Koffler Stores Limited (Plaintiff)
v.
Ronald Turner, Hurst Dispensaries Ltd. (former-
ly Shoppers Drug Mart Ltd.) and Turner Dispen
saries Limited (Defendants)
Trial Division, Pratte J.—Edmonton, July 12;
Ottawa, September 2, 1971.
Injunction—Trade Marks—Motion to commit for con
tempt for breach of injunction—Bad faith not shown—
Terms of injunction open to defendants' interpretation.
An injunction was granted by this Court restraining the
defendants, T and Shoppers Drug Mart Ltd., from infringing
plaintiff's registered trade mark "Shoppers Drug Mart" and
from so using defendant company's name as to infringe
plaintiff's registered trade mark. Thereafter defendant com-
pany's name was changed but the defendants began using
the name "Shoppers Drug World".
Held, that the motion to show cause why the defendants
should not be fined or committed for contempt is dismissed.
The defendants complied with the injunction when they
changed the company's name, even if, later, advertising
contained the words "Shoppers Drug World". The words,
although similar to those used in the prohibited name, are
descriptive of every drugstore business and since the order
was drafted in very general terms that simply restrained the
infringement of the plaintiff's trade mark, bad faith of the
defendants was not proved. They "ought not to be punished
for having in good faith given a possibly wrong but not
unreasonable interpretation" of the Court's order.
MOTION.
G. Henderson, Q.C. for plaintiff.
D. R. Bereskin for defendants.
PRATTE J.—The parties appeared before me
following the issuance, on the application of the
plaintiff, of a show cause order directing the
defendants to appear before the Court and
show cause why they should not be committed
to jail or fined for their contempt of the injunc
tion of this Court, dated January 27, 1971,
restraining the defendants from infringing the
trade mark of the plaintiff.
For many years, the plaintiff has carried on
the business, under the mark "Shoppers Drug
Mart", of providing certain services to opera
tors of drugstores. In rendering its services to
its clients, the plaintiff has always required that
their stores have uniform appearance and
pursue uniform business policies; it further
required that its clients feature the trade mark
"Shoppers Drug Mart" in their store locations
and on all their promotional material. Moreover,
since 1969, the plaintiff has also caused the
trade mark "Shoppers Drug Mart" to be applied
to various pharmaceuticals subsequently sold
by its clients.
On January 24, 1969, the defendant Ronald
P. Turner wrote to Mr. Philip W. Goldman, a
director and vice-president of the plaintiff com
pany, and advised him that he (the defendant)
had caused a new company to be incorporated
under the name "Shoppers Drug Mart Ltd." and
that, utilizing some of the plaintiff's ideas, he
had opened a new store in Edmonton which
was operated under that name.
On June 27, 1969, the plaintiff, which was
not then doing business in Alberta, was granted
Canadian trade mark registration no. 163615
covering the trade mark "Shoppers Drug Mart".
In June 1970, the plaintiff took action against
Ronald Turner and his company, Shoppers
Drug Mart Ltd., claiming, among other reme
dies, an injunction restraining the defendants
from infringing the trade mark "Shoppers Drug
Mart". The defendants did not file any state
ment of defence and, upon the application of
the plaintiff for judgment by default, the Court,
on January 27, 1971, pronounced an order
(which is the one allegedly infringed by the
defendants) reading in part as follows:
With the consent of counsel for the defendants, there shall
be an injunction restraining the defendant, Ronald Turner,
from infringing the plaintiff's registered trade mark and an
injunction restraining the defendant, Shoppers Drug Mart
Limited, from infringing the plaintiff's registered trade mark
and from using its corporate name in such a manner as may
constitute an infringement of the plaintiff's registered trade
mark.
After the issuance of this order, the corporate
name of the defendant company was changed
from Shoppers Drug Mart Ltd. to Hurst Dispen
saries Ltd. and the defendants ceased to use the
trade mark "Shoppers Drug Mart". However,
the two defendants, in connection with at least
three stores under their control, caused to be
displayed signs and advertisements containing
the words "Shoppers Drug World". On May 19,
1971, plaintiff's solicitors wrote the two
defendants advising them that they were
infringing the trade mark of the plaintiff and
contravening the injunction previously granted
against them, and that, unless they immediately
desist from this practice, the plaintiff would ask
for the Court's intervention to enforce its order.
A letter to the same effect was sent on the same
day to the defendants' solicitors who replied a
few days later that their clients took the posi
tion that the use of "Shoppers Drug World"
was neither an infringement of plaintiff's trade
mark nor a violation of the injunction. The
plaintiff then applied for the show cause order
which brought the parties before me.
The only question that I have to decide is
whether or not the defendants should be pun
ished for their contempt of the injunction of
this Court dated January 27, 1971.
It is important to note that this injunction was
drafted in very general terms: it merely
restrained the defendants "from infringing the
plaintiff's registered trade mark". If, after the
pronouncement of the injunction, the defend
ants had continued to do the very thing on
which the judgment was founded, namely, to
use the plaintiff's trade mark "Shoppers Drug
Mart", they would certainly have then violated
the order of the Court. But that is not what the
defendants did. After the injunction had been
granted, they ceased to use the plaintiff's trade
mark and used, instead, the words "Shoppers
Drug World". It is certainly possible to argue,
as plaintiff's counsel very ably did, that the two
marks are confusing: their similarity is obvious.
But it is also possible to find, as counsel for the
defendants did, serious arguments supporting
the contrary proposition; particularly if one
considers, first, that the plaintiff's trade mark
consists of words in common use which are
clearly descriptive of the business of every
drugstore operator and, second, that the evi
dence put before the Court does not show in
what way or ways the plaintiff uses his trade
mark. In fact, the question of whether or not
these two marks are confusing is not an easy
one to answer. In these circumstances, as the
bad faith of the defendants is not proved, if I
were to accede to the plaintiff's request, I
would in fact punish the defendants for having,
in good faith, given a possibly wrong but not
unreasonable interpretation to an order of this
Court. This, in my opinion, I cannot do, because
I would then penalize a conduct which does not
amount to contempt of the Court.
Therefore no order will be made against the
defendants. The plaintiff shall pay the costs of
these proceedings.
You are being directed to the most recent version of the statute which may not be the version considered at the time of the judgment.