• Motion for Summary Judgment Granted: Court Awards $15,000 in Damages, $13,000 in Costs
  • January 8, 2015 | Authors: Adrian J. Howard; Beverley Moore; Chantal Saunders; Ryan Steeves
  • Law Firm: Borden Ladner Gervais LLP - Ottawa Office
  • Source Media Group Corp. v. Black Press Group Ltd., 2014 FC 1014

    This was a motion for summary judgment claiming relief under the TrademarksAct for the infringement of the Plaintiff’s registered trademark NEW HOME LIVING arising from the Defendant’s unauthorized use of the trademark NEW HOME LIVING.

    The Defendants admitted using the same registered trademark of the Plaintiff, NEW HOME LIVING, up until 2012. In 2012, the Defendants admitted that they stopped using “New Home Living” on its publication, but continued to use a reference to the website www.newhomelivingbc.com until 2014. The Court therefore found that the Defendants have infringed, as admitted, the Plaintiff’s trademark during this period, and have passed off their publication, both in print and online form, as being associated or connected to the Plaintiff’s trademark. The Court held, however, that there was insufficient evidence before it to support a finding of depreciation of goodwill.

    The Plaintiff also argued that the Defendants should not have included settlement discussions in their submissions, as these were subject to a settlement privilege. The Defendants provided a letter from the Plaintiff’s counsel which discusses an offer made by the Defendants. The Court held that the Defendants could have limited their comments to the fact that they participated in settlement discussions, and that such disclosure, as made by the Defendants, breached the settlement privilege and should not be encouraged.

    The Court held that the Defendants demonstrated a “reproachable attitude” in using the Plaintiff’s trademark, which added to the damages of infringement sought. While no evidence of loss and goodwill was submitted, the Plaintiff submitted that
    an award in the $15,000 to $25,000 range would be adequate. The Court considered applicable case law, and noting the Defendants’ “attitude of persistently using the registered trademark”, found that damages in the amount of $15,000 were reasonable. In respect of the Defendants’ inclusion of documents pertaining to settlement discussions, the Court held that while the actions were inappropriate, the Defendants’ conduct did not rise to a level where cost sanctions were necessary. In view of the Defendants’ lack of meaningful participation in the proceedings, failure to stop using the trademark reference online, and the fact that “the proceedings should not have gone that far”, the Court granted costs in a lump sum amount of $13,000 (plus post-judgment interest at 5%) in favour of the Plaintiff.