Canada: Missing The Bull's-Eye - TARGET Fails To Get Interlocutory Injunction Against Use Of Registered Trade-Mark

Target Brands Inc. v. Fairweather Ltd. 2011 FC 758

A recent decision by the Federal Court showed once again that there is a high threshold for the granting of interlocutory injunctions.

Pending final disposition of this action, Target sought an interlocutory injunction to restrain the Defendants (Fairweather) from operating a retail store in association with a trade-mark or trade name comprising TARGET or a bull's-eye design, and from displaying, advertising or using the word TARGET or a bull's-eye design to direct public attention to Fairweather's business so as to cause confusion with Target's business.  

Target, however, failed to convince the Court both that it would suffer irreparable harm if the injunction was not granted and that the balance of convenience favoured the granting of an injunction, and the motion was accordingly dismissed.

Background

Target, the American retail chain store, has been operating in the United States since 1962. It is known by its U.S. trade name TARGET either in conjunction with or separately from a red bull's-eye logo mark. Currently, Target does not have any stores located in Canada and will not ship purchases to Canada. However, Target states that its trade-mark has been well known in Canada since at least the 1990's due to Canadians visiting their U.S. stores, and due to advertising that crosses the U.S./Canada border.  On January 13, 2011, Target announced their plans to open 100 to 150 Target stores in Canada in 2013 and 2014.

In 2001, Fairweather purchased the registered trademark "TARGET APPAREL" and in 2003 opened a Target Apparel discount clothing store in Toronto. This store has regularly advertised clothing sales in Toronto newspapers. A chain of Target Apparel stores were rolled out as a new market niche family discount clothing store in Nova Scotia in 2009, British Columbia in August 2010, and in 12 other locations thereafter. The signage for many of the stores uses the word "Target" in larger letters than the accompanying word "Apparel", with red as a predominant colour. A red Canadian maple leaf inscribed within a circle accompanies the words Target Apparel.

The test for an interlocutory injunction

The test for an interlocutory injunction involves the following three questions:

  1. Is there a serious issue to be tried?
  2. Would the applicant suffer irreparable harm if the injunction is refused?
  3. In whose favour does the balance of convenience lie?

Failure to succeed on even one of these questions, and the motion will be denied. The threshold for assessing whether there is a "serious issue to be tried" is a low one, essentially requiring that the claim not be frivolous or vexatious. "Irreparable harm" is harm that cannot be compensated by way of an award of damages or otherwise cured, and refers to the nature of the harm incurred rather than its magnitude. The "balance of convenience" is a determination of which of the two parties will suffer the greater harm from the granting or refusal of an interlocutory injunction pending a decision on the merits.

This interlocutory injunction also engaged consideration of the factors to be established in a passing-off action, the components of which are: (a) goodwill; (b) deception of the public due to a misrepresentation (i.e. confusion); and (c) actual or potential damage to the plaintiff.

Application of the test to the present case

Serious Issue

This case involves two sizeable business entities with similar business trade names where both sell a similar product, namely clothing. Target's evidence was sufficient to raise an issue as to whether Fairweather's Target Apparel stores launch would deceive customers into thinking the stores are affiliated with Target and would harm Target's reputation.

Irreparable Harm

Target submitted that its brand name is one of the most valuable brands in retailing and that its "brand promise" included neat clean stores, well stocked unique products, and helpful knowledgeable employees. Target argued that Fairweather's Target Apparel stores break the Target brand promise by selling a more limited range of goods, differing significantly in store design, layout, product assortment and service, and varying from store to store. As a result, Target suggested that once consumers associated a store with a poor shopping experience that it would be difficult if not impossible to change those perceptions, which would have a significant impact on consumer shopping behaviour for years to come. Essentially, Target argued that its 'brand equity' would be damaged when consumers who confused the stores would not find the same quality of service as promised.

The Court, however, determined that these assertions were best left for the fullness of a trial where the trial judge would have more flexibility with assessing the expert evidence adduced. Target's argument was not helped by their practice of allowing other small businesses to continue using the name "Target" in Canada through a license, which undercut its submission that it was harmed by the perception that Target Apparel stores were somehow linked with Target. In the result, Target failed to prove on a balance of probabilities that it would suffer irreparable harm during the intervening months until a decision was rendered in the trial of this matter. 

Balance of Convenience

There was no evidence that Target would be prevented or delayed from opening Target stores in Canada as a result of the operation of Fairweather's Target Apparel stores. Moreover, with a trial date set for late 2012, Target's allegation of adverse impact on its "brand promise" would be addressed in advance of its planned Target store openings in 2013. The granting of an interlocutory injunction, on the other hand, would mean that Fairweather would have to remove and replace its signage for all stores which would, on the evidence, involve significant negotiations with various landlords. Moreover, Fairweather has taken precautionary steps in the face of Target's claims by inscribing a maple leaf in a circle rather than use a red bull's-eye, posting a disclaimer to the effect that it is not associated with Target, and undertaking to maintain records of its sales while litigation is pending. In the result, the Court found that the balance of convenience lied with Fairweather rather than Target.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

Authors
 
In association with
Related Topics
 
Related Articles
 
Related Video
Up-coming Events Search
Tools
Print
Font Size:
Translation
Channels
Mondaq on Twitter
 
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
 
Email Address
Company Name
Password
Confirm Password
Position
Mondaq Topics -- Select your Interests
 Accounting
 Anti-trust
 Commercial
 Compliance
 Consumer
 Criminal
 Employment
 Energy
 Environment
 Family
 Finance
 Government
 Healthcare
 Immigration
 Insolvency
 Insurance
 International
 IP
 Law Performance
 Law Practice
 Litigation
 Media & IT
 Privacy
 Real Estate
 Strategy
 Tax
 Technology
 Transport
 Wealth Mgt
Regions
Africa
Asia
Asia Pacific
Australasia
Canada
Caribbean
Europe
European Union
Latin America
Middle East
U.K.
United States
Worldwide Updates
Registration (you must scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions

Mondaq.com (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of www.mondaq.com

To Use Mondaq.com you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these Terms or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.

Disclaimer

The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use of the Content or performance of Mondaq’s Services.

General

Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions