TRADE MARKS |
Practice |
Weight Watchers International, Inc. v. Vale Printing Ltd.
T-238-00
Heneghan J.
2/6/00
13 pp.
Motion to add OntarioStar and Humphries as defendants; motion seeking interim, interlocutory injunction restraining OntarioStar, Humphries from transferring any rights in wwcompanion websites to third party and violating plaintiff's trade-mark rights by using marks "Weight Watchers" or "WW"; order requiring OntarioStar, Humphries to preserve all material relating to wwcompanion website or to domain names wwcompanion.net, wwcompanion.com--Motion arising in context of action for trade-mark infringement, statutory passing-off, depreciation of goodwill from ICA Canada's alleged display of trade-mark "Weight Watchers", term "WW" on websites--Ownership of websites transferred from ICA Canada to OntarioStar through principal Humphries--Federal Court Rules, 1998, r. 104(1)(b) permitting Court to order addition as party of person who ought to have been joined as party or whose presence necessary to ensure all matters in dispute effectually, completely determined--Based on transfer, logical to add OntarioStar, Humphries as parties as presence necessary to ensure matters in dispute effectually, completely determined--Evidence not supporting conclusion "WW" trade-mark of plaintiff--Without proof of right in term "WW", no basis on which could grant interim, interlocutory injunction restraining defendants from using domain names--But evidence supporting conclusion "Weight Watchers" registered trade-mark of plaintiff--Plaintiff relying on r. 377 for motion for interim, interlocutory injunction--R. 377 providing for preservation of property that is subject-matter of proceeding--In applying r. 377, necessary to have regard to test established for interlocutory injunctions governed by r. 373--Must ask whether transfer of rights in websites, domain names to third party meets requirements of three-part test set out in Perini America Inc. v. Alberto Consani North America Inc. (1992), 45 C.P.R. (3d) 58 (F.C.T.D.)--No evidence on which Court could order OntarioStar, Humphries not to transfer domain names to third party--Domain names not violating plaintiff's "Weight Watchers" trade-mark--Plaintiff not submitting any evidence on which could conclude plaintiffs have right over "WW" or that "WW" acquired secondary meaning--Fact domain names containing term "WW" insufficient to grant order impeding OntarioStar, Humphries from transferring domain names--Serious issue to be tried stemming from unauthorized use, display of "Weight Watchers" trade-mark on wwcompanion.net website--Transfer of website to third party, having practical result of avoiding any order Court might grant against defendants, constituting irreparable harm--When other factors appear to be evenly balanced, prudent to take such measures as will preserve status quo--Thus balance of convenience favouring plaintiff--Plaintiff fulfilling three prongs of three-part test--Order to issue directing defendants not to transfer, assign any of its interests in website wwcompanion.net or contents to third party pending resolution of main action initiated by plaintiff against defendants--R. 373 appropriate rule for seeking interlocutory injunction to enjoin OntarioStar, Humphries from any alleged unauthorized use, display of "Weight Watchers" trade-mark--Application of three-part test in American Cyanamide Co. v. Ethicon Ltd., [1975] A.C. 396 (H.L.)--As current owners of website not operating site since transfer, impossible to determine if contents raising serious issue to be tried--Merely potential for serious issue to be tried--Based on evidence, no serious issue to be tried with regard to OntarioStar's, Humphries' alleged unauthorized use, display of trade-mark "Weight Watchers"--Federal Court Rules, 1998, SOR/98-106, rr.104(1)(b), 373, 377.