Lawyer Monthly - June 2022

53 JUN 2022 | WWW.LAWYER-MONTHLY.COM EXPERT INSIGHT given its status as the person entitled to register the trademark and “first filer”, it should be entitled to enforce its rights against alleged infringers of its mark when it becomes the person entitled to exclusive use of the trademark. The defendants maintained that the plaintiff had no more than a trademark application that had not been examined, approved, advertised for opposition or allowed by the Canadian Trademarks Office. The defendants therefore maintained that the plaintiff had no “priority” in the trademark. They further maintained that the plaintiff had not used the trademark in the public forum, and thus had no goodwill or reputation with respect to the name, and that there could not be said to be any confusion to the general public regarding the name. The plaintiff sought an order for an interlocutory injunction on the basis that there was a significant issue to be tried in relation to the trademark “priority” dispute and that it would suffer irreparable harm to the distinctiveness of its applied-for trademark and its ability to generate goodwill in that trademark if the defendants were permitted to continue using “Bombay Frankies” as a “first mover”. How has the case developed, and what interest does it hold for IP holders and counsel? In handing down its decision , the court applied the tripartite test for interlocutory injunctions outlined in RJR MacDonald Inc. v Canada (Atty. Gen.) [1994] S. C. J. No. 17, [1994], and accepted the plaintiff’s position. The Ontario Superior Court of Justice restrained the defendants from using “Bombay Frankie” as the name of any of their restaurants, franchising businesses, or social media accounts and ordered them to cease using “” until the trademark claims have been heard or until further order of the court. The determination of the court has not been appealed by the defendants, and we await the determination of the case on its merits. As discussed below, the decision is noteworthy both with respect to trademark enforcement and clearance. The ultimate disposition on the merits is relevant with respect to whether a holder of a prior trademark application (a “first filer”) may enforce it against a “first mover” despite there not being use of the trademark in Canada by the first filer. The court’s decision to grant the interlocutory injunction despite no use of the trademark by the first filer has significant potential implications for anyone adopting a new mark in Canada, as a prospective trademark user may be deemed to have notice of a trademark applicant’s proposed use of a trademark. The decision underscores the importance of clearance searches before putting a mark into use in Canada, and also of promptly filing Canadian trademark applications for marks of interest and well before use commences. Adopting a mark based only on familiarity with names and marks in use in the Canadian market will be risky, as a third party may own a trademark application for a similar mark prior to adopting and using a mark in Canada that ultimately could support an injunction. Likewise, the benefits of filing a trademark application at the ‘drawing board’ stage to preserve the “first filer” position is important to protect the investment before building a brand. The decision also underscores the importance of trademark applicants The court’s decision to grant the interlocutory injunction despite no use of the trademark by the first filer has significant implications for anyone adopting a new mark in Canada

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