Canadian State Court Upholds Worldwide Injunction Against Google
In Equustek Solutions Inc v Google Inc the Court of Appeal of British Columbia upheld a worldwide injunction against Google, requiring Google to remove from its worldwide search engines a list of websites operated by former distributors of Equustek’s industrial network interface hardware.
In earlier proceedings Equustek had been successful in obtaining orders prohibiting Morgan Jack and Datalink Technologies Gateway Inc from advertising products that were found to be based upon confidential information acquired when those parties were distributors of Equustek. However, the offending continued through a range of websites. Google agreed to remove specific websites from search results on its www.google.ca search engine, but declined to do the same on its other websites.
Equustek then sought and obtained a third party interim injunction requiring Google to remove the specified websites from search results on its other search engines. In upholding that worldwide injunction the Court of Appeal made a number of non-case specific findings that would be of use to others wanting to obtain similar injunctions against Google.
- Firstly, Google’s business activities in British Columbia could not be restricted to the operation of the www.google.ca search engine. Google was found to be carrying on business in British Columbia since British Columbia companies advertised on other Google search engines and Google tracks and collects various data about users, including those in British Columbia. These facts established not only that Google has a real and substantial connection to British Columbia, but also that British Columbia courts have in personam jurisdiction over Google.
- Secondly, it was found that the in personam jurisdiction over Google meant the Court could make could make any order against it, regardless of whether that order would affect Google’s activities outside the province of British Columbia. Principles of comity were not considered to be relevant in this case. It was considered unlikely that such an order would not interfere with a freedom of expression.
However, the Court of Appeal cautioned against the general application of these principles to other cases. It held that where an order with only domestic consequences will accomplish all that is necessary, a more expansive order should not be made.
Robertson Engineering Partially Tied by Attempted Fielday Injunction
In Gallagher Group Ltd v Robertson Engineering Ltd, Gallagher obtained a limited temporary injunction.
Gallagher had developed and won awards for its Ring Top Post, which was created as an improvement on the well-known ‘pigtail’ posts used by farmers in portable electric fences. Robertson claimed to have independently created a highly similar product, which it called the Tangle Free Standard.
The Judge found there to be obvious similarities and slight differences between the two products, but also noted that both parties established that there was a serious question to be tried regarding the originality of their respective products and the validity of Gallagher’s design registrations. Both parties asserted that a substantial amount of time and money had gone into developing their products. The Judge found that the balance of convenience lay with Robertson as assessing lost sales would be easier for Gallagher to assess than for Robertson, who had only recently launched their product. Given that the National Fieldays is the major marketing event for the product in question, the Judge held that overall justice also lay with Robertson.
However, the Judge held that Gallagher had established sufficient originality in the bracket system it used to package its Ring Top Posts and that Robertson’s near imitation of the bracket system justified an interim injunction in respect of such packaging for Robertson’s product.
3. Trade Marks
Evidence Filed Out-of-Time OK if in Public Interest
In Fed Square Pty Ltd v Federation IP Pty Ltd a Delegate of the Registrar effectively allowed the opponent to file evidence out of time, thereby contravening the provisions of the ‘Raising the Bar’ legislative amendments that came into effect in April 2013.
Following the amendments, in effect extensions of time for filing evidence could only be made due to exceptional factors outside of the control of the submitter, who is expected to have made all reasonable efforts by acting promptly and diligently. In this case Fed Square filed its evidence in support 7-days after the deadline. Fed Square applied for an extension of time under regulation 5.15. No exceptional circumstances applied and the Delegate concluded that the opponent had not made all reasonable efforts by acting promptly and diligently to file on-time.
However, Fed Square also filed an application for the evidence to be admitted under regulation 21.19. That regulation allows the Registrar to admit information that is available to the Registrar if it is relevant to the proceedings, not known to a party to the proceedings and likely to be taken into account by the Registrar, provided that the Registrar provides the informed party with an opportunity to make observations about the admitted evidence.
The Delegate noted that the purpose behind the relevant ‘Raising the Bar’ provisions was to reduce delays in the resolution of patent and trade marks applications and to streamline the opposition process. In reviewing the late filed evidence the Delegate found that the material is of high probative value and is likely to significantly affect the outcome of the substantive opposition in contrast to an opposition run without it. Consequently, the evidence was admitted under regulation 21.19, on the basis that the public interest in hearing the opposition on its merits and the legislative intent of resolving oppositions efficiently outweighs the inconvenience to the other party and the danger of circumventing the conventional evidence process.
No Smiles for Crocodile Sandwich
In Lacoste  NZIPOTM 7 an Assistant Commissioner made some observations about when ‘sandwich marks’ can constitute ‘special conditions’ that can allow an exception to the priority principle.
The observations were made on a hypothetical basis after the Assistant Commissioner ordered a halt in proceedings in the determination of whether or not Lacoste’s class 25 application 998331 would be rejected on the basis of Crocodile International’s prior application 988410 covering identical goods. Application 988410 is in Abeyance on account of Crocodile International’s proceedings against 3 prior marks (identical to 988410) currently owned by Lacoste. Given that the outcome of those proceedings can affect the status of 988410 the Assistant Commissioner considered it best to halt the determination of whether 998331 would be rejected. Had the proceeding not been halted, Lacoste argued that 998331 should proceed to acceptance given that Lacoste already has a registration for the word element and a registration for the device element contained in application 998331 covering identical goods, both of which have priority over 988410.
The Assistant Commissioner noted that there is little judicial guidance on ‘sandwich marks’ – third party marks significantly similar to and having a priority date between the first applicant’s identical or significantly similar marks, all of which cover the same or very similar goods or services. It was also noted that IPONZ has no current policy, but has been obtaining feedback on a draft policy. The Assistant Commissioner gave approval to the current draft policy, which only allows the first applicant’s later application to proceed to acceptance where both the first applicant’s earlier mark and the sandwich mark have been registered. (It is also required that the sandwich mark clearly conflicts with the first applicant’s earlier trade mark and that the earlier trade mark is not subject to proceedings.)
The Assistant Commissioner agreed with IPONZ view that if the prior marks have not been registered, then allowing the later application to proceed to acceptance would lead to uncertainty in the trade mark priority system. It is in the wider interests of all users that such uncertainty is to be avoided. Consequently, in line with the stay order, the Assistant Commissioner declined Lacoste’s request for application 998331 to proceed to acceptance, as doing so while Crocodile International’s application 988410 is still pending (or in abeyance) would be premature.