Irreparable Harm Test No Different for Copyright, Trade-mark or Passing Off
Western Steel and Tube Ltd. v. Erickson Manufacturing Ltd. 2009 FC 791 (Snider J.)

July 31, 2009

David Seed for the Plaintiff, Western Steel and Tube Ltd.
Michael Adams for the Defendant, Erickson Manufacturing Ltd.

This was a motion for an interlocutory injunction in the context of an action for passing off and infringement of copyright and trade-mark rights among other causes. The purpose of the motion was in effect to prevent the Defendant from marketing what were characterized by the Plaintiff as the two alleged “knock off” ramps until there could be a determination on the substance of the allegations at trial.

The Court reiterated the tripartite test for an interlocutory injunction: (1) is there a serious question to be tried; (2) will the plaintiff suffer irreparable harm if the injunctive relief is not granted; and (3) does the balance of convenience favour the plaintiff. The Court was satisfied in respect of the first part of the test that “on this very low threshold, there is a serious question to be tried”.

For harm to be irreparable the Court stated that this refers to the nature of the harm suffered rather than its magnitude and that it is harm which either cannot be quantified in monetary terms or which cannot be cured. The Plaintiff argued that it is not necessary to show irreparable harm in cases of clear violation of copyright registered under the Copyright Act. The Court distinguished the cases relied upon for this point by the Plaintiff on one of two bases: (i) the cases pre-dated the consistent reinforcement of the Court of the requirement to show irreparable harm; or (ii) the cases related to preservation orders after there had been a specific finding that there was infringement of copyright. The Court held that there is no automatic conclusion that irreparable harm exists simply because the foundation of the action is an infringement of copyright or trade-mark or the tort of passing off.

In respect of the alleged loss of goodwill the Court found the evidence was inadequate since it was unsupported by any evidence other than that of the Plaintiff’s principal and there was no independent expert evidence as to the quality of the defendant’s product, nor was there evidence of confusion or that the Plaintiff’s reputation would suffer during the time to trial. In conclusion the Court held that the Plaintiff had failed to establish real and immediate irreparable harm, which cannot be compensated by damages.

In light of its finding on the issue of irreparable harm the Court did not address the balance of convenience. The motion was dismissed with costs to the Defendant in any event of the cause.

By: Michael Crinson, Dimock Stratton LLP