This trade-mark infringement case is interesting in part because it proceeded by way of application rather than action. The Applicant, Trans-High Corporation, is the owner of a 1980 registration for the mark HIGH TIMES for use in association with magazines. According to an affidavit from Trans-High’s President, the HIGH TIMES magazine is a monthly publication going back to 1982 in Canada that focuses on the “interests of counterculture, including, but not limited to, the medical and recreational uses of marijuana.” High Times also sells various HIGH TIMES branded products through retail stores, festivals and its website.
According to an affidavit filed by High Times from a private investigator, the Respondent operates a store in Niagara Falls that sells “an extensive array of smoking and marijuana-related accessories”. The investigator described the store as “an unimpressive, lower-end retail operation. It did not give off a professional or mid to high-end retail atmosphere.”
The Respondent, Hightimes Smokeshop, did not file any written submissions or appear at the oral hearing.
Justice Manson found that there was sufficient evidence to show that Hightimes Smokeshop had infringed High Times registered trade-mark under sections 19 and 20 of the Trade-marks Act (the “Act“) and had “passed off its business and wares as being somehow associated or connected with the Respondent’s business and wares, or that its use has been approved by the Respondent, contrary to section 7(b) of the Act.”
Justice Manson did not find in favour of the Applicant with respect to its claim for depreciation of goodwill under s. 22 of the Act – there was simply insufficient evidence.
He also held that there was insufficient evidence to support High Times claim for $200,000 in damages. He did, however, order damages in the amount of $25,000. He found this amount reasonable given the Respondent’s apparent wilful infringement, its failure to cooperate with the Applicant and its failure to participate in the Court’s process. He also awarded costs in the amount of $30,000.
This case highlights both advantages and disadvantages of proceeding by way of application in a case such as this. On the one hand, it is an efficient way to advance a case when the evidence is relatively straight forward and clear. On the other hand, and as Justice Manson pointed out, the decision to proceed by application meant that the Applicant did not have the benefit of discovery which made it difficult to advance the claim of depreciation of goodwill and to elicit facts relating to the damages caused by the Respondent’s activities. Of course, it is impossible to say what might have happened if the case went by way of an action and as a result the Respondent was more engaged in the process. Perhaps the result with respect to infringement would have been different, in which case the Applicant would have gotten nothing.