Target Event Production Ltd. v. Paul Cheung and Lions Communication Inc. concerns a trademark and copyright claim that arose when the Defendants took advantage of a business opportunity the Plaintiff chose not to exploit.

During the summer months of 2000 through 2007 the Plaintiff operated a popular Asian night market in Richmond, British Columbia.  The market was held on land leased by the Plaintiff, and the Plaintiff in turn leased space to vendors selling a wide variety of food products and merchandise.  The Plaintiff created a logo which included the text “Richmond Night Market Summer Festival” in English and “Richmond Summer Night Market” in Chinese characters.  The market was popularly known as “Richmond Night Market” and the Plaintiff applied for that name as a trademark in English and Chinese, although only the English mark was registered at the time of the hearing of the court action.

In 2007, when the Plaintiff was unable to renegotiate its lease at a favourable price, it announced that the market might not be held in 2008, unless the Plaintiff located an alternative space, which it was unable to do.  The Defendants became aware that the space the Plaintiff had been leasing was available, negotiated a lease, obtained the necessary permits from the City and sought out vendors.  However, the Defendants adopted a name similar to that which the Plaintiff had been using, and copied various documents the Plaintiff had created, including a vendor application form and a plan for the market showing the location of food and merchandise booths.

In lengthy reasons, Madam Justice Simpson of the Federal Court carefully examined the various allegations of passing off and copyright infringement.

The Court found that the Plaintiff had acquired rights in four trademarks:  RICHMOND NIGHT MARKET, RICHMOND NIGHT MARKET SUMMER FESTIVAL and Chinese characters for each of these.  The trademarks were originally merely descriptive, but by January 2007 they were valid trademarks because they enjoyed substantial goodwill and had acquired distinctiveness in association with the Plaintiff and the location of the market.  However, the Court also concluded that the distinctiveness was not durable, and the marks lost their distinctiveness and associated goodwill when the Plaintiff failed to open another night market in 2009.

The Court then examined the allegations of passing off, taking into account the elements of confusion listed in section 6(5) of the Trade-marks Act, including the surrounding circumstances.  The Court concluded that the visitors, but not the vendors, would have been confused by the Defendants’ actions and thus passing off was established (the key elements of the tort being the existence of goodwill, deception due to a misrepresentation and actual or potential damage).  However, given that the Defendants lost money in their endeavor, there could be no accounting of profits; further, given that the Plaintiff had not operated a market in 2008 or 2009, the Plaintiff had not lost money as a result of the Defendants’ activities.  However, the Plaintiff did recover damages for copyright infringement for use by the Defendants of the Plaintiff’s site plan and application forms, but the total amount was only $15,000.00 plus costs and interest.

Thus, the Defendants had failed to adequately distance themselves from the Plaintiff’s former business when trying to take advantage of the opportuntity presented by the Plaintiff’s cessation of services.  As a result, the Court found both copyright infringement and passing off, although in the circumstances the damages were small.