Sole director of restaurant business found personally liable

SOLE DIRECTOR OF A RESTAURANT BUSINESS FOUND PERSONALLY
LIABLE FOR TRADEMARK INFRINGEMENT AFTER FAILING TO COMPLY
WITH A DELAY IN THE JUDICIAL PROCEEDINGS
**
MARCEL NAUD
LEGER ROBIC RICHARD, LLP
LAWYERS, PATENT AND TRADEMARK AGENTS
In a judgment rendered on September 4, 2009 by Justice Russel W. Zinn in
2045978 Ontario Inc. (Chaps the Original) v. Chaps Aldershot Inc. (Lezley's Chaps),
2009 FC 872 (CanLII), the Federal Court of Canada found that Chaps Aldershot Inc.
and its president, secretary, treasurer and sole director Kevin Saunders (the
“Defendants”), have infringed the Canadian trade-mark CHAPS, registered by the
Plaintiff on March 30, 2005 in association with restaurant services.
The Plaintiff operates a restaurant under the name “Chaps The Original” in the town
of Burlington, Ontario and the evidence shows that it is well-known and has been
active since 1981.
In 2006, the defendant Chaps Aldershot Inc. purchased a restaurant business from a
third party, which included the goodwill and trade name associated thereto. The
Defendants then started to carry on the business as “Lezley’s Chaps” and the
restaurant was on the same street as “Chaps The Original”, with only 6 kilometres
between the two.
The Plaintiff filed a motion for summary judgment to obtain a permanent injunction
against the Defendants restraining them from (i) infringing the Plaintiff’s CHAPS
trade-mark; (ii) using the trade-mark Lezley’s CHAPS or any trade-mark or tradename that causes confusion with the Plaintiff’s CHAPS trade-mark and (iii) directing
public attention to their services or business in such a way as to cause or be likely to
cause confusion with the Plaintiff’s services or business.
© CIPS, 2009.
*
Marcel Naud is a lwayer and trade-mark agent with LEGER ROBIC RICHARD, LLP, a
multidisciplinary firm of lawyers, and patent and trade-mark agents. Published in an October issue of
World Trademark Report. Publication 293.061
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According to a timetable agreed upon by the parties and approved by the Court, the
Plaintiff had until July 27, 2009 to serve and file its Motion Record and the
Defendants then had until August 7, 2009 to file their responding Motion Record.
However, the Defendants failed to comply with their delay: they filed, on August 24,
2009, an affidavit from the defendant Kevin Saunders dated August 12, 2009 and
served the next day, without an affidavit to explain, under oath, why the affiant was
unable to swear the affidavit prior to August 12, 2009.
Given that the Defendants did not requested permission from the Court to allow the
late filing, erroneously assuming that it would not be a problem, the Court refused
that the affidavit be part of the evidence on the motion. However, even if the Court
had accepted the affidavit, it would not have been sufficient to show that there was a
genuine issue requiring a trial.
In light of the evidence before it, the Court, allowing the motion for summary
judgment, concluded that the Defendants were liable of trade-mark infringement and
passing off, and that the defendant Kevin Saunders “engaged in a deliberate, wilful
and knowing pursuit of a course of conduct that he knew constituted infringement of
the Plaintiff’s trade-mark”.
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