The Same Old Song
2572495 Ontario Inc., carrying on business as Vacuum Parts Canada (VPC), sought an interlocutory injunction to stop the defendants from copying its photographs, or using its trademark “VPC” or its tradename “Vacuum Parts Canada.” 2572495 Ontario Inc. v. Vacuum Specialists (1985) Ltd. 2023 FC 345
Both VPC and the defendant, Vacuum Specialists (1985) Ltd. (“VS”) sell parts for vacuum cleaners, including components used with a central vacuum system in a residential home. They advertise and sell their products on Amazon.ca, an online marketplace that allows individuals to search for products and to purchase them without the need to visit an actual retail store.
The plaintiff claims that VS is infringing its trademark by “linking” its products to the plaintiff’s product pages on Amazon.ca, which amounts to falsely associating the VPC trademarks with the products sold by VS. The plaintiff also claims copyright infringement, because it says that VS has copied its advertisements, including photographs and product descriptions. VPC says the VS’s activities are undercutting its market and causing it irreparable harm. The plaintiff sought an interlocutory injunction to stop this infringing activity until the trial occurs.
VS did not dispute it had linked to VPC product detail pages on Amazon, but it says that in doing so it was following Amazon’s policy. The Amazon Intellectual Property Policy, expressly permits sellers to link to existing product pages: “other sellers can list their items for sale on pages to which you have added your copyrighted images, even if you no longer sell that product.” VS says that all of its activities comply with Amazon’s policies, and that VPC cannot complain because it agreed to abide by those same policies when it joined that platform.
The Test for Granting an Interlocutory Injunction
The three-part test for the grant of an interlocutory injunction is well known. At the first stage, the Judge undertakes a preliminary investigation of the merits to decide whether the applicant demonstrates a serious question to be tried, in the sense that the application is neither frivolous nor vexatious. The applicant must then, at the second stage, convince the court that it will suffer irreparable harm if an injunction is refused. Finally, the third stage of the test requires an assessment of the balance of convenience, to identify the party which would suffer greater harm from the granting or refusal of the interlocutory injunction, pending a decision on the merits.
A Serious Issue or a Strong prima facie case
The “serious issue to be tried” threshold is not a high bar – it is often summarized as merely requiring the Judge to make a preliminary assessment to ensure that the claim is neither “vexatious nor frivolous”. Exceptions include where a mandatory interlocutory injunction is sought. Here the appropriate inquiry is whether the applicant has shown a strong prima facie case. A mandatory injunction directs the defendant to undertake a positive course of action, such as taking steps to restore the status quo, or to otherwise put the situation back to what it should be, which is often costly or burdensome for the defendant and which equity has long been reluctant to compel.
In this case the Judge was persuaded that the practical effect of the order VPC sought required VS to de-link all its listings that connect to VPC product pages. The evidence showed that such links existed when the application was heard, and there was no evidence they had been removed in the intervening period. Compliance with the order VPC sought clearly required VS to do something, rather than to refrain from doing something, and was a mandatory order.
Unfortunately for VPC the Judge was not persuaded that VPC has demonstrated a strong prima facie case, meaning a strong likelihood on the law and the evidence presented that, at trial, VPC will be ultimately successful in proving the allegations set out in its claim.
The term irreparable harm refers to the nature of the harm rather than its scope or reach; it is generally described as a harm that cannot be adequately compensated in damages or cured. Such harm cannot be based on mere speculation, it must be established through evidence at a convincing level of particularity. In addition, the evidence must demonstrate a high likelihood that the harm will occur, not that it is merely possible.
The Judge was not persuaded that VPC has demonstrated irreparable harm through evidence at a convincing level of particularity – as required by the Federal Court of Appeal.
The result in this decision is unsurprising since the Federal Court of Appeal has strictly required that the applicant present evidence of irreparable harm which is clear and not speculative. There is a strong reluctance to deprive a defendant of its right to a full trial.
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These comments are of a general nature and not intended to provide legal advice as individual situations will differ and should be discussed with a lawyer.
A version of this article originally appeared in the Law360 Canada published by LexisNexis Canada Inc.