Trademark Enforcement: Injunction Prohibits Adidas’ TERREX Mark

Injunctive relief to halt allegedly infringing trademarks remains alive and well in Canada.

In Amer Sports Canada Inc. v. Adidas Canada Limited, 2024 BCSC 3, a decision of Kent J. of the BC Supreme Court, an injunction was granted requiring Adidas Canada to remove the name TERREX from a store in Vancouver. In the course granting this injunction, the Court made several interesting findings that will be helpful to registrants seeking injunctive relief.

First, the Court confirmed that even where an injunction will require some active steps by the defendant, the order is still properly considered a “prohibitory” injunction, and therefore an applicant need only meet the lower threshold of proof.

Predictably, before Kent J. the parties disagreed as to whether the injunction which would require the removal the TERREX trademark from a storefront, was a “prohibitory” or “mandatory” injunction. As set out by the Supreme Court in R. v. Canadian Broadcasting Corp., 2018 SCC 5, this characterization governs whether an applicant must only show its claim isn’t “frivolous and vexatious”, or if it must prove it has a strong prima facie case.

The Court confirmed that even though the injunction would require the removal of signage at the Adidas store, it was not a mandatory injunction, and therefore the applicant was only required to show the claim was not frivolous or vexatious. This is an important finding for any party seeking to halt use of an allegedly infringing trademark. 

In weighing the balance of convenience, the Court relied heavily on the Reckitt Benckiser LLC v. Jamieson Laboratories Ltd., 2015 FC 215 decision of the Federal Court, and the right of a trademark owner to the exclusive use of a trademark. Again, this finding will be helpful support for future registrants seeking to halt allegedly infringing use. 

Taken together, the Amer decision is likely to be a good authority for those seeking to enforce registered trademark rights.