This blog previously reported on the Federal Court’s decision in Target Event Production Ltd. v. Paul Cheung and Lions Communications Inc. In that January 11, 2010 decision, the Court considered the trademark and copyright infringement claims of the Plaintiff, Target Event Production, which arose when the Defendants, Paul Cheung and his company Lions Communications, operated a Chinese night market beginning May 2008 in the location where Target had previously run a similar business until late 2007. Specifically, Target’s claims were based on Lions’ use of a name similar to the “RICHMOND NIGHT MARKET” trademark owned by Target, as well as Lions’ use of a nearly identical site plan and vendor registration form.
The Court found that although Target’s trademark was valid as of January 2007, it was not durable and lost its distinctiveness when Target failed to re-open open a market by 2009. However, the Court proceeded to find that Lions’ actions in 2008 were confusing to visitors (but not to vendors) of the market in breach of section 6(5) of the Trade-marks Act. The Court found that since Lions had lost money operating its market, there could be no accounting of profits but only an award of $15,000 in damages for copyright infringement and the tort of passing off. The Court held Paul Cheung jointly liable with Lions and issued an injunction preventing Paul Cheung and Lions from operating their market in a manner which was a “substantial reproduction” of Target’s site plan.
Paul Cheung and Lions appealed the Court’s decision and a 15 page judgement was issued by the Federal Court of Appeal on October 5, 2010. Paul Cheung and Lions contended that the Federal Court was mistaken in finding that Target had a valid enforceable trademark, and that Target suffered damage, both of which are necessary for a court to have jurisdiction to entertain a claim for passing off under the Trade-marks Act (the existence of goodwill and deception due to misrepresentation being the other requirements). Further, Paul Cheung and Lions argued that the Federal Court was mistaken in finding them jointly and severally liable and in enjoining them from operating their market. Target cross appealed claiming that the Federal Court was mistaken in finding that its trademark lost its distinctiveness by 2009 and in awarding inappropriate injunctive relief. Read more