Intellectual Property Law - ONSCDC

The appellants appealed an interlocutory injunction restraining them from using the name 'Bombay Frankie' for their restaurant business.

The respondent had applied to register the trademark but had not yet opened a restaurant or established goodwill when the action commenced.

The Divisional Court allowed the appeal and vacated the injunction, finding the motion judge erred in principle by concluding there was a serious issue to be tried.

The court held that a mere trademark application does not confer a right to sue for infringement, and start-up activities do not establish the goodwill necessary for a passing-off claim.

The International Trademark Association (ITA) brought a motion to intervene in an appeal regarding an interlocutory injunction restraining the use of a disputed trademark.

The ITA sought to make submissions on the meaning and effect of recent amendments to Canada's trademark legislation.

The court dismissed the motion, finding that the ITA's proposed arguments focused on the final disposition of legal questions that would be decided at trial, rather than the test for an interlocutory injunction which was the subject of the appeal.

The court concluded the intervention would distract rather than assist the appeal court.

The plaintiff brought an action for copyright infringement against several foreign corporate entities, alleging their animated film infringed his copyright in a short film of the same name.

The Master stayed the action against six defendants for lack of jurisdiction but allowed it to proceed against three others.

On appeal, the Divisional Court found the Master erred by failing to consider the evidence and misapplying the test for carrying on business.

Applying the real and substantial connection test, the Court held that Ontario has jurisdiction over all defendants except two, as there was a good arguable case that the other defendants committed copyright infringement in Ontario or the claim was in respect of property in Ontario.

The appellants appealed the dismissal of their motion for an interlocutory injunction.

The injunction sought to prohibit the respondent from challenging the validity of the appellants' U.S. patent, relying on a 'no-challenge' clause in a prior settlement agreement.

The motion judge had dismissed the motion, finding no strong prima facie case because the clause was deemed contrary to public policy based on U.S. case law.

The Divisional Court allowed the appeal, holding that the motion judge erred in her interpretation of the agreement and in applying U.S. law over Canadian law, which upholds such clauses in litigation settlements.

The Court found a strong prima facie case, irreparable harm, and that the balance of convenience favoured the appellants, granting the injunction.

The appellant, a photographer, appealed a trial judgment dismissing his copyright infringement action against a golf club and its CEO.

The appellant had provided the club with an album of photographs and later took additional photos for a wedding and the club's website.

The trial judge found the appellant had gifted the initial album unconditionally, creating an oral, non-exclusive license to use the photos.

The Divisional Court upheld this finding, confirming that non-exclusive licenses do not require writing under s. 13(4) of the Copyright Act.

However, the Court reversed the trial judge's finding that the club owned the copyright in the 'July to October photographs', as a handwritten note was insufficient to grant an exclusive license.

The appeal was otherwise dismissed.

The appellant, a photographer, appealed a trial judgment dismissing his copyright infringement action against a golf club and its CEO.

The appellant had taken photographs of the club and provided them to the CEO, who later used them in promotional materials.

The trial judge found the appellant had gifted the photos and granted an oral license for their use.

The Divisional Court upheld the finding that the oral license constituted a valid defence to infringement, as non-exclusive licenses do not need to be in writing under the Copyright Act.

However, the court reversed the trial judge's finding that the respondents owned the copyright in the 'July to October photographs', as an exclusive license requires a written grant.

The appeal was otherwise dismissed.

The moving party (appellant) sought leave to introduce fresh evidence on an appeal regarding a dispute over photographs.

The appellant argued the new evidence would contradict the trial judge's finding on the date the photographs were delivered, thereby undermining the trial judge's credibility assessment.

The Divisional Court dismissed the motion, finding that the proposed evidence was not in affidavit form, could likely have been obtained before trial with reasonable diligence, and would not be conclusive of the issue.

The appellant sought a stay of an interlocutory injunction order restraining it from using the words 'Cricket Club' in its real estate development marketing, pending a motion for leave to appeal.

The court applied the RJR MacDonald test for a stay, finding that the respondent had a very strong case on the merits for passing off, and would suffer irreparable harm through loss of control over its trade name if the stay were granted.

The motion for a stay was dismissed with costs.