On February 10, 2022, the Ontario Superior Court of Justice (the Court) in 2788610 Ontario Inc. v Bhagwani et al., 2022 ONSC 905, issued an interlocutory injunction prohibiting Hemant Bhagwani, Fatima Bhagwani, 1727799 Ontario Inc. and Bombay Frankie Inc. (collectively, the Defendants), from using the term “Bombay Frankie” as the name of any restaurant or franchising business, social media account, or website.
In October, 2020, 2788610 Ontario Inc. (the Plaintiff) filed an application to register the trademark “Bombay Frankies”. In seeking an order for an interlocutory injunction against the Defendants, the Plaintiff asserted that, pursuant to the Trademarks Act: (i) it filed for the proposed trademark first and thus has priority over anyone who files a subsequent application; (ii) a trademark is registrable when it is intended to be used but not yet in use; and (iii) the Defendants could not rely on a prior use argument because they did not use “Bombay Frankies” as a tradename.
Prior to 2021, the Defendants operated several restaurants and used the term “Bombay Frankie” in menus to identify a product or food. In 2021, the Defendants began using the name “Bombay Frankie”, applied to register a trademark of that name, and incorporated and opened two restaurants under that name. The Defendants asserted that the Plaintiff: (i) had no priority in the trademark; and (ii) had not used the trademark in the public forum, which meant that the Plaintiff obtained no goodwill or reputation with respect to the name and there was no confusion to the general public.
The Court applied the three-part test set out by the Supreme Court of Canada in RJR MacDonald Inc. v Canada (Atty. Gen.), 1994 CanLII 117 (SCC), in assessing whether to grant the interlocutory injunction. First, the Court concluded that there was a serious issue to be tried, noting that threshold for “serious issue” is a low one. Second, the Court held that the Plaintiff would suffer undue disadvantage and irreparable harm not compensable monetarily if the injunction was not granted, noting that the Plaintiff applied for registration and put considerable work into planning and developing the launch of its franchise restaurants. Lastly, the Court maintained that while there would be some inconvenience to the Defendants, “until the trademark issue is finally determined, one party should not have an advantage over the other developing a reputation and goodwill under the confusing trademark”. The Court found that the balance of convenience favoured the Plaintiff.
Ultimately, the Court granted the interlocutory injunction, restraining the Defendants from using “Bombay Frankie” as the name of any of their restaurants, franchising businesses, or social media accounts and ordering them to cease using “www.bombay-frankie.com” until the application has been heard or until further order of the court.
Summary By: Steffi Tran
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