Federal Court grants interlocutory injunction in trademark action for second time in six months

In a recent trademark case, the Federal Court has granted an interlocutory injunction in favour of Canada’s regulator of immigration and citizenship consultants against an entity using the name “College of Immigration and Citizenship Consultants.”

In Immigration Consultants of Canada Regulatory Council v. CICC The College of Immigration and Citizenship Consultants Corp., 2020 FC 1191, the Immigration Consultants of Canada Regulatory Council, the national self-regulator of immigration and citizenship consultants since 2011, filed a motion for an interlocutory injunction against the defendants, including the corporate defendant CICC The College of Immigration and Citizenship Consultants Corp., the successor of the Canadian Society of Immigration Practitioners, which had previously unsuccessfully applied to be the designated national self-regulator.

The plaintiff submitted that the new College of Immigration and Citizenship Consultants Act, SC 2019, c 29, s 292, which came into force on Dec. 9, 2020, permitted the plaintiff to continue as the regulator under the name “College of Immigration and Citizenship Consultants.”

The Federal Court granted the motion for an interlocutory injunction, which restrained the defendants from using the business name and marks of CICC The College of Immigration and Citizenship Consultants Corp. and other words or symbols suggesting that they are the College of Immigration and Citizenship Consultants established under new College Act, in their business or as a trademark.

The court also banned the defendants from using the domain name cicc-lcic.com, from maintaining a certain LinkedIn listing and from representing themselves as the national regulator of immigration or citizenship consultants, pending the court’s disposition of the ongoing claims.

The court found that the plaintiff had complied with the test for an interlocutory injunction under RJR-MacDonald Inc. v. Canada (Attorney General), 1994 CanLII 117 (SCC), [1994] 1 SCR 311 in relation to certain provisions of the Trademarks Act, because there were serious issues to be tried requiring a consideration of the action’s merits and because the defendants had caused irreparable harm to the plaintiff, to its orderly transition under the new College Act, and to the public interest. The court ruled that the balance of convenience favoured the plaintiff. The overarching consideration, said the court, was whether granting the interlocutory injunction would be just and equitable given the context and the circumstances.

This is the second time in six months that the Federal Court has issued an interlocutory injunction in a trademark action, wrote Bereskin & Parr LLP’s R. Scott MacKendrick and Tamara Céline Winegust in a blog post.

The case is notable because Justice Janet Fuhrer said the question of irreparable harm may be satisfied by inference from the whole of the surrounding circumstances, MacKendrick told Canadian Lawyer, which effectively broadens what may be considered irreparable harm and what evidence may be required to satisfy the Federal Court.

Bereskin & Parr’s article considered whether trademark injunctions are continuing to wake from hibernation. Six years ago, interlocutory injunctions involving trademarks and other intellectual properties were exceedingly rare, MacKendrick says, with the court rigorously requiring that the evidence of irreparable harm be clear and non-speculative and that the harm itself be non-quantifiable and non-compensable in damages.

“In the more recent decisions, what we are seeing is that while the evidentiary requirements remain, the Federal Court is recognizing additional circumstances where interlocutory injunctive relief should be granted, and is prepared to draw suitable inferences from the surrounding circumstances to base such findings,” he adds.

MacKendrick notes that this awakening goes beyond just trademark actions. MacKendrick cites VFluid Energy Group Ltd. v. Exaltexx Inc., 2020 FC 81, in which Justice Nicholas McHaffie granted an interlocutory injunction in a patent infringement action, finding that an interlocutory injunction based on s. 7(a) of the Trademarks Act was available for a wronged party to enjoin conduct such as writing cease-and-desist letters of a threatening nature, which were directed at third parties doing business with the defendant.