Superior Court of Quebec Refuses Injunction in Trade-Mark Case

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SUPERIOR COURT OF QUEBEC REFUSES INJUNCTION IN TRADE-MARK CASE
Stella Syrianos *
LEGER ROBIC RICHARD, Lawyers
ROBIC, Patent & Trademark Agents
Centre CDP Capital
1001 Square-Victoria - Bloc E – 8 th Floor
Montreal, Quebec, Canada H2Z 2B7
Tel.: (514) 987 6242 - Fax: (514) 845 7874
www.robic.ca - info@robic.com
The Superior Court of Quebec refused to grant an injunction to the Plaintiff
Illico Communication. The Court held that the services in association with the
Parties’ trade-marks differed significantly, resulting in its finding that there was
no risk of confusion between the trade-marks ILLICO, ILLICO
COMMUNICATION and the trade-mark ILLICO (Illico Communication Inc. v.
Vidéotron Ltée et al, No 500-05-067846-012, August 20 th , 2004).
The facts
Plaintiff
Illico Communication Inc, (hereinafter the “Plaintiff”) offers computer assisted
jurisprudence searches. Plaintiff also publishes a legal bulletin and on the
Internet, publishes articles for the general public relating to case law searches.
The vast majority of the Plaintiff’s clientele is comprised of lawyers. Plaintiff has
been operating a web site since 1997 allowing mainly for the promotion of its
services.
Plaintiff is the owner of the registered trade-mark ILLICO in association with
computer assisted case law search services and the trade-mark ILLICO
COMMUNICATION in association with graphics services relating to publicity in
magazines and banners as well as drafting, translated and editing publicity texts.
Defendants
Vidéotron Ltée, (hereinafter “Videotron”), has been offering digital television
services and interactive television services since September 2001, under the
© LEGER ROBIC RICHARD / ROBIC, 2004
* Published at (December 2004),18-12 World Intellectual Property Report. Publication 142.169.
Published at (November 2004), 4-11 World E-Commerce & IP Report 9 under the title 'Illico"
marks For Web-Search,Digital TV Services Not Confusingly Similar.

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name ILLICO. In July, 2001, Videotron filed trade-mark applications for the trademarks
ILLICO, ILLICO.CA, ILLICO.COM and ILLICO.TV, in association with several
services, amongst others, access and navigation on the Internet, transactional
services as well as interactive television services, such as access to video games,
electronic messaging. In October 2001, Videotron also filed trade-mark
applications for the marks “i”LLICO design and “i”design with similar services.
On September 11 th , 2001, Plaintiff sent a cease and desist letter to the
Defendants ordering them to cease use of the trade-mark ILLICO, the latter
denying any risk of confusion between the marks at issue.
On November 1 st , 2001, Plaintiff filed an injunction before the Superior Court of
Quebec alleging trade-mark infringement . On June 14 th , 2002, the Plaintiff
aquired the design mark !LLICO and the same domain name in relation to the
conception and administration of web sites.
Issues at bar
Among the issues addressed by the Court were the following:
(i) Did the Defendants violate the Plaintiff’s exclusive trade-marks rights in its
mark ILLICO?
(ii) Does the Superior Court of Quebec have jurisdiction to declare the
Plaintiff’s trade-mark ILLICO COMMUNICATION ineffective against the
Defendants based on lack of distinctive character ?
(iii) Is the claim of ineffectiveness by the Defendants prescribed under the
Trade-marks Act ?
Superior Court of Quebec Decision
(i)
infringement
On the issue of infringement, the Superior Court held that the Defendants did not
violate Plaintiff’s trade-mark marks in the mark ILLICO. After reviewing the criteria
for confusion under the Trade-marks Act, the Court opined that there was no risk
of confusion between the marks at issue because the services offered by the
respective parties were “dramatically different”. The Court accorded
considerable weight to this criteria. On the one hand, Plaintiff offered case law
search services to a restricted portion of the public, mostly lawyers, who
accounted for 80% of its business, while on the other, Videotron offered digital
television services to the general public.
The Court also stated that the nature of the Parties’ trades differed. Plaintiff
offered its search services on-line, by telephone or by facsimile while Videotron

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offered services only via a subscription which also required the purchase of a
decoder at specific commercial establishments.
(ii)
jurisdiction of the Superior Court
On this issue, citing case law and doctrine, the Court held that it had the
requisite jurisdiction to declare a trade-mark ineffective against the Defendants.
The Court stated that the Defendants did not ask the Court expunge the
Plaintiff’s mark ILLICO COMMUNICATION which lies within the Federal Court’s
exclusive jurisdiction.
The Defendants sought a declaration of non-enforcibility of the mark ILLICO
COMMUNICATION against them based on the argument that the Plaintiff had
abandoned this mark associated with graphics and related services. The Court
held that there was no evidence before it that would allow for a conclusion of
abandonment.
(iii)
The issue of prescription was not addressed in light of the Courts findings
on ineffectiveness.
Conclusion
Based on the above findings, the Superior Court denied the Plaintiff’s
injunction request. In so doing, this decision supports the wave of
jurisprudence which demonstrates that injunctions are difficult to obtain,
particularly in the case where the products and/or services in question
radically differ from one another. Trade-mark practitioners should err on the
side of caution when contemplating such an action involving wares/services
which are unrelated.

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