No Goodwill Absent Use Or Registration – Recent Decision Confirms Established Trademark Principles

A recent decision of the Ontario Divisional Court provides a welcome course-correction for trademark law. In 2788610 Ontario Inc. v. Bhagwani ("Bhagwani")¹, the Divisional Court vacated an interlocutory injunction prohibiting the defendants from using the term "Bombay Frankie" as the name of any restaurant or franchise business they operate. The original decision had been widely criticized for misapplying fundamental principles of trademark law (and the test for granting an interlocutory injunction).

More specifically, the decision at first instance granted the plaintiff, who was the first to file a trademark application for the mark "Bombay Frankies" but who had not yet used the mark, an interlocutory injunction precluding the defendants, who were already operating two restaurants bearing the name "Bombay Frankie", from using that mark pending trial.