Prior Use Trumps Registration In Trade-mark Interlocutory Injunction

Interlocutory injunctions are rarely granted in trade-mark cases in Canada, principally due to the fact that irreparable harm – harm that cannot be quantified or recovered by the plaintiff – is difficult to prove.

However, in the recent decision of Woodpecker Hardwood Floors (2000) Inc. v. Wiston International Trade Co. Ltd. et al^1, the Supreme Court of British Columbia granted such an injunction, enjoining the Defendants' use of the word "woodpecker" in association with the sale of hardwood products, and associated wares and services.

Of particular note is that the injunction was granted against the Defendants despite the fact one of them owned a Canadian trade-mark registration for the word mark WOODPECKER².