Woodpecker Hardwood Floors (2000) Inc. v. Wiston International Trade Co.

Court of Appeal for British Columbia

CITATION: Woodpecker Hardwood Floors (2000) Inc. v. Wiston International Trade Co., 2000) Inc. v. Wiston International Trade Co., Ltd.,
DATE: December 23, 2013
DOCKET: CA041248

Woodpecker Hardwood Floors (2000) Inc.
Respondent (Plaintiff)
Wiston International Trade Co., Ltd. and Wiston Building Materials Co.
Appellants (Defendants)

The Honourable Mr. Justice Chiasson (In Chambers)

Reasons for Judgment:
Honourable Mr. Justice Chiasson

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Reasons for Judgment of the Honourable Mr. Justice Chiasson:


[1] The applicants apply for leave to appeal the granting of an interlocutory injunction prohibiting them from using the name “Woodpecker” in the course of selling their wares.


[2] The parties are in the business of selling hardwood flooring products. The chambers judge noted that the respondent has done so “[f]rom at least the year 2000 and arguably since 1987” using the name “Woodpecker”. It did not register the name as a trade-mark.

[3] The applicants were incorporated in 2009 and until 2013 operated using the name “Wiston”. The judge described the applicants’ initial involvement with the name “Woodpecker” as follows:

[4] The respondent sent a “cease and desist” letter to the applicants, but they refused to do so. The respondent then initiated the present action on August 13, 2013. The judge referred to the respondent’s allegation that the applicants were passing off, or attempting to pass off, their wares “in such a way as to cause confusion between their wares and services and those of the [respondent].” At the hearing before me, the respondent stated that it also seeks a declaration that the applicants’ trade-mark is invalid.

[5] On August 23, 2013, the respondent filed its application for an interlocutory injunction.

 Chambers judge’s reasons

[6] In para. 9, the judge set out the respondent’s position:

[7] He then referred to the three-pronged test applicable to determining whether to grant an interlocutory injunction, as stated in RJR-MacDonald Inc. v. Canada (Attorney General), [1994] 1 S.C.R. 311:

[8] The judge began his analysis with whether there was a serious question to be tried. The applicants contended there is no serious question to be tried for three reasons:

[9] The applicants’ contention that the Supreme Court does not have jurisdiction is based s. 57(1) of the Trade-marks Act, R.S.C. 1985, c. T-13, which states:

[10] The judge rejected the applicants’ position on the basis that s. 57(1) deals only with striking out or amending an entry in the register and that was not what the respondent was seeking. The judge also stated:

  As a third basis for jurisdiction, the judge relied on his inherent jurisdiction.

[11] The applicants’ position that their registration is a complete defence to the respondent’s passing off claim was based on s. 19 of the Trade-marks Act. It states:

[12] The judge distinguished between a mark being “expunged” and “shown to be invalid”. He stated in para. 19:

[13] The judge then turned to the third proposition of the applicants:

[14] The applicants contended that the respondent had not established that it will suffer irreparable harm if the injunction were not granted. They argued delay and asserted that any damages sustained by the respondent could be compensated with money. The judge stated:

[15] The judge reviewed the history of the proceeding and concluded that delay had not contributed to the possible irreparable harm. The judge then turned to the balance of convenience:

  He considered each of these factors in turn and concluded that the balance of convenience favoured the respondent.

 Points in issue

[16] In their motion book, the applicants state two points which they contend are in issue on the proposed appeal:

[17] The respondent asserts that the chambers judge properly exercised his discretion and states that “absent a clear, palpable and overriding error: an error in principle, misconstrual of the evidence, or where the injunction leads to a clear injustice”, leave to appeal should not be granted.


[18] In Goldman, Sachs & Co. v. Sessions, 2000 BCCA 326 at para. 10, Saunders J.A. (in Chambers) stated:

 Merits of the proposed appeal

[20] It is important to remember that the proposed appeal is from the grant of an interlocutory injunction. The chambers judge correctly stated the factors he had to consider, the first of which was whether there is a serious question to be tried.

[21] Although the parties, understandably, are concerned with the underlying merits of the dispute, particularly the extent of a superior court’s jurisdiction and the interpretation of s. 19 of the Trade-marks Act as it relates to a passing off action, those are, as the chambers judge held, serious questions to be tried.

[22] The issue for this Court on the proposed appeal would be whether the judge erred in finding that these are serious issues to be tried. In my view, it is unlikely that a division of this Court would venture to resolve these substantive questions on the proposed appeal and is not likely to determine that the judge erred in concluding that they are serious issues to be tried.

[23] The judge’s determinations that the respondent was likely to suffer irreparable harm and that the balance of convenience favoured granting an injunction largely were based on findings of fact. There was evidence before the judge on which he could make those findings. In my view, a division of this Court is unlikely to interfere with the judge’s conclusions on the second and third factors for granting an interlocutory injunction.

[24] In my view, the proposed appeal is not meritorious. I see no basis on which to conclude the judge erred in his application of principle to the facts. The applicants seek to have this Court address serious substantive issues of statutory interpretation and jurisdiction on an appeal from granting an interlocutory injunction that is grounded on the conclusion of the chambers judge that these are serious issues to be tried. I consider that determination of these issues by this Court to be premature.

 Significance to the practice and the parties

[25] The applicants contend that the proposed appeal is important to the public and to the practice of trade-mark law generally “since it is an opportunity for this Court to clarify the protection afforded by a registered trade-mark.” In their submissions, they continue:

[26] This proposition is rooted in the relationship between a registered mark and passing off, that is, a serious question to be tried in the action. The issue is somewhat more complicated in this case because the respondent seeks a declaration of invalidity, which directly engages the language of s. 19 of the Trade-marks Act.

[27] The applicant also asserts that the proposed appeal will give this Court an opportunity to address “an area of apparently conflicting case law on the issue of showing irreparable harm arising from confusion.” The respondent deals with this issue in its submissions, stating:

[28] I tend to agree with the respondent. I also observe that in para. 29 of his reasons, the judge stated:

  There was evidence to support this finding of fact.

[29] The applicants contend that the appeal is important to them because they may suffer business losses and loss of customer confidence due to the need to repackage their products and delay in an advertising campaign. The respondent was required to provide the usual undertaking as to damages (reasons at para. 39), although the entered order of the judge does not refer to this. The judge addressed the potential negative impacts of an injunction when considering the balance of convenience in the context of an alteration to the status quo.

[30] He noted that the applicants obtained their trade-mark “knowing that the [respondent] was already using that name.” The judge continued:

 Significance to the action

[31] In my view, the real issue on the proposed appeal – whether the judge erred in granting an interlocutory injunction – is not substantively significant to the action. The applicants assert that with an interlocutory injunction in hand the respondent “will not need to press its case for a permanent injunction”. In my view, the respondent would be unwise to rest on the interlocutory injunction in lieu of proceeding efficiently with this action.

 Progress of the action

[32] In my view, there is a potential that the proposed appeal would hinder the progress of the action. Although I do not know what plans the parties have for organizing the action and, of course, that is a matter for the Supreme Court, there appear to be a number of specific legal issues that could be determinative of the action or could establish its legal framework and that might be addressed summarily. They engage many of the issues the applicants seek, in my view prematurely, to bring to this Court.


[33] In my view, it is not in the interests of justice to grant leave to appeal in this matter. I see no error in the judge’s statement of the legal criteria he was to take into account when determining whether to grant an interlocutory injunction. There was evidence on which he was entitled to make his findings of fact. The legal issues raised by the applicants should be addressed in the Supreme Court before they are considered by this Court.

[34] The application for leave to appeal is dismissed.

“The Honourable Mr. Justice Chiasson”

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