Date: 19990408
Docket: T-118-97
BETWEEN:
THE KUN SHOULER REST INC.
| Plaintiff |
AND:
JOSEPH KUN VIOLIN AND BOW MAKER INC.,
MARIKA KUN and MICHAEL KUN
and M & M VIOLIN MAKING AND ACC. INC.
Defendants
REASONS FOR ORDER
ROULEAU, J.
[1] This is an application pursuant to Rule 397 of the Federal Court Rules wherein the plaintiff asks that I reconsider my Judgment rendered on October 28, 1998, on the grounds that it does not accord with my reasons. In particular, the plaintiff requests that a permanent injunction be granted against the defendants with respect to the trade-mark KUN and certain trade-names including the name KUN; and, that a reference be held with respect to certain alleged passing off.
[2] I have given careful consideration to the parties submissions and am dismissing the application for the following reasons.
[3] On February 13, 1997, Nadon, J. granted the plaintiff a quia timet injunction, prohibiting the defendants from promoting their Kadenza shoulder rests in association with the names "Kun", "Joseph Kun, Violin and Bow Maker", or "Joseph Kun Violin and Bow Maker Inc." at the Frankfurt Fair held in Frankfurt, Germany. This injunction was granted prior to any sale of shoulder rests by the defendants.
[4] The defendants then changed their business plans and rather than using a trade name incorporating "Kun", they adopted, and are using, "Kadenza Violin Shoulder Rest Inc." in association with their products. There was no evidence before me that after being enjoined by the order of Nadon, J., the defendants ever used the trade-mark KUN in association with their shoulder rests. Nor was there any evidence that the defendants threatened to make such a use in the future. As I stated in my Reasons, the only use of the word "Kun" by the defendants has been as a surname in relation to their business and there is nothing to legally prevent them from doing so.
[5] Accordingly, the plaintiff is seeking is to have the defendants enjoined from activities in which they are not engaged. However, an injunction is an extraordinary remedy and will not issue to prevent a person from engaging in some activity unless there is at least some likelihood that he or she would do it unless so restrained. The defendants have not used, and do not use, the word KUN as a trade-mark, nor is there any basis to suggest that they will do so in the future. The defendants sought to have the KUN trade-mark declared non-distinctive by way of Statement of Defence. This was dismissed and the defendants are aware that their arguments regarding the validity of the KUN trade-mark were unsuccessful at trial. If, in the future, they were to undertake any activities of which the plaintiff has a legitimate complaint and if such activities give rise to a cause of action, then the plaintiff may seek a remedy in the courts.
[6] Furthermore, I am not prepared to make an order for a reference as to profits or damages due to the alleged passing off by the defendants. My Reasons for Judgment are clear that the sale of shoulder rests by the defendants was only in association with KADENZA and never with the name KUN and accordingly the defendants' activities did not amount to passing off.
[7] Finally, Rule 397 does not empower a Judge to re-examine the conclusions which he or she drew from the evidence. A reconsideration of that nature is a matter for appeal. Here, the plaintiff has filed a Notice of Appeal from my judgment wherein it seeks the same relief as is being sought in this Rule 397 motion. Under those circumstances, it would be an improper exercise of judicial discretion to amend the terms of my judgment.
[8] For these reasons the plaintiff's application is dismissed.
JUDGE
OTTAWA, Ontario
April 8, 1999