Business Depot Ltd. v. Canadian Office Depot Inc.
T-3049-92
Rouleau J.
17/5/93
14 pp.
Application for interlocutory injunction restraining defendants from using name "Office Depot" in connection with business of selling office supplies and related services in Ontario-Interim order already granted in favour of plaintiff restraining defendants from using said name until hearing of motion -- Plaintiff now seeking to have order continued until trial of matter -- Company incorporated on January 24, 1991 to sell office supplies and related products and services in Ontario -- In considering interlocutory injunction, Court must first be satisfied as to serious question to be tried, then consider balance of convenience-Plaintiff's claim passing-off action based on Trade-marks Act, s. 7(b),(c) -- Genuine cause of action herein -- Plaintiff's claim cannot be considered either frivolous or vexatious nor doomed for failure at trial -- Proof of confusion or likelihood of confusion under s. 7(b) not essential in order to obtain interlocutory injunction -- Serious issue to be tried with respect to simultaneous use of two very similar marks in same geographical location -- Issue of irreparable harm whether plaintiff could be adequately compensated in damages should interlocutory injunction not be granted -- Loss during interim period until trial would have wide-ranging effects not easily quantified in damages -- Extensive and invaluable goodwill established by plaintiff in relation to "Business Depot" trademark and trade name, built up by company since beginning of operations in Ontario -- No evidence of significant reputation or goodwill established by defendants in Ontario -- Use of mark in foreign country not by itself establishing distinctiveness of mark in Canada -- Potential erosion of plaintiff's goodwill constituting irreparable harm, warranting issue of interlocutory injunction -- Harm or inconvenience suffered by Office Depot minimal if interlocutory injunction granted -- Balance of convenience clearly favouring plaintiff -- Application allowed.