Arc’teryx wins injunction against Terrex store in trademark dispute

A legal battle looms between two outdoor clothing companies over the Adidas name of a Vancouver store on the same block as Arc’teryx

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Adidas’ Terrex store in Vancouver’s trendy Kitsilano neighborhood must cover its sign after rival Arc’teryx won a temporary injunction related to an ongoing trademark battle.

The fight dates back to January 2023, when Adidas opened a store in the 2200 block of West 4th, two stores down from the recently opened Arc’teryx store. Arc’teryx, founded in Vancouver in 1989, had a store in the 2000 block of West 4th Avenue from 2013 until November 2022.

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Both companies sell outdoor clothing.

For its new Kitsilano store, Adidas didn’t name it, instead using its triple-stripe “performance bar” symbol followed by the word Terrex.

The following month, Amer Sports, owner of Arc’teryx, filed a Notice of Civil Claim against Adidas in the Vancouver Registry of the Supreme Court of British Columbia alleging trademark infringement. He wanted a court order forcing Adidas to cover up any signs from Terrex and pay compensation.

Adidas filed its response to the civil suit that month denying all allegations, after which Arc’teryx sought an interlocutory injunction preventing Adidas from displaying its Terrex posters.

Adidas responded by saying that the plaintiff’s action was doomed to failure and was not competitive.

It was Judge Nigel Kent’s task to determine whether the injunction should be granted. He ultimately ruled in favor of Arc’teryx because Adidas had not yet registered its Terrex trademark, but said the case had to go before the Supreme Court to be decided. He also reduced the order to only apply to the Kitsilano store.

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“Arc’teryx claims that the triangular Performance Bars symbol resembles a stylized letter “A” and its placement in front of the word Terrex results in signage that resembles “A TERREX,” a format that creates confusion among users. consumers between the Terrex store and 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 sole Terrex name 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 Performance Bars and Terrex… next to 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, seven of them in BC, including Whistler, Victoria, and five in Metro Vancouver.

“Adidas knew full well that it did not have a trademark registration in the international class 35 for its Terrex brand when it opened its new store using the Performance Bars/Terrex combination as the store banner and expressly chose not to use the Adidas brand in that store. . banner, even though the store was located on the same block, just a few doors down from the Arc’teryx store on W. 4th Ave. in Vancouver,” Kent wrote.

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“Suffice it to say for present purposes that there is a material dispute between the parties as to whether the use of the parties’ respective trademarks on the signage of their neighboring stores leads to confusion of the type necessary to sustain a cause of action for infringement of trademark or for the tort of passing off,” Kent wrote.

A trademark is a combination of letters, words, sounds or designs that distinguishes the goods or services of one merchant from the goods or services of other merchants in the market.

Kent ruled that the injunction would be lifted once the trial began and dismissed a claim by Adidas that it might have to close its West 4th location once the sign is covered or changed. He also said that Arc’teryx needed to prove the damage she had suffered.

“This is only an interlocutory order and relies on the parties actually proceeding to trial. “It is not intended to be an excuse for the plaintiff to stop pursuing his lawsuit so that the interlocutory order can effectively become a permanent injunction,” she wrote.

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