T-118-97
| BETWEEN: |
| THE KUN SHOULDER REST INC. |
| Plaintiff |
| AND: |
| JOSEPH KUN VIOLIN AND BOW MAKER INC. |
| MARIKA KUN and MICHAEL KUN |
| Defendants |
| REASONS FOR ORDER |
| NADON J. |
| The Plaintiff seeks to obtain an interim injunction against the Defendants. Specifically the Plaintiff seeks to prevent the Defendants from: |
| (iii) displaying, offering to sell, advertising and distributing or causing to be sold, advertised or distributed, violin and viola shoulder rests bearing or associated with the names "Kun" or "Joseph Kun" or "Joseph Kun, Violin and Bow Maker" or "Joseph Kun Violin and Bow Maker Inc." at the Frankfurt Music Fair in Frankfurt, Germany, commencing February 26, 1997 and each day thereafter until the termination of said Music Fair and any subsequent music fair; |
| To obtain the injunction which it seeks the Plaintiff must satisfy the test enunciated by the Supreme Court of Canada in RJR-MacDonald Inc. v. A.G. of Canada, [1994] 1 S.C.R. 311 at 333 and Re Attorney General of Manitoba and Metropolitan Stores (MTS) Ltd. et al. (1987), 38 D.L.R. (4th) 321 at 333-334 (S.C.C.). Pursuant to that test a Plaintiff must demonstrate that there is a serious issue to be tried, that irreparable harm will result if the relief is not granted and finally that the balance of convenience is in its favour. |
With respect to a serious issue, the Defendants do not deny that there are serious issues to be tried. However, the Defendants take the position that this Court is without jurisdiction to hear these issues. The Plaintiff does not agree with the Defendants on the jurisdiction point but submits that, in any event, that issue is at the very least a serious issue to be tried. I agree.
I now turn to the second part of the test. The second element required to be established by the Plaintiff is that it will suffer irreparable harm if the injunction sought is not granted. In this vein the Plaintiff has alleged as irreparable harm: confusion between the Plaintiff, "Kun Shoulder Rest Inc.", manufacturing and selling violin and viola shoulder rests and the Defendant company, "Joseph Kun Violin and Bow Maker Inc.", also manufacturing and selling violin and viola shoulder rests; publicity of patentable improvements to the Collapsible shoulder rest currently manufactured by the Plaintiff which improvements are allegedly stolen from the Plaintiff and which would render the improvements part of the public domain and therefore unpatentable for violation of novelty and nondisclosure requirements; the loss of goodwill in the name Kun in association with shoulder rests; and obliteration and/or diminution of the value of the Plaintiff's trade-mark as a result of a loss of distinctiveness with this surname and shoulder rests.
Confusion
The evidence before me indicates that there has already been confusion created in the market place with respect to the Kun name and the two companies who are parties to this action. What is not clear is the extent of that confusion and whether it can be remedied. As the creation of confusion is something which has already occurred (although it may worsen over time) the Plaintiffs are not relieved of their burden of adducing clear evidence of harm which cannot be compensated with a monetary sum. (See Centre Ice v. National Hockey League (1994), 53 C.P.R. (3d) 34 (F.C.A.)) A quia timet motion cannot be alleged on this ground.
With respect to confusion there is also evidence that the Plaintiff has taken steps to correct the misapprehensions created by the actions of the Defendant. What success has been achieved through these actions has not been established. Furthermore, the Plaintiff will have more opportunity of correcting any confusion or misapprehension at the Frankfurt Music Fair. Finally, for the confusion which has already been caused and may be caused between now and the time of the issuance of an interlocutory injunction, if any, the Plaintiff has not established that a monetary award covering the expenses incurred in correcting the confusion will be insufficient.
On this ground alone, the Plaintiff has not adduced enough evidence to satisfy the test of irreparable harm. However, as confusion does play a role in the other allegations I find that there is evidence before me of confusion in the market place and also evidence that further confusion can be expected if the Defendants continue with their course of action.
Publicity
With respect to the second ground that this injunction is necessary in order to prevent publication of patentable material, this cannot be the basis for issuing an interim injunction. The Plaintiff complains of the association between the actions of the Defendants and the name "Kun". The Plaintiff seeks an interim injunction restraining the Defendants from
| displaying, offering to sell, advertising and distributing or causing to be sold, advertised or distributed, violin and viola shoulder rests bearing or associated with the names "Kun" or "Joseph Kun" or "Joseph Kun, Violin and Bow Maker" or "Joseph Kun Violin and Bow Maker Inc."... |
The act complained of is the association of the product with the name and for this reason the mere publicity of the product cannot be prevented on the basis of the allegations and evidence before me.
In addition, the Patent Act, R.S.C. 1985, c. P-4, s. 27 provides:
| 27(1) Subject to this section, any inventor or legal representative of an inventor of an invention may, on presentation to the Commissioner of a petition setting out the facts (in this Act termed the filing of the application) and on compliance with all other requirements of this Act, obtain a patent granting to the applicant an exclusive property in the invention unless |
* * *
| (c) the invention was, before the date of filing of the application or before the priority date of the application, if any, disclosed by a person other than a person referred to in paragraph (d) in such a manner that it became available to the public in Canada or elsewhere; or |
| (d) the invention was, more than one year before the date of filing of the application, disclosed by the applicant or by a person who obtained knowledge of the invention, directly or indirectly, from the applicant, in such a manner that it became available to the public in Canada or elsewhere. |
Either the improvements in question were created by the deceased Joseph Kun or his son. If created in fact by Joseph Kun, the theft and/or misappropriation of the improvements by his son and daughter and the publicity thereof still means the Plaintiff has one year within which to file an application for a patent. Thus, the public display of the new shoulder rest will not render the improvements unpatentable because inventor-derived public display is forgiven for one year under the Patent Act.
Goodwill and Distinctiveness
The third basis on which the Plaintiff argues there will be irreparable harm is the loss of good will in the name "Kun" in association with shoulder rests. This allegation is inextricably tied to the issue of the loss of distinctiveness of the trade mark and thus the two points will be dealt with together. Section 12 of the Trade-marks Act, R.S.C. 1985, c. T-13 provides:
| 12(1) Subject to section 13, a trade-mark is registrable if it is not |
| (a) a word that is primarily merely the name or the surname of an individual who is living or has died within the preceding thirty years |
| (2) A trade-mark that is not registrable by reason of paragraph 1(a) or (b) is registrable if it has been so used in Canada by the applicant or his predecessor in title as to have become distinctive at the date of filing an application for its registration. |
The Plaintiff has been using the "Kun" name as its trade-mark and trade name with respect to shoulder rests since the 1970's. If the Defendants are permitted to attend the Frankfurt Fair, where there will be a substantial concentration of the relevant market, and to use the name "Kun" in association with shoulder rests there will certainly be a dilution of the distinctiveness of the "Kun" name in relation to the production and distribution of violin and viola shoulder rests. Dilution and the resulting loss of distinctiveness would render the "Kun" name unregistrable and/or expungable from the trade-mark register.
Goodwill has been defined as "...the drawing power...to attract and retain customers." (Ciba-Geigy Canada Ltd. v. Novopharm Ltd. (1994), 56 C.P.R. (3d) 289 at 326) and as:
| [T]he benefit and advantage of the good name, reputation, and connection of a business. It is the attractive force which brings in custom. |
| (Inland Revenue Commissioners v. Muller & Co.'s Margarine Ltd., [1901] A.C. 217 (H.L.) at 223-224.) |
By rendering the name "Kun" no longer distinctive to a single manufacturer of shoulder rests, the Defendants will be taking from the Plaintiff the goodwill on which the company is based. Thus, the irreparable harm here is the loss of the distinctiveness of the name "Kun" which will lead to the loss of the trade-mark and the consequential loss of the goodwill.
For these reasons I find that the Plaintiff has in fact adduced enough evidence to allow me to infer that the continuance of two "Kun" companies in the shoulder rest business may well eradicate the distinctiveness of the mark and subsequently erase all goodwill the Plaintiff has created which attracts purchasers specifically to the Plaintiff company.
With respect to the last part of the test, the balance of convenience issue, I am of the view that the harm done to the Plaintiff, should I refuse to allow the injunction, will be greater than the harm done to the Defendants should I allow the injunction.
The relief which I am giving the Plaintiff is an order restraining the Defendants from, in effect, promoting and selling their new KADENZA shoulder rest in association with the name "KUN". Consequently, nothing prevents Michael and Marika Kun from attending the Frankfurt Fair and promoting their KADENZA as long as they abide by the restraint which this Court is ordering.
For these reasons, the Plaintiff's application is allowed.
Judge
MONTREAL, QUEBEC
February 13, 1997
T-118-97
THE KUN SHOULDER REST INC.
Plaintiff
JOSEPH KUN VIOLIN AND BOW MAKER
INC., MARIKA KUN and MICHAEL KUN
Defendants
REASONS FOR ORDER
FEDERAL COURT OF CANADA
APPEAL DIVISION
NAMES OF COUNSEL AND SOLICITORS OF RECORD
COURT NUMBER: T-118-97
| BETWEEN: THE KUN SHOULDER REST INC. |
Plaintiff
AND:
JOSEPH KUN VIOLIN AND BOW MAKER INC.
MARIKA KUN and MICHAEL KUN
Defendants
PLACE OF HEARING: Ottawa, Ontario
DATE OF HEARING: February 11, 1997
REASONS FOR ORDER BY: The Honourable Mr. Justice Nadon
DATED: February 13, 1997
APPEARANCES:
Mr. William Richardson for the Plaintiff
Mr. Bruce Stratton for the Defendants
SOLICITORS OF RECORD:
McCarthy Tétrault for the Plaintiff
P.O. Box 48, Suite 4700
Toronto Dominion Bank Tower
Toronto, Ontario
M5K 1E6
Dimock Stratton Clarizio for the Defendants
20 Queen Street West
Suite 3202
Toronto, Ontario
M5H 3R3