Date: 19990426
Docket: T-1839-98
BETWEEN:
BELL ACTIMEDIA INC.
Plaintiff
- and -
ANDREA PUZO
-and-
PHILIP ARMAND
Doing business under the name
COMMUNICATIONS GLOBE TÊTE
Defendants
REASONS FOR ORDER AND ORDER
BLAIS J.
[1] This is a motion by the plaintiff for an interlocutory injunction. This motion is part of a trade-mark infringement action.
FACTS
[2] The plaintiff company produces and distributes trade and telephone directories in Canada. It also provides business listings on the Internet.
[3] The plaintiff also owns the Canadian rights to the trade-marks YELLOW PAGES and PAGES JAUNES.
[4] These trade-marks were registered in Canada at the registration office under the numbers:
| (i) the mark YELLOW PAGES: nos. TMA 246988; TMA 205312; and TMA 495876; |
(ii) the mark PAGES JAUNES: nos. TMA 246989 and TMA 266549.
[5] The plaintiff has been using these trade-marks in Canada since as long ago as 1948.
[6] The defendants, Andrea Puzo and Philip Armand, do business as a partnership under the name Communications Globe Tête. The partnership was registered on August 16, 1996.
[7] www.lespagesjaunes.com is an electronic address that Globe Tête Communications uses in connection with an international communication system called the Internet.
[8] An organization called INTERNIC assigns electronic Internet addresses using a Universal Resource Locator (URL). INTERNIC gave Globe Tête Communications the address www.lespagesjaunes.com. This address is used worldwide for a site that is marketed as the [TRANSLATION] "business directory of the French-speaking world".
ISSUES
[9] The issues are:
| 1. Is the moving party entitled to an interlocutory injunction? |
| 2. Does the moving party have a prima facie right to an interlocutory injunction? |
| 3. Has the moving party established that it will suffer irreparable harm if the interlocutory injunction is not granted? |
| 4. Does the balance of convenience favour the moving party? |
| 5. Is there any urgency in the case at bar, and did the moving party exercise its rights promptly? |
ARGUMENT OF THE PLAINTIFF
[10] In its statement of claim of September 21, 1998, the plaintiff alleges that the defendants violated its proprietary rights in the trade-marks by using them without lawful permission.
[11] It is alleged that the defendants contravened section 7 of the Trade-marks Act by using the plaintiff"s trade-mark PAGES JAUNES, and that this is unfair competition within the meaning of the Act.
[12] It is alleged that the defendants made false or misleading statements tending to discredit the plaintiff"s business.
[13] It is alleged that the defendants caused confusion in Canada between their wares, services and business and those of the plaintiff.
[14] It is alleged that the defendants passed off their wares and services as and for those of the plaintiff.
[15] It is alleged that the defendants" use of the plaintiff"s trade-mark has the effect of depreciating the value of the goodwill attaching to that trade-mark.
[16] It is alleged that the defendants are partners, who have been doing business under the name Globe Tête Communications since 1996 and have failed to produce their annual report in accordance with the law.
[17] It is alleged that the plaintiff has been in business since 1920 and has had sales of 500 million dollars for the past 10 years.
[18] It is alleged that the plaintiff"s telephone directories are distributed in every province, and that since 1990, nine million directories have been distributed in Ontario, 5 million directories in Quebec, 3 million in British Columbia and 2 million in Alberta; generally speaking, every Canadian household can be considered to have a copy of the YELLOW PAGES directory.
[19] It is alleged that the plaintiff has also registered several Internet sites, including www.yellowpages.ca, www.pagesjaunes.ca, www.canadayellowpages.com and www.pagesjaunescanada.com.
[20] It is alleged that the plaintiff was informed in July 1998 that the defendants, doing business as a partnership under the name Globe Tête Communications, were using the trade-mark PAGES JAUNES in association with business advertising services on an Internet site with the domain name www.lespagesjaunes.com.
[21] It is alleged that as soon as the plaintiff was informed that its trade-mark was being used, it immediately notified the defendants to cease this deemed illegal use of its trade-marks.
[22] The defendants immediately responded to the notice by informing the plaintiff that they had changed their Internet site so as to no longer make use of its trade-marks.
[23] The plaintiff subsequently discovered that the changes had not in fact been made as mentioned, and asked its lawyer to take action again by way of notice, and then by way of motion for an injunction.
[24] The plaintiff argues that it has always fiercely defended its rights and trade-marks every time they were infringed, referring to previous decisions of this Court in 1991 and 1994.
[25] The plaintiff argues that the defendants are using the trade-marks illegally, and that in the long run, this might jeopardize the distinctiveness the trade-marks have had for over 50 years.
[26] The plaintiff argues that the interim injunctions the Federal Court granted per Mr. Justice Dubé on September 28, 1998, and then per Mr. Justice Pinard on October 5, 1998, must be maintained as interlocutory injunctions until the final judgment.
SERIOUS QUESTION
[27] The plaintiff argues that there is a serious question to be tried. To that end, it argues that it generates annual sales of about 500 million dollars, and that its trade-marks have been in use since 1948 and have gained a considerable reputation in the Canadian market over the years.
[28] The defendants" use of the domain name www.lespagesjaunes.com and of the trade-mark PAGES JAUNES on their Internet site in connection with their products causes confusion within the meaning of section 6 of the Trade-marks Act and violates the moving party"s rights in its registered marks.
[29] The plaintiff argues that it has made out a prima facie case of an important right and that there is a serious question to be tried.
IRREPARABLE HARM
[30] With respect to its irreparable harm, the moving party suggests that if the defendants are allowed to resume using the trade-marks PAGES JAUNES before a final judgment is delivered, it will clearly suffer harm that a judgment on the merits cannot offset.
[31] Furthermore, the defendants have admitted that these marks have become well known to the Canadian public, and no evidence to contradict these facts has been placed before the Court.
[32] The plaintiff argues that in view of the amount of income related to its trade-marks, and in view of the equally considerable harm it could suffer, it is clear that the defendants could not adequately compensate the plaintiff for the harm it would have suffered by the time of the trial on the merits.
[33] The plaintiff submits that it is impossible to calculate the damages required to offset the amount of harm that could be done to the plaintiff, and that even if it were possible to establish them, neither of the defendants is in a position to compensate the plaintiff financially.
[34] The plaintiff also submits that all those who thought they were doing business with the plaintiff but because of the confusion in the use of the name PAGES JAUNES, were doing business with the defendants, could not under any circumstances be compensated in any way for the potential harm suffered as a result of an error, nor could the plaintiff be compensated for its clientele"s loss of confidence in its products and services.
[35] As for the defendants, maintaining the injunction currently in effect cannot cause them any irreparable harm since they can change names, as they have not yet used the trade-mark PAGES JAUNES long enough to build up a clientele of their own.
BALANCE OF CONVENIENCE
[36] With respect to the balance of convenience, the plaintiff submits that the balance clearly favours it.
[37] The plaintiff chiefly delivers its services in connection with its trade-marks PAGES JAUNES and YELLOW PAGES, and the defendants" unlawful competition strikes at the very heart of its activities.
[38] As for the defendants, according to their own advertisement, they already use other Web sites on the Internet and perform work other than preparing directories; they can continue their work without major inconvenience.
[39] The plaintiff also argues that the defendants even undertook to change their Internet site after they received the first notice, and that this did not seem to cause them too much trouble.
[40] To conclude, the plaintiff argues that it acted as quickly as possible to put a stop to the abuse of its name.
ARGUMENT OF THE DEFENDANTS
[41] In his argument, counsel for the defendants admitted to begin with that he did not dispute the plaintiff"s right to use its trade-marks in Canada.
[42] Basically, the defendants consider their connection to the Internet network to entitle them to use the domain name www.lespagesjaunes.com, which INTERNIC assigned them, in any country other than Canada, where the defendants claim the plaintiff has no rights.
[43] The defendants claim they have every right to operate their Web site www.lespagesjaunes.com in other French-speaking countries around the world from their address on rue du Parc, in Montréal, and that this does not infringe the plaintiff"s rights.
[44] The defendants also argue that the plaintiff implicitly gave them permission to use the name PAGES JAUNES by letting them have an advertisement in each of its directories that was delivered to every home in the greater Montréal area.
[45] The defendants suggest that if the Court were to hold that they could not use the name PAGES JAUNES in Canada, it would nevertheless have to limit the current injunction"s application strictly to Canada, and in that regard, the injunction already granted must thus be amended.
[46] The defendants consider the prohibitions in the Honourable Mr. Justice Dubé"s decision excessive in that they extend beyond Canada.
[47] The defendants argue that the Court cannot prohibit the defendants from operating an Internet site and distributing products for export to places beyond the Court"s jurisdiction.
[48] The defendants seek permission to "export" from their Web site in Montréal.
ANALYSIS
[49] According to the submissions of both counsel, it appears the defendants do not dispute the plaintiff"s right to have an injunction maintained under the circumstances.
[50] The defendants" objection is that if the injunction has to be maintained, it should be "trimmed" to cover Canada only, and should not under any circumstances prevent the defendants from using their Internet site outside Canada.
[51] With respect to the argument that the plaintiff supposedly consented to the use of the trade-mark PAGES JAUNES because one of its salespeople apparently accepted an advertisement in the PAGES JAUNES, I must dismiss this argument.
[52] The plaintiff"s salespeople have to deal with tens of thousands of clients every year to sell advertising in the PAGES JAUNES. Quite obviously, the salespeople examine the insets placed in the plaintiff"s directories before they are printed, but it is clear that it was an unfortunate mistake by one of the plaintiff"s salespeople to allow the reference to www.lespagesjaunes.com to appear in the corporate advertisement of the defendants" business Globe Tête Communications, and that it would be unreasonable to find based on that fact alone that the plaintiff waived its rights in the trade-marks it legally holds.
[53] It must also be noted that on the face of the contract between the two parties, the defendants had to know when they negotiated the purchase of advertising in the PAGES JAUNES directory that they did not own the rights to use the words PAGES JAUNES, and they certainly cannot argue good faith under the circumstances.
[54] As in its previous actions before the courts to prevent the illegal use of its trade-marks, the plaintiff"s vigilance on discovering that the defendants were using its trade-marks and the speed with which it took action before the Court show that it has never accepted its trade-marks being used by anyone, including the defendants.
[55] Having examined the issues, I have no hesitation in deciding that the plaintiff is entitled to an interlocutory injunction.
[56] In my view, a prima facie case for this entitlement was clearly made out, as had previously been done before my colleague Mr. Justice Dubé.
[57] Considering the amounts at issue and the particular problem for a business that has been using a trade-mark for over 50 years, I have no hesitation in recognizing that there is a serious issue to be tried.
[58] Nor do I have any hesitation in recognizing that the plaintiff has clearly established that it will suffer irreparable harm if the interlocutory injunction is not granted.
[59] The balance of convenience clearly favours the plaintiff, considering its 500-million-dollar sales and dealings with tens of thousands of businesses for over 50 years.
[60] I am also of the view that there is urgency in the case at bar, and that the plaintiff acted as promptly as possible as soon as it learned that the defendants were infringing its rights in the trade-marks.
[61] For all these reasons, the interlocutory injunction sought is maintained, and the defendants have raised no ground sufficient for me to alter the terms of the injunction the Honourable Mr. Justice Dubé has already issued. The injunction will thus be granted based on the wording the plaintiff submitted in English.
O R D E R
| IT IS HEREBY ORDERED that an interlocutory injunction be granted restraining the defendants, their employees, servants, brokers, agents, mandatories, assigns, and all those over whom they exercise control and all those who have knowledge of the injunction from: |
| i) using or assisting in using the "YELLOW PAGES" and "PAGES JAUNES" trade-marks or any confusingly similar trade-marks; |
| ii) further infringing or assisting anyone in infringing the plaintiff"s proprietary right in the following registered trade-marks in Canada: "YELLOW PAGES" TMA 246988, TMA 205312, and TMA 495876, and PAGES JAUNES TMA 246989 and TMA 266549; |
| iii) using the trade-marks "YELLOW PAGES" and "PAGES JAUNES" or imitations thereof in a manner that is likely to have the effect of depreciating the value of the goodwill attaching thereto. |
| IT IS HEREBY ORDERED THAT an interlocutory injunction be granted restraining the defendants, their employees, servants, brokers, agents, mandatories, assigns, and all those over whom they exercise control and all those who have knowledge of the injunction from : |
| i) further making false or misleading statements, tending to discredit the business, wares or services of the plaintiff; |
| ii) further directing attention to their wares, services and business in such a manner as to cause confusion between the wares, services and business of the plaintiff and those of the defendants; |
| iii) further passing off their wares, services and business as and for those of the plaintiff; |
| iv) further competing unfairly against the plaintiff. |
| IT IS HEREBY ORDERED THAT an interlocutory injunction be granted restraining the defendants, their employees, servants, brokers, agents, mandatories, assigns, and all those over whom they exercise control, and all those who have knowledge of the injunction from: |
| i) using the domain name www.lespagesjaunes.com or any other domain name confusingly similar with said domain name. |
| IT IS HEREBY ORDERED to the defendants, their employees, servants, brokers, agents, mandatories, assigns, and all those over whom they exercise control, and all those who have knowledge of the injunction to deliver up to the plaintiff or its representative: |
| i) all wares including computers, data cartridges, hard-drives, backups (whatever be their medium), diskettes, CD-Roms, stationary, catalogues, boxes, cartons, posters, signs, business cards and other promotional or commercial documentation bearing in any manner the trade-marks YELLOW PAGES and PAGES JAUNES or any imitation thereof, currently in the possession or control of the defendants, for purposes of being kept in custody pending the outcome of the trial, and |
| ii) copies of all purchase orders, invoices, sales slips, delivery slips, bills of lading, custom broker documents and accounting records relating to the defendants business to be used to establish the damages and/or the profits payable to the plaintiff. |
| All other rights and recourses that the plaintiff may have against the defendants are reserved. |
[62] With costs.
Pierre Blais
Judge
OTTAWA, ONTARIO
April 26, 1999
Certified true translation
Peter Douglas
FEDERAL COURT OF CANADA
TRIAL DIVISION
NAMES OF COUNSEL AND SOLICITORS OF RECORD
COURT NO.: T-1839-98
STYLE OF CAUSE: BELL ACTIMEDIA INC. v. ANDREA PUZO ET AL.
PLACE OF HEARING: MONTRÉAL, QUEBEC
DATE OF HEARING: APRIL 8, 1999
REASONS FOR ORDER AND ORDER OF BLAIS J.
DATED: APRIL 26, 1999
APPEARANCES:
HUGUES RICHARD FOR THE PLAINTIFF
ALAIN TREMBLAY FOR THE DEFENDANTS
SOLICITORS OF RECORD:
LÉGER, ROBIC & RICHARD FOR THE PLAINTIFF
MONTRÉAL, QUEBEC
DAVID & DAVID FOR THE DEFENDANTS
MONTRÉAL, QUEBEC