Another Rare Interlocutory Injunction Issued In Trademark Case – Quebec Court Finds Appropriate “Grounds”

On March 27, 2024, the Superior Court of Québec (the Court) issued its decision in Fonds GB c 9451-3082 Québec Inc., 2024 QCCS 1122, granting Fonds GB’s application for an interlocutory injunction enjoining 9451-3082 Québec Inc. (9451 Québec) from using the trade name and trademark “Café Constance”.

In 2016, Fonds GB concluded an emphyteutic lease with Les Grands Ballets Canadiens; the space was to include a café called “Café Constance”, named in honour of the ballet company’s patron. Following this event, in 2021, Fonds GB and 9451 Québec entered into a lease agreement (the Agreement) whereby 9451 Québec would be the operator of the café.  The Agreement described “Café Constance” in the list of Furniture, Fixtures and Equipment to be returned to Fonds GB at the end of the term. However, the parties disagreed on whether this reference to “Café Constance” suggested that Fonds GB was licensing the name to 9451 Québec (as argued by Fonds GB) or it simply referred to the sign on the Café (as argued by 9451 Québec).

The Court was not convinced by either interpretation and reviewed further evidence from the parties.  Among other things, Fonds GB continuously referred to the eventual café as “Café Constance” since at least 2017 and refused to have 9451 Québec or any other operator of the café change the name.  Conversely, it was undisputed that 9451 Québec was the first to use and market the name commercially.

The Court ultimately placed greater weight on Fonds GB’s evidence and, despite there not being an express conversation between the parties on intellectual property ownership, the Court found, on a prima facie basis, that Fonds GB established the existence of an implicit license agreement and exercised the necessary control over the name. The Court further held that while both parties would suffer serious prejudice if the other used the name, the balance of inconvenience favoured Fonds GB, whose use of the name “Café Constance” related to the longstanding project to operate a café in the building housing Les Grands Ballets Canadiens. This led the Court to ultimately issue an interlocutory injunction against 9451 Québec.

Summary By: Steffi Tran