Court File and Parties

Court File No.: CV-18-00001395-0000 Date: 2018/12/11 Superior Court of Justice - Ontario

Re: Kishki World Foods Inc., Plaintiff And: Kishki Halal Super Market Inc. and Mona Loffelmann, Defendants

Before: G. E. Taylor, J.

Counsel: Jarvis Postnikoff, Counsel for the Plaintiff Steven Gadbois, Counsel for the Defendants

Heard: December 5, 2018

Endorsement

Introduction

[1] The plaintiff seeks an interlocutory injunction to prevent the defendants from using the name “Kishki Halal Supermarket” in connection with a grocery store which is about to open.

[2] Abdulkadir Mohamed uses the nickname “Kishki” and has for many years. From approximately 2002, Abdulkadir Mohamed operated a grocery store known as Kishki Halal Food Market from the Highland Road Plaza in the City of Kitchener.

[3] By 2013, Kiskhi Halal Food Market was in some financial difficulty. Abdulkadir Mohamed entered into an arrangement with Malcolm Friedland which resulted in the incorporation of Kiskhi World Foods Inc. Following the incorporation of Kiskhi World Foods Inc. the grocery store at the Highland Road Plaza operated under the name Kiskhi World Foods. Abdulkadir Mohamed was never a shareholder, officer or director of Kiskhi World Foods Inc. but he continued as an employee.

[4] In January 2018, Abdulkadir Mohamed’s employment with Kiskhi World Foods was terminated. There is a separate lawsuit underway regarding that termination. In July 2018, Kiskhi Halal Super Market Inc. was incorporated by the defendant Mona Loffelmann. At least at the time of the commencement of the present lawsuit, Abdulkadir Mohamed was not a shareholder, officer or director of Kiskhi Halal Super Market Inc. The defendants plan to open a grocery store to be called Kiskhi Halal Supermarket in the Parkdale Plaza in the City of Waterloo which is approximately 20 kilometres from the Highland Road Plaza.

[5] The plaintiff does not object to the defendants opening the planned Halal supermarket at the Parkdale Plaza but the plaintiff does object to that grocery store operating under the name Kiskhi Halal Supermarket.

Evidence on the Motion

[6] In addition to the above facts, which I believe to be largely uncontested, there was additional evidence about which there is significant disagreement. For example, there is disagreement about how valuable an employee Abdelkadir Mohamed was to the plaintiff. There is a significant issue about the reasons for the termination of Abdulkadir Mohamed’s employment with the plaintiff. As I have noted, there is an outstanding lawsuit regarding that and other issues. There is much debate about the reasons for, and effect of, Abdulkadir Mohamed allowing his nickname to be used by both the plaintiff and the corporate defendant without him being a shareholder, officer or director of those corporations.

[7] However, because of the conclusion that I have reached as set out below, I do not consider it necessary to address those factual and evidentiary disagreements.

Analysis and Discussion

[8] In RJR-MacDonald Inc. v. Canada (Attorney General), [1994] 1 S.C.R. 311, the Supreme Court of Canada set out the three stage test to be applied for the granting of an interlocutory injunction at paragraph 43:

a) a preliminary assessment must be made of the merits of the case to ensure that there is a serious question to be tried;

b) it must be determined whether the applicant would suffer irreparable harm if the application were refused;

c) an assessment must be made as to which of the parties would suffer greater harm from the granting or refusal of the remedy pending a decision on the merits.

The applicant must establish each of these preconditions on a balance of probabilities.

[9] The three necessary components for a plaintiff to prove to be successful in a passing off action are:

a) the existence of goodwill or reputation in association with a trade-mark and trade-name;

b) deception to the public due to a misrepresentation; and

c) actual or potential damage to the plaintiff.

(Toronto Cricket Skating & Curling Club v. Cricket Club Townhouses Inc., [2003] O.J. No. 6261 at paragraph 4.)

[10] In addressing the first branch of the RJR-MacDonald test it is necessary to consider the components of a passing off action. I am prepared to accept that, having used the name “Kiskhi” in connection with the grocery store at the Highland Road Plaza for a period of four years, the plaintiff established a degree of goodwill in connection with the name “Kiskhi”.

[11] The second component which needs to be established to be successful in a passing off action is deception of the public. There is no evidence that the public has been deceived or is likely to be deceived into thinking that Kiskhi Halal Supermarket is the same entity as, or associated with, Kiskhi World Foods. I am not prepared to make such a finding, in the absence of evidence, that the public will be deceived simply because both retail establishments use the word “Kiskhi” as part of their names.

[12] In Toronto Cricket Skating & Curling Club v. Cricket Club Townhouses Inc., [2003] O.J. No. 6261 there was considerable evidence about the confusion between the plaintiff and the defendant. There was evidence that the general manager of the plaintiff had received inquiries from persons who assumed that the plaintiff was building a condominium. There was evidence that persons had telephoned the plaintiff wanting to make appointments to view units in the condominium development. Floor plans for the condominium had been delivered in error to the plaintiff.

[13] In Car-Wal Garage Doors Inc. v. On Track Door Systems Canada Inc., [2018] O.J. No. 5310 the plaintiff provided evidence that the defendant's actions had caused significant confusion to the plaintiff's clients, potential clients and the public. There was evidence that the plaintiff had been contacted by numerous existing customers and potential customers who believed they were contacting the defendant. There was evidence that the plaintiff had received numerous complaints from existing customers who had contacted the defendant in error, believing it to be the plaintiff. These customers were unhappy with the service they received and had expressed upset with the plaintiff. Suppliers of the defendant had mistakenly invoiced the plaintiff. There was evidence that suppliers of the plaintiff had expressed confusion to the plaintiff because they had been asked by the defendant for supply quotes when the plaintiff had already obtained quotes from those suppliers. Customers of the defendant had mistakenly sent payment to the plaintiff for services rendered by the defendant.

[14] There is no evidence before me similar to the type of evidence which was before the courts in Toronto Cricket Skating & Curling Club and Car-Wal Garage Doors. Rather, the evidence is to the contrary. According to the evidence of Malcolm Friedland, who swore an affidavit in support of the present motion and who was cross examined on that affidavit, Abdulkadir Mohamed is going to considerable lengths to distance himself from the plaintiff. According to Malcolm Friedland, Abdulkadir Mohamed is making racist comments about him and telling members of the Muslim community that the store in Highland Plaza was stolen from him by Malcolm Friedland and his family. Malcolm Friedland testified that staff members are being abused as a result of the statements being made by Abdulkadir Mohamed. At question 245 of the transcript of his cross- examination, Malcolm Friedland stated: “and with all the anti-Jewish stuff, he may – they may end up destroying our business and if they do, that will be the reason …”

[15] When cross-examined, Malcolm Friedland was asked if he had evidence about the number of customers of the plaintiff who patronize the store because of the name “Kiskhi” and he said he did not. He also said that there are fewer customers who attend at the store because of the use of the name “Kiskhi” or because of the association with Abdulkadir Mohamed than there were previously (question 435). He also said that the name “Kiskhi” at the present time does not really draw people to the store but rather people patronize the store because of the product (question 437).

[16] Accordingly, I am unable to conclude that the plaintiff has led evidence of deception of the public due to a misrepresentation.

[17] The third component of a passing off action is actual or potential damage to the plaintiff caused by the defendants’ deceptive misuse of the plaintiff’s goodwill. On the evidence before me, the damage that has been or will be sustained by the plaintiff is or will be as a result of the racial attacks made by Abdulkadir Mohamed against Malcolm Friedland and his family. At question 319 of his cross-examination, Malcolm Friedland stated: “we are dealing with this anti-Semitic stuff, and that could bring the business down.” At question 324 he stated: “so I am sure once he opens, that will ramp up, the – the – the race – the racial stuff will ramp up even more. And that is what I am concerned about.” And at question 438 he stated: “Will they then continue to circle from those stores to his new – to their new store, will we lose 30 percent, 50 percent, or 10 percent, I truly have no way of knowing. I mean you know sadly, what I’ve seen within the community; you know, it would not surprise me if the anti-Semitism card plays very strongly.”

[18] Although I was not provided with the pleadings, I was advised that there is a second lawsuit between Malcolm Friedland and his family and Abdulkadir Mohamed in which the issue of racial epithets and the reason for the termination of the employment of Abdulkadir Mohamed with the plaintiff are directly in issue.

[19] I therefore conclude that the plaintiff has not satisfied the first branch of the RJR-MacDonald test to show that there is a serious issue to be tried.

[20] With respect to the second branch and third branches of the RJR-MacDonald test, I am not satisfied that the plaintiff has established that it will suffer irreparable harm if the injunction is not granted nor am I satisfied that the balance of convenience favours the plaintiff. Although I expressed the contrary view during the course of oral argument, I have decided that it would be possible for the plaintiff to establish damages if it is ultimately found that the defendants are liable for the tort of passing off. The evidence is that the plaintiff’s sales have improved since the departure of Abdulkadir Mohamed. If the plaintiff’s sales drop significantly following the opening of Kiskhi’s Halal Supermarket, it would seem to me to be a reasonable assumption that the reduction in sales is as a result of the competition from Kiskhi’s Halal Supermarket. Conversely, if the injunction is granted, the Halal grocery store in the Parkdale Plaza will not open using the name “Kiskhi” and it will be impossible to determine what additional business would have been attracted to that location had it operated under the name Kiskhi’s Halal Supermarket.

[21] I therefore find that the plaintiff has failed to satisfy the requirement to show that it will suffer irreparable harm if the injunction is not granted. I further find that the balance of convenience favours the defendants.

Conclusion

[22] For these reasons, the motion for an interlocutory injunction is dismissed.

[23] The parties have agreed on costs fixed in the amount of $10,000 to the successful party. Accordingly, I fix and award the costs of this motion payable to the defendants by the plaintiff at $10,000 inclusive of disbursement and HST. These costs are payable within 30 days.

G.E. Taylor, J. Date: December 11, 2018