Articles

MBM Successfully Upholds Agreement to Restrict Use of Descriptive Terms

MBM Successfully Upholds Agreement to Restrict Use of Descriptive Terms
Scott Miller, March 23, 2012

Before the Ontario Superior Court of Justice, Scott Miller of MBM Intellectual Property Law LLP, representing Skipper Online Services (SOS) Inc. d.b.a. Boaterexam.com, successfully brought an application (No. 11-52596) to enforce an agreement which restricted 2030564 Ontario Inc. d.b.a. Boatsmart Canada from displaying, amongst other words, EXAMEN DE BATEAU "or any reversals, misspellings, translations or plurals thereof as or in a name or trade-mark, or in any other manner...". Boaterexam.com filed evidence of two interpreters demonstrating that Boatsmart Canada's use of the terms 'BOAT EXAM' and 'BOATING EXAM' can be translated into 'EXAMEN DE BATEAU'. Madame Justice Parfett acknowledged that the terms regardless of their descriptive nature will be restricted from use where an agreement uses plain language such as 'refrain from using' in a 'name', 'trade-mark' or 'in any other manner'.

The Court's willingness to uphold an agreement to restrict Boatsmart Canada from using the terms 'BOAT EXAM' and 'BOATING EXAM' should offer fair warning to all those who enter contracts. It is extremely important to ensure that before a party agrees not to use a translated word that they understand what that word means in the other language, regardless of the descriptive nature of the words. Both parties offer online testing for pleasure craft operating cards.