In the world of trademarks, a recent case has caught the attention of many. This case involves two major players in the sports industry, Amer Sports Canada Inc. and Adidas Canada Limited. As a Canadian trademark agent, I find this case particularly interesting due to its implications for trademark owners in Canada.

The Case Overview

Amer Sports Canada Inc., the holder of the “ARC’TERYX” trademark, filed a lawsuit against Adidas Canada Limited. The bone of contention was Adidas’ use of the name “TERREX” for its retail stores, which Amer claimed was confusingly similar to its “ARC’TERYX” trademark.

The Trademark Claims

Amer Sports holds a Canadian trademark for “ARC’TERYX” related to retail services, while Adidas’ “TERREX” trademark application is pending. Amer argued that Adidas’ use of “TERREX” infringed on its exclusive rights and caused consumer confusion.

The Court’s Decision

The court granted an interlocutory injunction to Amer Sports, restraining Adidas from using “TERREX” as the name of its retail stores. This decision was based on the RJR-MacDonald test for interlocutory injunctions. However, the court did not see a need for an injunction against Adidas’ online store services, as confusion between the Adidas and Arc’teryx online stores was unlikely.

The Aftermath

Adidas threatened to close its W. 4th Ave. store, which would mean a loss of jobs for all of its employees,  if an injunction was granted. However, this reaction seems excessive and it is still uncertain if the store will shut its doors.

Key Takeaways for Canadian Trademark Owners

This case underscores the importance of protecting your trademark rights. It also highlights the public interest in maintaining registered trademarks. As a trademark owner, it’s crucial to monitor the market for potential infringements and take necessary legal actions to protect your brand.

Conclusion

In conclusion, remember, your trademark is not just a name or a logo; it’s the identity of your brand. Protect it wisely.

Read more about it here: 2024 BCSC 3