Olympic gold medal winner and sprinter Bruny Surin has filed a trademark infringement case against Puma Canada Inc. and Puma North America Inc. (Puma N.A.) before the Quebec Superior Court, for the alleged unauthorized sales of running shoes bearing the SURIN, BRUNY SURIN and/or CELL SURIN trademarks, all owned by Mr. Surin.
Defendant Puma N.A. filed a motion requesting that the Court declines jurisdiction in its favour on the basis that it is neither domiciled in Quebec, not it has an establishment in Quebec and the fault, if any, was not committed in Quebec.
Unfortunately for Puma N.A., the Court denied its motion. The Civil Code of Quebec lists the factors to consider when determining if Quebec courts have jurisdiction, including that a fault has been committed in Quebec and a prejudice has been suffered in Quebec. While Puma N.A. affirmed that it is not selling the alleged infringing goods in Quebec, the Court disagreed, since its website has a French version and that its products could thus be purchased by Quebecers. Considering that facts alleged in the plaintiff's application are held to be proved, the Court concludes that a fault – i.e. the unauthorized use of the plaintiff's trademarks - seems to have been committed by Puma N.A. in Quebec.
The court also concluded that since the plaintiff resides in Quebec, he is suffering his prejudice in Quebec and damages resulting from these sales.
Alternatively, Puma N.A. requested that the Court declines jurisdiction arguing that the courts of Massachusetts would be a better forum to hear this case against it. However, the Court concludes that this power to decline jurisdiction for another jurisdiction is an exercise of discretion, and that there are sufficient reasons to maintain this matter before the Quebec courts, including that it is in the interest of justice to do so since the amount of damages claimed is limited and the plaintiff is an individual against a large corporation with far more financial resources.
This case reminds us that it may be difficult to convince Quebec courts to decline jurisdiction in a trademark infringement matter, especially if sales occur on the Internet. The mere fact that the defendant is a Quebec resident should not be sufficient to maintain jurisdiction - otherwise Quebec courts would always have jurisdiction in all cases filed by a Quebec resident against anyone in the world - but when a plaintiff is able to show other facts, such as it is the registered owner of the alleged infringed trademarks and that the infringement occurred in Quebec, then Quebec courts will surely maintain their jurisdiction.
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