Canada: Damages Awarded In Passing-Off Action Relating To Domain Names ((Intellectual Property Weekly Abstracts Bulletin: Week Of August 20, 2012))

Last Updated: August 30 2012

Dentec Safety Specialists Inc. v. Degil Safety Products (1989) Inc.

Both Dentec and Degil sell industrial safety products. Dentec's web address is Degil registered and used the domain name Visitors to this domain name were redirected, without notice, to Degil's website at

Dentec brought this action in the Ontario Superior Court of Justice, alleging the tort of passing-off. The Court set out a number of principles arising from cases addressing passing-off in the context of domain names. The Court then concluded that Dentec established the existence of goodwill, that Degil made a misrepresentation to the public that would likely have caused confusion as to whether the defendant's goods were the plaintiff's goods, and that Dentec suffered actual damages. The Court noted that, although Dentec did not introduce direct evidence of loss, it would be unrealistic to determine that there had not been loss during the period of time that Degil redirected visitors to its website. The Court awarded damages in the amount of $10,000, as requested by Dentec, although noting that there was no evidence of the losses suffered by Dentec. Punitive damages were refused.

Application for Interlocutory Injunction Dismissed

Automated Tank Manufacturing Inc. v. Peter Miller and Larry Bertelsen

Automated Tank Manufacturing (ATM) commenced this action in the Queen's Bench for Saskatchewan, seeking relief in respect of the alleged misuse of confidential information by the Defendants. ATM brought the within application for an interlocutory injunction and an order dispensing with the need for ATM to provide an undertaking as to damages.

In support of its application, ATM relied on evidence from a patent infringement action commenced by the Defendant Bertelsen against ATM. The Defendant Miller sought to strike this evidence on the basis of the implied undertaking rule. The Court held that this rule did apply in the circumstances surrounding the disclosure of the documents relied upon by ATM, but as Bertelsen did not object to the evidence and Miller was not a party to the Federal Court action, Miller could not rely on the implied undertaking rule.

The Court concluded that ATM had established a serious issue to be tried, and that there may be a meaningful risk of irreparable harm, despite a lack of direct evidence that the harm had yet been suffered. The Court particularly noted ATM's evidence as to its loss of reputation and the difficulty in finding a buyer for its business as the basis for this finding. However, the Court found that the balance of convenience does not favour ATM. The Court also commented on the request by ATM regarding the undertaking for damages, and noted that "no court in Saskatchewan has failed to include such a requirement in granting an interim injunction." The application was dismissed.

"Anti-Suit" Injunction in respect of Action in Illinois Court Denied

Agemian v. Pactiv LLC

Agemian brought the within application in the Ontario Superior Court of Justice, seeking an injunction against the Respondents to prevent them from pursuing a patent infringement action in the United States, Northern District of Illinois-Eastern Division (the "Illinois Court"). The Court set out the test to be met in such an application, namely that the applicant must establish that the foreign court assumed jurisdiction for a reason that is inconsistent with forum non conveniens principles; and the Court must then determine whether an injustice will result from the foreign action continuing.

The Court found that Agemian failed to met either step of the test. There are a number of basis for the Illinois Court to have jurisdiction. Further, although not necessary in light of the Court's finding in respect of the first step of the test, the Court held that Agemian did not demonstrate that he would suffer a substantial injustice if the action in the Illinois Court is permitted to continue.

Judgment from California Court Enforced by Ontario Court

Blizzard v. Simpson

Blizzard is seeking to have a judgment from the United States District Court for the Central District of California (the "California Court") enforced in Ontario. The California Court granted a Judgment awarding an injunction and damages against the Respondent, Simpson (the "Judgment"). The action in the California Court relates to, inter alia, copyright infringement.

The Ontario Superior Court of Justice noted that, in order for the Judgment to be enforced, it must be "satisfied that the California Court properly assumed jurisdiction according to Canadian conflict of laws rules, that there are no applicable defences of fraud, breach of natural justice, or public policy, established upon which this Court could refuse to enforce the California judgment and that the injunctive relief granted in the foreign judgment is enforceable in Canada."

The Court found that the applicant had met the necessary test, and ordered that the Judgment be recognized and enforced as a judgment of the Ontario Court.

Other Industry News

Health Canada has published a Draft Guidance Document - Biopharmaceutics Classification System Based Biowaiver. Comments are due by November 19, 2012.

Health Canada has published a Reminder for Sponsors - E2A: Clinical Safety Data Management: Definitions and Standards for Expedited Reporting.

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