MBM Successfully Upholds Agreement to Restrict Use of Descriptive Terms – This time before the Court of Appeal for Ontario
Scott Miller, September 10, 2012

Scott Miller and Jonathan Roch of MBM Intellectual Property Law LLP (MBM) successfully obtained a judgement of the Court of Appeal for Ontario which confirms that if a contract is clearly written in unambiguous language, the contract will be upheld. This is so, regardless of whether the contract prohibits the use of descriptive words which may or may not be registrable as trademarks or which may be used by third parties not party to the contract.
    
Before the Ontario Superior Court of Justice, MBM 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 demonstrating that Boatsmart Canada's use of the terms 'BOAT EXAM' and 'BOATING EXAM' can be translated into 'EXAMEN DE BATEAU'. Relying on the clear language of the agreement, the Ontario Superior Court prohibited Boatsmart from using the terms ‘BOAT EXAM’ and ‘BOATING EXAM’. Both parties offer online testing for pleasure craft operating cards.

On Appeal (C55415), Boatsmart argued it would be a commercial absurdity to disallow Boatsmart the right to use the descriptive words BOAT EXAM and BOATING EXAM. This argument was soundly rejected by Court.  The Chief Justice Warren Winkler, Associate Chief Justice Douglas Cunningham S.C.J. (ad hoc) and Justice Harry LaForme unanimously found that it is irrelevant if third parties can use alleged descriptive words which Boatsmart agreed not to use by the agreement.  

The Court of Appeal decision demonstrates the importance of using clear language in agreements to ensure a bargain will be upheld by the Courts. Moreover, although trite, the BOATEREXAM.COM decision reminds us that it is important to make certain that before a party enters into an agreement that the party understands the meaning of each provision of the agreement.  For example, the principle of Boatsmart alleged he thought the translation of EXAMEN DE BATEAU did not include BOAT EXAM and BOATING EXAM but his alleged understanding did not prevent the Court from stopping the company’s use of the words.
 
For more information, please contact Scott Miller at 613 567 0762 or This e-mail address is being protected from spambots. You need JavaScript enabled to view it.