A B.C. Supreme Court judge has issued a temporary injunction forbidding Adidas Canada from using the name “Terrex” for its Kitsilano store, until a trademark infringement case goes to trial.
The decision is a partial and temporary victory for Arc’Teryx, a Vancouver outdoor gear and apparel store.
After Adidas Canada opened a retail outlet at 2235 Fourth W. Ave. in Kitsilano in January 2023, Arc’Teryx went to court seeking an injunction to restrain Adidas from using the name “Terrex” for the retail outlet, saying it was too close to Arc’Teryx’s own trademarked name.
As BIV reported in February, Arc’Teryx claimed in its lawsuit that Adidas’ use of the Terrex brand has “directed public attention to its services and business in such a way as to cause, or likely to cause, confusion in Canada with the services and business of Arc’Teryx.”
The B.C. Supreme Court responded Tuesday with an interlocutory injunction restraining Adidas from using the name for its Kitsilano store, until the trademark infringement suit can be heard.
Arc’Teryx was founded in Vancouver in 1989 and owns stores across Canada, including five in the Vancouver area.
Adidas AG, a German apparel store noted for its running shoes, has a subsidiary called Adidas International Marketing BV, which owns the “Terrex” trademark in Canada, and has done so since 2010. It also has a trademarked logo -- three "performance bars" that form a triangle.
Arc’Teryx argued that the way the two trademarks were combined on the Kitsilano store -- with the word "Terrex" preceded by the triangular performance bars in an "A" shape -- made it likely to be confused with "Arc’Teryx."
"The Arc'teryx's claim is neither frivolous nor vexatious," writes Justice Nigel Kent in his ruling. "There are many serious issues to be tried. When one places an image of the Performance Bars and TERREX trademarks beside an image of the ARC'TERYX trademark, the similarity between the two and the potential for confusion is immediately obvious."
In January 2023, Adidas had a grand opening for its new “Terrex” retail store in Kitsilano. Kent notes that “adidas” appears nowhere on the storefront.
As BIV News noted last year, Adidas' Terrex brand has been in use since the 1980s, but that the stand-along branded Terrex retail stores were new.
Whereas Arc’Teryx was seeking an injunction against Adidas’ use of the name “Terrex” on any and all retail outlets, as well as in any online retail store services, Kent limited the injunction to just the one store in Kitsilano.
He also noted that “this is only an interlocutory injunction and is premised upon the parties actually proceeding to trial.”
But he also prompted Arc'Teryx to move forward with a trademark infringement case and not rely on an interlocutory injunction.
"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," Kent writes.
"The court inquired of counsel at the resumption of the hearing following the four-month delay and was informed that no further exchange of documents had occurred, no examinations for discovery had occurred, and no trial date had been secured. That situation must be remedied."
