2011 FC 620 (May 26, 2011)
On a default judgment motion, the Federal Court did not accept that use of the words ED HARDY on their own infringed the registered trademark DON ED HARDY, and the Court awarded only nominal damages, delivery up and an injunction absent any evidence directed to a specific quantum of damage. Therefore, the Federal Court may not automatically assess damages according to the scale that it previously adopted for default judgments.
The evidence on a default judgment motion included some use of the words DON ED HARDY, as well as some use of the words ED HARDY on their own. Absent further evidence, the Federal Court refused to find that use of the words ED HARDY infringed the registered trademark DON ED HARDY.
Further, the evidence was silent on the quantum of damage. The Federal Court has previously adopted a scale of damages for trademark infringement in recognition of the inherent difficulty in quantifying damages. However, the Court in Hardy Way LLC v. Little Blue Box Co. considered that scale "unsatisfactory" in the circumstances. Therefore, the Court may be reluctant to apply the scale automatically in the absence of evidence of quantum of damage.
Facts. The plaintiff moved for summary judgment for infringement of its registered trademark DON ED HARDY and of a trademark defined in the claim as the "Ed Hardy Trademark."
The evidence filed in support of default judgment included two photographs showing the words DON ED HARDY on a hat label and disc offered for sale by the defendants, and on a hat label shown in another photograph. Other photographs showed the words ED HARDY on occasion. There was no evidence filed directed to any specific quantum of damage.
Analysis. Absent further evidence, the Court found no infringement from use of the words ED HARDY on their own. Therefore, the Court only assessed damages for use of the registered trademark DON ED HARDY.
The Court referred to an earlier decision that established a scale of damages for default judgment proceedings, which entailed $6,000 in damages for trademark infringement at conventional retail premises. That decision established the scale because of the inherent difficulty in assessing damages for trademark infringement. In 2007, the Federal Court revised the $6,000 amount to $7,250 to reflect inflation.
However, in Hardy Way LLC v. Little Blue Box Co. ("Hardy Way"), the Court described the previously adopted scale as "an unsatisfactory manner for assessment of damage" and refused to apply the scale in the absence of any evidence directed to a specific quantum of damage. Instead, the Court granted the plaintiff 60 days to file further evidence and arguments on this issue, failing which judgment would be limited to nominal damages of $500, an injunction and delivery up.
A party seeking default judgment in the Federal Court must prove its case, and Hardy Way reveals that the Court may require evidence before concluding that a trademark is confusing with a similar trademark and evidence as to quantum of damages. Although the Federal Court previously adopted a scale of damages for trademark infringement in default judgment proceedings, the Court may not apply that scale automatically in the absence of any evidence directed to quantum of damage.
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