Adidas’ Terrex store in Vancouver’s Kitsilano neighbourhood must cover part of its sign after rival Arc’teryx won a temporary court injunction in a trademark battle.
The fight goes back to January 2023, when Adidas opened a store at 2235 West 4th Ave., close to the Arc’teryx store at 2201 West 4th Ave.
Both businesses sell outdoor wear.
For its new Kitsilano store, Adidas did not put its name up, instead using its trademarked triple stripe “performance bar” symbol followed by the word Terrex.
Amer Sports, which owns Arc’teryx, filed a court claim against Adidas in B.C. Supreme Court alleging trademark infringement. It wanted an injunction forcing Adidas to cover any Terrex signs and to pay damages.
Adidas denied the allegations, saying the plaintiff’s action was bound to fail and was uncompetitive.
Justice Nigel Kent ruled in favour of Arc’teryx because Adidas had not yet trademarked its Terrex brand, but said the wider case had to go to trial. He also narrowed the order to apply only to the Kitsilano store.
“Arc’teryx claims that the triangular performance bars symbol resembles a stylized letter “A” and its positioning in front of the word Terrex results in signage resembling “A TERREX”, a format which creates consumer confusion between the Terrex store and the Arc’teryx store just a few doors down the street,” Kent wrote in his ruling.
“They say that even without the stylized letter “A”, the single name Terrex on the store and its proximity to the Arc’teryx store is enough to create consumer confusion between the two stores.
“When one places an image of the performance bars and Terrex … beside an image of the Arc’teryx trademark, the similarity between the two and the potential for confusion is immediately obvious.”
Arc’teryx has 24 stores in Canada, with seven in B.C., in Whistler, Victoria and five in Metro Vancouver
“There is a significant contest between the parties whether the use of the parties’ respective trademarks on the banner of their neighbouring stores leads to confusion of a sort required to sustain a cause of action for trademark infringement or for the tort of passing off,” Kent wrote.
A trademark is a combination of letters, words, sounds or designs that distinguishes a merchant’s goods or services from the goods or services of other merchants in the marketplace.
Kent ruled that the injunction would be lifted once a trial starts and dismissed a claim by Adidas that it may have to close its West 4th location once the sign is covered or changed. He also said Arc’teryx needed to prove what damages it had suffered.
“This is only an interlocutory injunction and is premised upon the parties actually proceeding to trial. It is not meant to be an excuse for the plaintiff to cease the pursuit of its lawsuit so that the interlocutory injunction might effectively become a permanent injunction,” he wrote.
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