Date: 20000822
Docket: T-1049-00
BETWEEN:
M.M. INTERNATIONAL BUSINESS DIRECTORIES LTD.
- and -
174440 CANADA INC.
Plaintiffs
- and -
INTERNATIONAL BUSINESS INDEX
- and -
DINH-HUNG (SIMON) DUONG
- and -
VINECAN TECHNOLOGIES INC.
- and -
3682099 CANADA INC.
- and -
365823 CANADA INC.
Defendants jointly and severally
REASONS FOR ORDER
ROTHSTEIN J. (ex officio)
[1] This is a motion
| (a) for continuation of an Anton Piller order issued on June 20, 2000 pursuant to which documents were seized from the defendants; and |
| (b) to convert into an interlocutory injunction the interim injunction granted on June 20, restraining the defendants "from offering for sale, displaying advertising, selling, manufacturing, distributing or otherwise dealing in (defined) DATA DISCS and DATA" and "from directing public attention to (the defendants") wares in such a way as to cause or be likely to cause confusion in Canada between those wares and the wares and services of the Plaintiffs". |
[2] The plaintiffs publish and distribute a business directory in hard copy and compact disc form. The Winnipeg defendants, International Business Index and 3652823 Canada Inc. and the Montreal defendants, Dinh-Hung (Simon) Duong, Vinecan Technologies Inc. and 3082099 Canada Inc. each distribute business directories in compact disc form.
[3] The plaintiffs say that each of the Winnipeg and Montreal defendants, contrary to paragraphs 7(b), (c) and (e) of the Trade-marks Act, R.S.C. 1985, c. T-13, have directed attention to their directories in a manner to cause confusion between the defendants" directories and the plaintiffs" directory and that they have passed off their directories as those of the plaintiffs. The plaintiffs also say that the Winnipeg defendants, contrary to subsection 20(1) of the Trade-marks Act , have infringed the plaintiffs" trade-mark in the use of the name International Business Index and a logo that they say is similar to the plaintiffs" logo. The plaintiffs also allege that the defendants have breached the plaintiffs" copyright by using the plaintiffs" proprietary data in the compilation of the defendants" directories.
[4] The defendant Duong had been an employee of the plaintiffs, and either while he remained an employee of the plaintiffs or shortly thereafter, went into competition with the plaintiffs. According to the plaintiffs, Duong took proprietary data of the plaintiffs which he used in the compilation of the Montreal defendants" directory. The plaintiffs say that Duong was in partnership with the brother of a principal of the Winnipeg defendants. It is alleged that the plaintiffs" proprietary data was passed on to the Winnipeg defendants and that it was used in the compilation of the Winnipeg defendants" directory.
[5] I have concluded that the Anton Piller order must be vacated and that the application to convert the interim injunction into an interlocutory injunction must be dismissed.
[6] As to the Anton Piller order, the requirements are set out in the oft repeated words of Ormrod L.J. in the case from which the colloquial name of the order is derived, Anton Piller K.G. v. Manufacturing Processes et al. [1976] 1 Ch. 55, at 62:
| First, there must be an extremely strong prima facie case. Secondly, the damage, potential or actual, must be very serious for the applicant. Thirdly, there must be clear evidence that the defendants have in their possession incriminating documents or things and that there is a real possibility that they may destroy such material before any applications inter partes can be made. |
While I have doubt that the plaintiffs" evidence at this point demonstrates an extremely strong prima facie case against the defendants, the issue of the continuation of the Anton Piller order does not require an extensive analysis of the strength of the plaintiffs" case because the plaintiffs clearly have not met the second requirement, showing that their damages are very serious.
[7] While the plaintiffs assert that there is confusion in the market-place as between their business directory and those of the defendants, I have no evidence of the extent of the harm suffered by the plaintiffs since the defendants commenced marketing their directories in compact disc form. Without some such evidence in this case, I do not see how I can ascertain whether the damages caused to the plaintiffs by the defendants" activities are very serious.
[8] The plaintiffs argue that from the defendants" revenue figures which have been placed in evidence, that it can reasonably be inferred that the plaintiffs have lost the equivalent revenue. However, the plaintiffs have led no financial evidence at all. I cannot tell whether the defendants" revenues are a large or a small percentage of the plaintiffs" sales, and even if I could, I cannot simply assume, without direct evidence from the plaintiffs, that the plaintiffs have lost the exact same revenues that the defendants have received.
[9] In WIC Premium Television v. Levin, [F.C.J.] No. 652 (QL), Sharlow J. (as she then was) observed at paragraph 23 that the test for an Anton Piller order is not simply the existence of a cause of action and some damages " there must be evidence of serious damage. That is missing in this case.
[10] I need go no further in respect of the Anton Piller order. It must be vacated.
[11] As to the interlocutory injunction application, I will accept that the plaintiffs have met the very low serious issue threshold and that despite some deficiencies at this point, the case is not frivolous or vexatious. The difficulty, as in many interlocutory injunction applications, is in respect of the proof of irreparable harm.
[12] The only irreparable harm argument made by the plaintiffs is that if the interlocutory injunction is not granted, the defendants will not be in a position to pay any damages that may be awarded the plaintiffs at trial. In evidence are some sales figures of the Montreal defendants approximating $150,000 per month and some general ledger figures of the Winnipeg defendants which suggest an excess of revenue over expenses of $235,000 over seven months. However, as previously indicated, there is no evidence from the plaintiffs as to the actual or potential damages that they have or will suffer as a result of the defendants" activities. Without such evidence, it is not possible to determine whether the defendants are capable of paying damages that might be awarded the plaintiffs at trial.
[13] The plaintiffs also argued that in the case of blatant trade-mark or copyright infringement, it is not necessary for the Court to make an explicit finding of irreparable harm or determine that the balance of convenience favours the plaintiffs. The plaintiffs rely on Jercity Franchises Ltd. v. Foord (1990), 34 C.P.R. (3d) 289 and cases referred to therein. Those cases appear to stand for the proposition that where a reasonably clear case of infringement of a registered trade-mark has been made out, the adequacy of damages as a remedy and the balance of convenience need not be further considered.
[14] I think that those cases, however, have been overtaken by more recent Federal Court of Appeal jurisprudence that proof of irreparable harm must be clear and not speculative and that proof of irreparable harm cannot be inferred from evidence of infringement, confusion in the market-place or even evidence of loss of the plaintiffs" good will (Syntex Inc. v. Apotex Inc. (1991), 36 C.P.R. (3d) 129, at 135 (F.C.A.) and Centre Ice Inc. v. National Hockey League (1994), 53 C.P.R. (3d) 34, at 53-54 (F.C.A.)). A summary of this more recent jurisprudence is set forth by Tremblay-Lamer J. in Caterpillar Inc. et al. v. Chaussures Mario Moda Ltd. (1995), 62 C.P.R. (3d) 338, at 343-345, and no useful purpose would be served by its repetition here. Suffice to say, evidence of trade-mark infringement, confusion or loss of good will, is insufficient.
[15] Absent proof of irreparable harm, the interlocutory injunction application must be dismissed.
[16] The matter of costs is reserved for agreement between the parties, failing which, the defendants may apply to the Court for a conference call to argue the matter of costs.
"Marshall Rothstein"
Judge
Toronto, Ontario
August 22, 2000
FEDERAL COURT OF CANADA
Names of Counsel and Solicitors of Record
| COURT NO: T-1049-00 |
| STYLE OF CAUSE: M.M. INTERNATIONAL BUSINESS DIRECTORIES LTD. |
| - and - 174440 CANADA INC. - and - |
INTERNATIONAL BUSINESS INDEX - and -
DINH-HUNG (SIMON) DUONG - and -
| VINECAN TECHNOLOGIES INC. - and - 3682099 |
CANADA INC. - and - 365823 CANADA INC.
| DATES OF HEARING: THURSDAY, AUGUST 17 TO SATURDAY, AUGUST 19, 2000 |
| PLACE OF HEARING: MONTREAL, QUEBEC |
| REASONS FOR ORDER BY: ROTHSTEIN J.A. |
DATED: TUESDAY, AUGUST 22, 2000
| APPEARANCES BY: Mr. Harold W. Ashenmil, Q.C. |
| For the Plaintiffs |
Mr. Colin R. MacArthur, Q.C.
For the Winnipeg Defendants
Mr. Claude Benabou
For the Montreal Defendants
| SOLICITORS OF RECORD: PHILLIPS, FRIEDMAN, KOTLER |
Barristers and Solicitors
1010, de La Gauchetière West, Suite 900
Montreal, Quebec
H3B 2P8
| For the Plaintiffs |
Tel.: (514) 878-3371
Fax: (514) 878-3691
FEDERAL COURT OF CANADA
Names of Counsel and Solicitors of Record
SOLICITORS OF RECORD (Cont"d):
AIKINS, MAC AULAY & THORVALDSON
Barristers & Solicitors
30 th Floor, 360 Man Street
Winnipeg, Manitoba
R3C 4G1
For the Winnipeg Defendants
| (International Business Index and 3652823 Canada Inc.) |
Tel.: (204) 957-0050
Fax: (204) 957-0840
YANOFSKY COOPERSTONE
Barristers & Solicitors
770, rue Sherbrooke Ouest, Bur. 1700
Montréal, Québec
H3A 1G1
For the Montreal Defendants
(Dinh-Hung (Simon) Duong, Vinecan
Technologies Inc. and 3682099 Canada Inc.)
Tel.: (514) 282-9144
Fax: (514) 282-8870
FEDERAL COURT OF CANADA
Date: 20000822
Docket: T-1049-00
BETWEEN:
M.M. INTERNATIONAL BUSINESS
DIRECTORIES LTD.
- and -
174440 CANADA INC.
Plaintiffs
- and -
INTERNATIONAL BUSINESS INDEX
- and -
DINH-HUNG (SIMON) DUONG
- and -
VINECAN TECHNOLOGIES INC.
- and -
3682099 CANADA INC.
- and -
365823 CANADA INC.
Defendants jointly and severally
| REASONS FOR ORDER |