Chanel S. de R.L. et al. v. Lam Chan Kee Co. et al., 2016 FCA 111

• Judge: Stratas, Webb and Gleason, JJ.A.
• Court: Federal Court of Appeal (Canada)
• Case Date: April 06, 2016
• Jurisdiction: Canada (Federal)
• Citations: 2016 FCA 111;(2016), 483 N.R. 15 (FCA)

Chanel S. de R.L. v. Lam Chan Kee Co. (2016), 483 N.R. 15 (FCA)

MLB headnote and full text

Temp. Cite: [2016] N.R. TBEd. AP.015

Annie Pui Kwan Lam (appellant) v. Chanel S. de R.L., Chanel Limited and Chanel Inc. (respondents)

(A-450-15; 2016 FCA 111)

Indexed As: Chanel S. de R.L. et al. v. Lam Chan Kee Co. et al.

Federal Court of Appeal

Stratas, Webb and Gleason, JJ.A.

April 11, 2016.

Summary:

In 2006, two actions were commenced against the appellant and a corporate co-defendant in relation to offering counterfeit Chanel merchandise for sale. The actions were settled. The terms of the settlement were incorporated into two Federal Court Orders which enjoined the appellant and her co-defendant from: 1. offering for sale, displaying, advertising, selling, manufacturing, distributing or otherwise dealing in merchandise bearing any of the Chanel trademarks; and 2. directing public attention to their wares in such a way as to cause or be likely to cause confusion in Canada between the counterfeit wares and the wares of the respondents, contrary to s. 7(b) of the Trade-marks Act. The appellant continued to sell knock-off Chanel merchandise through a business operated under the name of Lam Chan Kee Co. The plaintiffs brought an action alleging infringement and passing off of Chanel trademarks. The plaintiffs brought a motion for summary trial.

The Federal Court, in a decision reported at [2015] F.T.R. Uned. 586, granted judgment in favour of the plaintiffs, issued injunctive relief against three defendants, including the appellant, and ordered the defendants to pay compensatory damages in the amount of $64,000, punitive damages of $250,000, and $66,000 in lieu of assessed costs by reason of their sale and offering for sale of counterfeit Chanel merchandise. The appellant appealed.

The Federal Court of Appeal allowed the appeal, without costs, and remitted the matter to the trial judge for re-determination.

Courts - Topic 583

Judges - Duties - Re reasons for decisions - [See Trademarks, Names and Designs - Topic 4424 ].

Practice - Topic 8342

Costs - Appeals - Cases where costs of appeal refused - Conduct - [See Trademarks, Names and Designs - Topic 4424 ].

Trademarks, Names and Designs - Topic 1816

Trademarks - Infringement - Remedies - Damages - [See Trademarks, Names and Designs - Topic 4424 ].

Trademarks, Names and Designs - Topic 4424

Trademarks - Practice - Costs - In 2006, two actions were commenced against the appellant and a corporate co-defendant in relation to offering counterfeit Chanel merchandise for sale - The actions were settled - The terms of the settlement were incorporated into two Federal Court Orders which enjoined the appellant and her co-defendant from: 1. offering for sale, displaying, advertising, selling, manufacturing, distributing or otherwise dealing in merchandise bearing any of the Chanel trademarks; and 2. directing public attention to their wares in such a way as to cause or be likely to cause confusion in Canada between the counterfeit wares and the wares of the respondents, contrary to s. 7(b) of the Trade-marks Act - The appellant continued to sell knock-off Chanel merchandise through a business operated under the name of Lam Chan Kee Co. - The plaintiffs sued, alleging infringement and passing off of Chanel trademarks - The plaintiffs moved for summary trial - The trial judge granted judgment in favour of the plaintiffs, issued injunctive relief against three defendants, including the appellant, and ordered them to pay compensatory damages of $64,000, punitive damages of $250,000 and $66,000 in lieu of assessed costs - The appellant appealed - The Federal Court of Appeal allowed the appeal - The trial judge found that the appellant remained involved with the Lam Chan Kee business until 2013, but was ambiguous as to the date her involvement ceased - Given the ambiguity in the findings regarding the extent of the appellant's involvement in the acts of infringement, the reasons were not intelligible and the nominal damages award against the appellant could not stand as it was impossible to know whether she was liable for three or four acts of infringement - Similarly, the punitive damages and costs awards had to be set aside as they were intertwined with the compensatory award and were dependent on the number, severity and nature of the breaches that might be found to have been committed by the appellant - The matter was remitted to the trial judge for re-determination - In light of the appellant's conduct, the appeal was granted without costs.

Cases Noticed :

Manitoba v. Canada - see Lac Seul Indian Band v. Canada.

Lac Seul Indian Band v. Canada (2015), 470 N.R. 187; 2015 FCA 57, refd to. [para. 15].

Turmel v. Canada (2016), 481 N.R. 139; 262 A.C.W.S.(3d) 629; 2016 FCA 9, refd to. [para. 15].

Ragdoll Productions (UK) Ltd. v. Jane Doe et al. (2002), 223 F.T.R. 112; 2002 FCT 918, refd to. [para. 17].

Louis Vuitton Malletier S.A. et al. v. Yang et al., [2007] F.T.R. Uned. 803; 62 C.P.R.(4th) 362; 2007 FC 1179, refd to. [para. 17].

Louis Vuitton Malletier S.A. et al. v. Singga Enterprises (Canada) Inc. et al. (2011), 392 F.T.R. 258; 2011 FC 776, refd to. [para. 17].

Louis Vuitton Malletier S.A. et al. v. 486353 B.C. et al., [2008] B.C.T.C. Uned. 454; [2008] B.C.W.L.D. 5075; 2008 BCSC 799, refd to. [para. 17].

Harley-Davidson Motor Co. v. Manoukian (2013), 428 F.T.R. 191; 2013 FC 193, refd to. [para. 17].

Oakley Inc. et al. v. Jane Doe et al. (2000), 193 F.T.R. 42; 2000 CanLII 15963 (T.D.), refd to. [para. 18].

Long Plain First Nation et al. v. Canada (Attorney General) et al. (2015), 475 N.R. 142; 388 D.L.R.(4th) 209; 2015 FCA 177, refd to. [para. 20].

Chanel S. de R.L. and Chanel Inc. v. Jiang Chu, 2011 FC 1303, refd to. [para. 23].

Whiten v. Pilot Insurance Co. et al., [2002] 1 S.C.R. 595; 283 N.R. 1; 156 O.A.C. 201; 2002 SCC 18, refd to. [para. 24].

Housen v. Nikolaisen et al., [2002] 2 S.C.R. 235; 286 N.R. 1; 219 Sask.R. 1; 272 W.A.C. 1; 2002 SCC 33, refd to. [para. 27].

Counsel:

Richard Parker, for the appellant;

Karen MacDonald, for the respondents.

Solicitors of Record:

Coutts Crane, Toronto, Ontario, for the appellant;

Bull, Housser & Tupper LLP, Vancouver, British Columbia, for the respondents.

This appeal was heard on April 6, 2016, at Toronto, Ontario, before Stratas, Webb and Gleason, JJ.A., of the Federal Court of Appeal. The following judgment of the Court of Appeal was delivered by Gleason, J.A., on April 11, 2016.