by
JEROME A.C.J.: This application by the plaintiff
[applicant] for an interlocutory injunction
restraining the defendants [respondents] from
using the trade marks specified in the schedules to
their statement of claim, including the mark SKY-
DOME, came on for hearing at Toronto, Ontario on
October 4, 5; November 10 and 24, 1988. On
January 30, 1989 I granted the interlocutory
injunction for reasons given orally and indicated
that these written reasons would follow.
The specific relief sought is contained in the
applicant's notice of motion dated June 22, 1988:
1. That the defendants and each of them and their servants,
agents, employees, officers, directors and all those under their
control or having notice of the order be restrained until judg
ment or other final disposition of this action from using the
marks depicted in Schedule A to the Statement of Claim in
connection with their businesses or from adopting as a trade
mark or otherwise, any word or mark including the marks
depicted in Schedule F to the Statement of Claim consisting of,
or so nearly resembling as to be likely to be mistaken for the
said marks of StadCo;
2. That the defendants and each of them and their servants,
agents, employees, officers, directors and all those under their
control or having notice of the order be restrained until judg
ment or other final disposition of this action from making
statements which are false and misleading and which tend to
discredit the business, wares or services of StadCo contrary to
subsection 7(a) of the Trade Marks Act.
3. That the defendants and each of them and their servants,
agents, employees, officers, directors and all those under their
control or having notice of the order be restrained until judg
ment or other final disposition of this action from directly or
indirectly directing public attention to their wares, services or
businesses in such a way as to cause or be likely to cause
confusion in Canada at the time they commenced so to direct
attention to them, between their wares, services or businesses
and the wares, services and business of the plaintiff contrary to
subsection 7(b) of the Trade Marks Act;
4. That the defendants and each of them and their servants,
agents, employees, officers, directors and all those under their
control or having notice of the order be restrained until judg
ment or other final disposition of this action from directly or
indirectly selling, offering for sale, printing, manufacturing,
importing, exporting, copying, distributing or dealing in any
clothing products or any other products bearing the marks in
Schedules A to D to the Statement of Claim or facsimiles
thereof or reproducing the marks in any format whatsoever;
5. That the defendants and each of them and their servants,
agents, employees, officers, directors and all those under their
control or having notice of this order be restrained until judg
ment or other final disposition of this action from infringing
StadCo's copyright in thee depictions shown in Schedule E to
the Statement of Claim;
6. That the defendants and each of them and their servants,
agents, employees, officers, directors and all those under their
control or having notice of this order be restrained until judg
ment or other final disposition of this action from directly or
indirectly selling, offering for sale, printing, manufacturing,
importing, exporting, copying, distributing or dealing in any
clothing products or any other products bearing the depictions
in Schedule E to the Statement of Claim or facsimiles thereof
or reproducing the depictions in any format whatsoever;
7. That the defendants and each of them shall forthwith upon
service of the order deliver up to the plaintiff's counsel in
Toronto all clothing articles or any other articles bearing the
mark Skydome or any marks set out in the Schedules attached
hereto or facsimiles thereof, and the plates, negatives, films,
and other material for making them in their possession or under
their control;
8. That this motion be entered into the Court file in this action
and heard this day notwithstanding short service;
9. That the costs of this motion be to the plaintiff;
10. For such further and other relief as to this Honourable
Court may seem just.
The salient facts are as follows. The applicant,
Stadium Corporation of Ontario Limited ("Stad-
Co") was incorporated on August 1, 1984 pursu
ant to the provisions of the Ontario Business Cor-
porations Act, 1982 [S.O. 1982, c. 4] as amended.
All of the issued and outstanding shares of StadCo
are owned by Her Majesty in the right of Ontario
as represented by the Treasurer of Ontario and
Minister of Economics. On May 8, 1986 StadCo
entered into an agreement (Principal Stadium
Agreement) with Dome Consortium and, ultimate
ly, 25 corporations, by which it was agreed that
StadCo would enter into a contract for the con
struction of a retractable dome stadium in
Toronto. The stadium is to be constructed and
operated in accordance with the Principal Stadium
Agreement. Upon completion of the construction,
the project is to be transferred to a partnership
consisting of StadCo and Dome Consortium.
In the spring of 1987 StadCo held a contest to
name the stadium which attracted over 12,000
entries. A selection committee reviewed the entries
and prepared a short list of four names: HARBOUR
DOME, TOWERDOME, SKYDOME and THE DOME.
On May 11, 1987 the Honourable David Peterson
named the stadium SKYDOME at the official
naming ceremony held at the stadium. Five hun
dred T-shirts bearing the trade mark SKYDOME
were given away at this ceremony by StadCo.
By assignment from Flying High Productions
Partnership, Stadco obtained Canadian trade
mark application No. 582,737 for the trade mark
SKYDOME which was filed April 22, 1987. StadCo
subsequently filed its trade mark application in the
Canadian Trade Mark Office on May 6, 1987.
The applicant is not, however, relying on these
applications for the purpose of this motion. On
September 14, 1987, the applicant filed an
application under subparagraph 9(1)(n)(iii) of the
Trade Marks Act [R.S.C. 1970, c. T-10] for the
mark SKYDOME. The section 9 application was
advertised by the Registrar of Trade Marks in the
Canadian Trade Marks Journal on December 23,
1987.
In conjunction with the operation of the stadium
the applicant plans to sell and license various types
of merchandise. Since October, 1985 StadCo has
been distributing articles bearing the mark DOME
and other marks. These include sun visors, mugs,
baseball bat pens and labels. Since May, 1987 the
applicant has been distributing articles, including
mugs, hats, labels and business cards bearing the
mark SKYDOME. The applicant has also been
actively selling SKYBOX suites and CLUB seats
through the distribution of various brochures. Fur
thermore, StadCo has participated in, sponsored
and approved many promotional events and activi
ties which it alleges have brought attention to the
mark SKYDOME.
The respondent [defendant], Wagon-Wheel
Concessions Ltd. an Alberta Corporation incorpo
rated in 1976, is in the business of operating
souvenir concessions. Environmental Innovations
Limited which carries on business as Better
T-Shirt Co. is a related company manufacturing
imprinted sportswear. On April 27, 1987 the
respondent Wagon-Wheel filed an application to
register the trade mark SKYDOME which stated
that it intended to use the trade mark in Canada in
association with "wearing apparel, namely, upper
body garments, buttons, pendants and head wear".
Wagon-Wheel has licensed Better T-Shirt Co. for
the manufacture of T-shirts, etc. bearing the mark
SKYDOME.
Wagon-Wheel applied for the trade mark for
two reasons. First, it felt that SKYDOME was one of
two best names for the stadium and it hoped to
become the exclusive souvenir concessionaire.
Second, Wagon-Wheel wanted to have the rights
to the trade mark in the event it was not chosen as
a concessionaire, in order that it could establish its
own licensing program. Wagon-Wheel was not
selected as a concessionaire at the stadium.
On June 22, 1988 the applicant filed a state
ment of claim in this Court, seeking the following
relief:
(a) a declaration as between the parties that the use and
adoption by the defendants of the marks of StadCo set out
in Schedule A hereto or marks so nearly resembling them
as to be likely to be mistaken therefor, in connection with
their business, is prohibited by Sections 9 and 11 of the
Trade Marks Act;
(b) a declaration as between the parties that the use by the
defendants of the marks of StadCo set out in Schedules B
to C hereto or marks so nearly resembling them as to be
likely to be mistaken therefor or to be confusing therewith,
in connection with their businesses, wares or services, is in
contravention of the Trade Marks Act;
(c) an interim, interlocutory and permanent injunction
restraining the defendants and each of them and their
servants, agents, employees, officers, directors and all
those under their control or having notice of this order
from using the marks depicted in Schedule A hereto in
connection with their businesses or from adopting, as a
trade mark or otherwise, any word or mark including the
marks depicted in Schedule F hereto consisting of, or so
nearly resembling as to be likely to be mistaken for the
said marks of StadCo;
(d) an interim, interlocutory and permanent injunction
restraining the defendants and each of them and their
servants, agents, employees, officers, directors and all
those under their control or having notice of this order
from making statements which are false and misleading
and which tend to discredit the business, wares or services
of StadCo contrary to subsection 7(a) of the Trade Marks
Act;
(e) an interim, interlocutory and permanent injunction
restraining the defendants and each of them and their
servants, agents, employees, officers, directors and all
those under their control or having notice of this order
from directly or indirectly directing public attention to
their wares, services or business in such a way as to cause
or be likely to cause confusion in Canada, at the time they
commenced so to direct attention to them, between their
wares, services or business and the wares, services or
business of StadCo contrary to subsection 7(b) of the
Trade Marks Act;
(f) an interim, interlocutory and permanent injunction
restraining the defendants and each of them and their
servants, agents, employees, officers, directors and all
those under their control or having notice of this order
from directly or indirectly selling, offering for sale, print
ing, manufacturing, importing, exporting, copying dis
tributing or dealing in any clothing products or any other
products bearing the marks in Schedules A to D or fac
similes thereof or reproducing the marks in any format
whatsoever;
(g) an interim, interlocutory and permanent injunction
restraining the defendants and each of them and their
servants, agents, employees, officers, directors and all
those under their control or having notice of this order
from infringing StadCo's copyright in the depictions
shown in Schedule E;
(h) an interim, interlocutory and permanent injunction
restraining the defendants and each of them and their
servants, agents, employees, officers, directors and all
those under their control or having notice of this order
from directly or indirectly selling, offering for sale, print
ing, manufacturing, importing, exporting, copying, dis
tributing or dealing in any clothing products or any other
products bearing the depictions in Schedule E or facsimiles
thereof or reproducing the depictions in any format
whatsoever;
(i) delivery up or destruction under oath forthwith by the
defendants of all clothing articles or any other articles
bearing the mark Skydome or any marks set out in the
Schedules attached hereto or facsimiles thereof, and the
plates, negatives, films, and other material for making
them in their possession or under their control;
(j) damages and an accounting of profits;
(k) exemplary and punitive damages;
(1) damages for conversion;
(m) pre and post-judgment interest;
(n) its costs of this action on a solicitor and his own client
basis; and
(o) such further and other relief as to this Honourable Court
may seem just.
At the same time, the plaintiff filed the present
application for interlocutory relief.
The relevant sections of the Trade Marks Act
are subparagraph 9(1)(n)(iii), subsections 7(a)
and (b) and section 11:
9. (1) No person shall adopt in connection with a business,
as a trademark or otherwise, any mark consisting of, or so
nearly resembling as to be likely to be mistaken for
(n) any badge, crest, emblem or mark
(iii) adopted and used by any public authority in Canada
as an oflficial mark for wares or services,
in respect of which the Registrar has, at the request of Her
Majesty or of the university or public authority as the case
may be, given public notice of its adoption and use; or
7. No person shall
(a) make a false or misleading statement tending to discredit
the business, wares or services of a competitor;
(b) direct public attention to his wares, services or business
in such a way as to cause or be likely to cause confusion in
Canada, at the time he commenced so to direct attention to
them, between his wares, services or business and the wares,
services or business of another;
11. No person shall use in connection with a business, as a
trademark or otherwise, any mark adopted contrary to section
9 or 10 of this Act ...
Three main issues were raised: first, is the appli
cant a public authority within the meaning of
subparagraph 9(1)(n)(iii) of the Trade Marks
Act? Second, is subparagraph 9(1)(n)(iii) ultra
vires Parliament's trade and commerce powers
under section 91 of the Constitution Act, 1867 [30
& 31 Vict., c. 3 (U.K.) [R.S.C. 1970, Appendix II,
No. 5] (as am. by Canada Act 1982, 1982, c. 11
(U.K.), Schedule to the Constitution Act, 1982,
Item 1)]; and third, is subparagraph 9(1)(n)(iii)
discriminatory contrary to section 15 of the
Canadian Charter of Rights and Freedoms [being
Part I of the Constitution Act, 1982, Schedule B,
Canada Act 1982, 1982, c. 11 (U.K.)]?
Counsel for the applicant argues that StadCo is
a public authority within the meaning of subpara-
graph 9(1)(n)(iii) of the Trade Marks Act and has
been accepted as such by the Registrar of Trade
Marks. SKYDOME is, therefore, a prohibited mark
under subsection 9(1) and cannot be adopted with
out StadCo's consent (subsection 9(2)). Counsel
for the respondent, however, argues that StadCo is
not a public authority. Although the term "public
authority" is not defined in the Act, both counsel
refer to the rest applied by the Federal Court of
Appeal in Registrar of Trade Marks v. Canadian
Olympic Association, [1983] 1 F.C. 692; (1982),
139 D.L.R. (3d) 190. There, the Court accepted in
part the three part test applied by the Registrar of
Trade Marks to determine whether the Canadian
Olympic Association is a "public authority" for
the purpose of subparagraph 9(1)(n)(iii) of the
Trade Marks Act. Urie J. states at pages 702
F.C.; 199 D.L.R. that to ascertain whether a body
is a public authority "regard must be had to the
term `public authority' in the context of that Act
[the Trade Marks Act] as well as the nature of the
functions it performs." With regard to the Regis
trar's contention that in order for a body to be a
public authority some duty or obligation to the
public must exist which could be enforced by a
member of the public or by government or a
government agency, Urie J. states that [at pages
703 F.C.; 199 D.L.R.]:
In my opinion, the necessity for finding such obligations or
duties to the public is not necessarily determinative of whether
or not the public body is a "public authority", as that term is
used in the context of the Act here under review.
The Court did, however, accept that to qualify as a
public authority a sufficient degree of control must
be exercised by government in the body's activities.
The third part of the test applied by the Registrar
is that any profit earned by the body must be for
the benefit of the public and not for private ben
efit. The Court did not, however, deal with this
aspect of the test since it was conceded that the
Canadian Olympic Association satisfied that
requirement.
Counsel for the respondent argues that StadCo
was established as a commercial undertaking with
a view to making a profit. Any profit earned by
StadCo from the use of the mark SKYDOME and
the operation of the stadium will not be used for
the benefit of the public, but rather for the benefit
of the partnership, principally Dome Consortium.
Furthermore, counsel argues that the degree of
governmental control over the business is not sig
nificant enough for StadCo to qualify as a "public
authority" since in accordance with the Principal
Stadium Agreement the stadium will be operated
by the partnership and not by StadCo. He submits
that the partnership will be managed and con
trolled by a management board to which 28 of the
members will be appointed by Dome Consortium
and 30 by StadCo. Since substantial decisions
require the approval of at least 75% of the mem
bers of the management board, resolutions
advanced by StadCo could be blocked by the
board members appointed by Dome Consortium.
In the alternative, counsel for the respondent
has raised two constitutional questions. First, he
argues that subparagraph 9(1)(n)(iii) is ultra vires
the Parliament of Canada's trade and commerce
powers under section 91 of the Constitution Act,
1867. In summary, since subparagraph 9(1)(n)(iii)
bestows special status upon persons such as
StadCo, whose activities are purely intra-provin
cial in nature, its enactment is beyond the legisla
tive authority of the Parliament of Canada. Coun
sel refers extensively to the decisions of the
Supreme Court of Canada in Reference re legisla
tive jurisdiction of Parliament of Canada to enact
Natural Products Marketing Act 1934, and the
Natural Products Marketing Act Amendment Act,
1935, [1936] S.C.R. 398; [1936] 3 D.L.R. 622;
Labatt Breweries of Canada Ltd. v. Attorney Gen
eral of Canada, [1980] 1 S.C.R. 594; (1979), 110
D.L.R. (3d) 594; and MacDonald et al. v. Vapor
Canada Ltd., [1977] 2 S.C.R. 134; (1976), 22
C.P.R. (2d) 1.
The respondent's second constitutional argu
ment is that subparagraph 9(1)(n)(iii) is invalid
since it is discriminatory contrary to section 15 of
the Canadian Charter of Rights and Freedoms.
Section 15 provides:
15. (1) Every individual is equal before and under the law
and has the right to the equal protection and equal benefit of
the law without discrimination and, in particular, without
discrimination based on race, national or ethnic origin, colour,
religion, sex, age or mental or physical disability.
A public authority is treated differently from other
traders under the Trade Marks Act in the follow
ing manner:
(i) A public authority is not required to show that the mark is
distinctive of its wares or services. (paragraph 18(1 )(b).)
(ii) A public authority is not required to show that it has not
abandoned the mark. (paragraph 18(1)(c).)
(iii) A public authority does not have to show that its mark is
not confusing with another trader's mark. (paragraph
16(1)(a).)
(iv) A public authority does not have to show that the mark is
not primarily merely the name or the surname of an
individual who is living or has died within the preceeding
30 years. (paragraph 12(1) (a).)
(v) A public authority is not required to show that its mark is
not clearly descriptive or deceptively mis -descriptive of the
character or quality of the wares or services in association
with which it is used or proposed to be used. (paragraph
12(1)(b).)
(vi) A public authority is not compelled to comply with the
trade mark application procedure sections of the Act. No
person who wishes to oppose the benefit to be conferred
upon a public authority by section 9 has any right to bring
proceedings analogous to the Opposition proceedings per
mitted by section 37 of the Act notwithstanding that the
person may be adversely effected by the public authority's
adoption and use of the mark in question. (sections 29-51.)
Counsel contends that these distinctions cannot be
justified.
The legal and constitutional issues raised by the
respondent deserve careful consideration. I must,
however, not lose sight of the nature of the pro
ceedings before me. We are dealing with an
application for interlocutory injunctive relief. It is
well established that in proceedings such as these,
the Court should not attempt to resolve serious
questions of fact or law raised by the parties. Lord
Diplock stated the principle as follows in the oft
cited case of American Cyanamid Co. v. Ethicon
Ltd., [1975] A.C. 396 (H.L.), at page 407:
It is no part of the court's function at this stage of the
litigation to try to resolve conflicts of evidence on affidavit as to
facts on which the claims of either party may ultimately depend
nor to decide difficult questions of law which call for detailed
argument and mature considerations. These are matters to be
dealt with at the trial.
Although Parliament could have included a
definition of "public authority" in the Trade
Marks Act, it chose not to. As a result, when an
application under subsection 9(1) is brought for
ward the Registrar has to take responsibility for
satisfying himself that the applicant is indeed a
public authority and must give public notice of the
adoption and use of the mark by a public authority
as an official mark. In the present case, the Regis
trar fulfilled his responsibility under subsection
9(1). The proceeding before me is not an appeal
from the decision of the Registrar and accordingly,
his determination that StadCo is a public author
ity within the meaning of subparagraph
9(1)(n)(iii) must stand. Furthermore, for the pur
pose of this application, subparagraph 9(1)(n)(iii)
is assumed to be constitutionally valid.
In turn then, what is the test to be applied when
considering whether the discretionary remedy of
an interlocutory injunction should be granted?
Prior to the decision of the House of Lords in
American Cyanamid it was generally accepted
that an interlocutory injunction should not issue
unless the applicant could establish a prima facie
case. In American Cyanamid, however, Lord
Diplock rejected that requirement and formulated
the following test at page 407:
Your Lordships should in my view take this opportunity of
declaring that there is no such rule. The use of such expressions
as "a probability," "a prima facie case," or "a strong prima
facie case" in the context of the exercise of a discretionary
power to grant an interlocutory injunction leads to confusion as
to the object sought to be achieved by this form of temporary
relief. The court no doubt must be satisfied that the claim is not
frivolous or vexatious; in other words, that there is a serious
question to be tried.
The "serious question" test has not, however, been
adopted in all Canadian cases. Many cases are still
decided using the "prima facie case" test (an
excellent review of the jurisprudence can be found
in Turbo Resources Ltd. v. Petro Canada Inc.,
[1988] 3 F.C. 235; (1988), 17 F.T.R. 28, affirmed
by [1989] 2 F.C. 451 (C.A.)).
•
Here, I need not decide whether the less onerous
"serious question" test should be applied since I
am satisfied that the applicant has established a
prima facie case. As was the case for Teitelbaum
J. in Canadian Olympic Association v. Donkirk
International, Inc. (1987), 17 C.P.R. (3d) 299
(F.C.T.D.), I am satisfied that the affidavit evi
dence of use of the mark by the applicant together
with the public notice of adoption and use of the
mark given by the Registrar of Trade Marks is
sufficient to establish use of the mark for the
purpose of this application.
Furthermore, I do not think that it is seriously
disputed that the mark used by the respondent so
closely resembles that of the applicant as to be
likely to be mistaken for the applicant's mark. On
the contrary, the respondent's position is that it is
Wagon-Wheel Concessions Ltd. which is entitled
to use of that very mark.
Counsel for the applicant did not present a great
deal of argument on the issues of irreparable harm
or the balance of convenience. The respondent
argues that failure to meet these two criteria is
fatal to an application for an interlocutory injunc
tion. This same argument was made before Teitel-
baum J. in the Canadian Olympic Association
case. At page 311 he states:
I am of the view that in ordinary matters of infringement of
trade marks, and where it is not clearly apparent that infringe
ment has taken place, irreparable harm must be shown.
I am satisfied that where there is a flagrant infringement of
an official mark of a public authority, once a strong prima
facie case has been shown, no evidence of irreparable harm nor
balance of convenience is required.
Since I am satisfied that the applicant has estab
lished a prima facie case of use of the mark
SKYDOME, notice of which was given by the Regis
trar under section 9, and that the respondent's
mark is identical to the applicant's mark SKY-
DOME, I need not be satisfied that the applicant
will suffer irreparable harm or that the balance of
convenience is in its favour. Nevertheless, here I
am satisfied that the tests of irreparable harm and
balance of convenience lie in the plaintiff's favour.
Here, both parties have been in business only a
short period of time. Looking at the balance of
convenience, it seems to me to clearly lie in favour
of stopping the defendants in this situation because
to stop the plaintiff at this point would mean
casting doubt upon the whole status of the SKY-
DOME operation which is already under construc
tion.
In looking at the balance of convenience be
tween the parties, it certainly seems to me to be far
more appropriate to stop the defendants in their
tracks now. They have not really generated a great
deal of business activity and that which has can
certainly be the subject of proper compensation
and damages payable by the plaintiff in the event
that the plaintiff does not succeed at trial.
I am also influenced to some extent by an
element of this case that I put to counsel during
the course of argument. It is that, if the defendants
win, they may lose since that which gives the
defence its grievance is the only thing which gives
the disputed mark any great value. If the plaintiff
here, StadCo, is not entitled to expropriate and
take unto itself section 9 protection for SKYDOME,
then the defendants will win. Ironically, that victo
ry may mean that the SKYDOME mark may be
valueless since the plaintiff will have to resort to
some other mark. This is all speculative, but it
influences me, on the balance of probabilities and
on the question of relative harm to the parties, to
tip the scale in the plaintiffs favour pending trial.
This application must therefore succeed and an
order will go for the injunctive relief sought, pend
ing trial, which I have offered to expedite if the
parties so desire. Costs in the cause.
You are being directed to the most recent version of the statute which may not be the version considered at the time of the judgment.