Schluter-Systems KG v. Dollar Tile Distributors Ltd., 2013 BCSC 2508
The Plaintiffs manufacture and sell various tile installation products in Canada and the U.S. under the brand name “Kerdi”. They claim that the defendants are selling counterfeit Kerdi products, passing them off as authentic Kerdi products using the Plaintiff’s trade-marks, labels and brochures. As a result, the Plaintiffs applied without notice for three orders: (1) an interim injunction, (2) Anton Piller orders over 4 locations to preserve evidence, and (3) an order sealing the court file to allow for the execution of the Anton Piller orders.
On the issue of the interim injunction, the Court considered the three-part test in RJR MacDonald, and found: (i) there are a number of serious issues to be tried (i.e. contraventions under both the Trade-marks Act and the Copyright Act); (ii) there is a real prospect that the Plaintiffs will suffer permanent market loss or irrevocable damage to its business reputation, and such reputational harm will be hard to quantify in damages; and (iii) the Plaintiffs, after consider the ‘balance of convenience’ test, will suffer greater harm if the order granting the injunction is refused. On these grounds, the Court ordered an interim injunction.
With respect to the Anton Piller orders, the Court acknowledged that these types of orders are “draconian”, “exceptional” and “highly intrusive”. However, applying the four-part test as laid out by the Supreme Court of Canada in Murray Demolition, the Court was satisfied that the circumstances of this case met the test, and ordered three (3) Anton Piller orders (one residential location, and two industrial/commercial locations). As a result of the Court’s finding in this regard, the Court also ordered the court file to be sealed for seven (7) business days to allow for the execution of the Anton Piller orders on a without notice basis.