In its March 30, 2012 Lassonde v. L'Oasis
d'Olivia decision, the Quebec Court of Appeal unanimously
reversed a Superior Court decision awarding $100,000 in
solicitor-client costs and $25,000 in punitive damages against
Industries Lassonde Inc. (Lassonde) because Lassonde's
trademark infringement action and motion for injunction was
considered to be an abusive legal proceeding. However,
Lassonde's victory was short-lived as an article published a
week later on the La Presse newspaper's website went
viral among internet users in Quebec and quickly spurred a social
media backlash against Lassonde, ultimately leading Lassonde to
backtrack and agree to pay L'Oasis d'Olivia's legal
Lassonde, manufacturer of the well-known OASIS brand juice, and
owner of numerous Canadian OASIS trademarks, has a history of
opposing third-party OASIS marks.
L'Oasis d'Olivia is a small home business selling
products such as massage bars and body lotion using the mark
In 2005, Lassonde commenced a trademark infringement
action against L'Oasis d'Olivia claiming likelihood of
confusion between its OASIS mark and the OLIVIA'S OASIS mark.
It also opposed L'Oasis d'Olivia's trademark
application for OLIVIA'S OASIS & Design, but later
abandoned the opposition. Toward the end of a five-day trial in
October 2009, L'Oasis d'Olivia's lawyers brought a
motion alleging that Lassonde's action constituted an abusive
legal proceeding under new provisions of the Quebec Code of Civil
Procedure (also known as anti-SLAPP provisions). In support of this
motion, L'Oasis d'Olivia presented evidence showing prior
instances where Lassonde had asserted its trademark in a seemingly
aggressive manner against other parties that were using the OASIS
mark for wares unrelated to juice. In addition to dismissing
Lassonde's infringement action, the trial judge, before making
the above-noted award, found that Lassonde, with its "economic
power and experience used a shotgun approach to attack Defendant
simultaneously on several fronts with [its] full might,
attempting... to intimidate and thwart Defendant from its
legitimate use of its trade name and trade-mark."
Lassonde appealed only on the issue of costs and punitive
damages. In a short judgment, the Appeal Court concluded that there
was no abuse of procedure for the following reasons:
A trademark owner who concludes that there is a likelihood of
confusion between the applied-for mark and its own mark has a right
to oppose and, in parallel, to seek an injunction.
In this case, the Superior Court's decision was detailed
and long, demonstrating that the action was not clearly destined to
There is a presumption that a party acts in good faith, and in
this case, there was insufficient evidence to show that Lassonde
had acted in bad faith.
The Appeal Court's ruling suggests that a high bar has been
set for success under the Anti-SLAPP provisions of the Quebec Code
of Civil Procedure, particularly since bad faith must be
The Appeal Court indicated that lack of evidence was material in
this decision. Had L'Oasis d'Olivia been able to provide
further evidence that Lassonde had acted in bad faith, it may well
have been successful in its pleading of abuse of procedure.
Parties undertaking legal proceedings in the Quebec courts
should be aware of Quebec's Anti-SLAPP provisions, and the
potential cost awards related thereto.
Beyond the Courts
About a week later (at 5:00am on April 7, 2012), La
Presse published an article describing L'Oasis
d'Olivia's eight-year legal battle with Lassonde, using the
heading "David and Goliath" to describe the two parties.
The article went viral, and by 1:00pm, had already produced, on
various social media sites, a wave of negative comments directed
towards Lassonde regarding its heavy-handed behaviour. Before the
end of the day, Lassonde had agreed to pay L'Oasis
d'Olivia's legal fees.
When trademark rights holders assert their rights too
aggressively, especially against smaller parties, even where they
do not lose in court, they risk losing in the court of public
What the public will consider improper or abusive may differ
drastically from the principles applied by the courts. With the
speed and prevalence of social media, rights holders should
consider not only their legal rights, but also the PR implications
of their actions.
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.
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A recent Saskatchewan Court of Queen's Bench decision allowed a court-appointed receiver to sell and transfer intellectual property rights free and clear of encumbrances, finding that a license to use improvements of an invention was a contractual interest and not a property interest.
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