CITATION: 2788610 Ontario Inc. v. Bhagwani, 2022 ONSC 4843

DIVISIONAL COURT FILE NO.: 120/22
DATE: 20220823

ONTARIO SUPERIOR COURT OF JUSTICE DIVISIONAL COURT

BETWEEN:

2788610 ONTARIO INC.

Appellant

– and –

HEMAT BHAGWANI, FATIMA BHAGWANI, 1727799 ONTARIO INC. and BOMBAY FRANKIE INC.

Respondents

COUNSEL:

Alan D.J. Dick, for the Appellants

Noelle Engel-Hardy, for the proposed Intervenor International Trademark Association

Heard by Zoom in Toronto: Aug 18, 2022

REASONS FOR DECISION[^1]

D.L. Corbett J.

[1] The International Trademark Association (“ITA”) seeks to intervene in this appeal. For the reasons that follow the motion is dismissed.

[2] The appeal is in respect to an interlocutory injunction granted by C. Brown J. to restrain use of a disputed trademark. The plaintiff alleges the trademark belongs to it and that the defendants are not entitled to use it.

[3] As set out in the factums, there have been recent amendments to Canada’s trademark legislation. The ITA seeks to intervene to provide the court with argument on the meaning and effect of these amended provisions.

[4] The ITA has helpfully set out the points it wishes to argue at the appeal:

(a) how the prior use of a trademark may prevent registration of a pending application for a confusingly similar trademark;

(b) how an interlocutory injunction cannot be granted against a first user solely on the basis of an earlier trademark application without use;

(c) how the 2019 amendments to the Act do not change Canada’s use-based trademark system to a first-to-file trademark system;

(d) how a first-to-file system will essentially abolish the rule of use leading to conflict with long-standing Canadian jurisprudence, including numerous decisions of the Supreme Court of Canada; and

(e) how the concept of use or prior use remains a foundational principle of Canadian trademark law as reaffirmed by the Supreme Court of Canada decision in Masterpiece Inc. v Alavida Lifestyles Inc, 5 and in which INTA successfully intervened

[5] The points set out in (a), (c), (d) and (e) are not matters this court is likely to decide on this appeal. The impugned decision grants an interlocutory injunction. The general test on the merits for an interlocutory injunction is whether there is a serious issue to be tried. Even if it is thought that the test on the merits should be higher in this context, it is not the task of the motions court, or of this court on appeal from the motions court, to finally decide the underlying merits.

[6] The ITA’s proposed arguments focus almost exclusively on the final disposition of legal questions that will be before the trial court in this matter. I do not see how those submissions will assist this court on the upcoming appeal. Indeed, arguments focused on how the legal issues ought to be resolved on a final basis, could be a significant distraction from the real issues on appeal, which concern the statement and application of the proper test for an interlocutory injunction in the context of alleged trademark infringement.

[7] Issue (b) stated by the ITA could lie at the heart of the appeal. However, in reviewing the outline of argument in ITA’s factum, there is nothing about this issue other than its reference in the statement of issues. Further, the manner in which the issue is stated shows a preoccupation with the interesting issues raised by the amendments to the legislation, rather than a focus on the use of interlocutory injunctions in the context of trademark enforcement.

[8] I conclude that the ITA’s proposed intervention is focused primarily on issues that will not be decided on this appeal and could serve to distract rather than assist the appeal court.

[9] The motion is dismissed. As agreed, there shall be no costs of the motion.

D.L. Corbett J.

Decision Released: August 23, 2022

DIVISIONAL COURT FILE NO.: 120/22
DATE: 20220823

ONTARIO
SUPERIOR COURT OF JUSTICE
DIVISIONAL COURT

D.L. Corbett J.

BETWEEN:

2788610 ONTARIO INC.
Appellant

– and –

HEMAT BHAGWANI, FATIMA BHAGWANI, 1727799 ONTARIO INC. and BOMBAY FRANKIE INC.
Respondent

REASONS FOR DECISION

D.L. Corbett J.

Released: August 23, 2022

[^1]: This decision was provided to the parties by email on June 30, 2022, and was effective as of that date. The reasons have been edited without changing the substance of the decision.