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1294 Vol. 94 TMR

�There are some things money can�t buy. For everything else, there are damages.�

THE PROOF OF IRREPARABLE HARM IN CANADIAN PRACTICE

By Ruth M. Corbin, Ph.D.∗

I. INTRODUCTION Irreparable harm is a concept in law that assists in

determining whether a temporary injunction is an appropriate and necessary remedy. Simply defined, it is harm to an individual or party that cannot be remedied by financial compensation.1 Parties to a dispute who risk suffering irreparable harm are entitled to seek an early remedy�in the form of a temporary injunction�until the dispute can be more fully heard by a court.

The crux of the challenge in arguing for a finding of irreparable harm appears to be the formidable requirement that evidence of harm must be �clear and not speculative.� This has proven to be so high a barrier that it appears to have discouraged injunction applications in Canada. This paper reviews the interpretation and treatment of the irreparable harm criterion in the Federal Court. Analysis of the issues benefits from consideration of the U.S. experience in selected cases. The paper concludes with recommendations for innovative expert evidence from the social sciences that may help courts decide on a more informed basis whether harm is or is not reparable.

To appreciate fully the significance and evolution of the concept of irreparable harm, in an application for remedy, it is necessary to describe it in the context in which it predominantly arises, that is, the context of injunctions. For the purposes of this paper, attention will be focused principally on Intellectual Property injunctions�interlocutory injunctions in particular�and the assessment of irreparable harm therein.

Interlocutory injunctions are a form of temporary injunction issued for the short term purpose of preventing injury to a petitioner, prior to the time a court is in a position to consider ∗ CEO of CorbinPartners Inc., Toronto, Canada, Regular Member of the International Trademark Association. The author is indebted to Mr. Ron Dimock of Dimock Stratton LLP for guidance on relevant case law and review of an earlier draft, as well as to Ms. Sandra Edelman, Mr. Robert Kunstadt and two anonymous reviewers for their helpful comments and advice. 1. RJR�MacDonald Inc. v. Canada (Attorney General), [1994] 1 S.C.R. 311, 54 C.P.R. (ed) 114 (S.C.C.).

Vol. 94 TMR 1295 granting permanent relief on the merits. It is one of the remedies available to a plaintiff in an intellectual property dispute, pursuant to various statutory authorities2 and to the common law. An �interim� injunction is a similar form of injunction, awarded in circumstances of particular urgent concern and for shorter duration than interlocutory injunctions.3 While either form results in an order to a defendant to a dispute to refrain from doing a particular thing until the dispute may be more fully heard by a court, interlocutory injunctions provide a broader and more significant basis for exploring the issues surrounding irreparable harm.

Interlocutory injunctions have been sought in a wide variety of intellectual property actions, including trade-mark infringement,4 patent infringement,5 industrial design disputes,6 passing-off,7 trade secrets,8 injurious falsehood9 and misleading advertising.10 2. For statutory authority, see, e.g., Patent Act, s. 57(1), and Subsection 34(1) of the Copyright Act, the latter generally providing all remedies available at law for the infringement of a copyright. Interlocutory injunctions are similar to �preliminary injunctions� in United States practice. 3. See, e.g., Pfizer Ireland Pharmaceuticals v. Lily Icos LLC, 2003 FC 1278, November 3, 2003, Kelen J. Governed by Rule 374 of the Rules of the Federal Court, interim injunctions can last no longer than 14 days, although, according to the case cited in this footnote, the Federal Court has discretion to extend it in special circumstances. Interim injunctions are similar to �temporary restraining orders� in United States practice. 4. E.g., Dole Food Co. v. Nabisco Ltd., [2000] 8 C.P.R. (4th) 461, 2000 CarswellNat 2314 (Fed. T.D.); A. Lassonde Inc. v. Island Oasis Canada Inc., [2000] 5 C.P.R. (4th) 165 (F.C.G.D.), varied [2001] 11 C.P.R. (4th) 255 (F.C.A.); Imax Corp. v. Showmax Inc., [2000] 5 C.P.R. (4th) 81 (F.C.T.D.); Ethical Funds Inc. v. Mackenzie Financial Corp., [2000] 6 C.P.R. (4th) 92, [2000] CarswellNet 293, [2000] F.C.J. Gibson J. 5. E.g., American Cyanamid Co. v. Ethicon Ltd., [1975] 1 All E.G. 504 [1975] A.C. 396, [1975] 2 W.L.R. 316 (U.K.H.L.); Pfizer Ireland Pharmaceuticals v. Lilly Icos LLC, 2003 F.C. 1278, November 3. 6. E.g., L.M. Lipski Ltd. v. Doral Industries Inc., [1988] 3 F.C. 594; Bazz Inc. v. Distributions Nadair Inc., [1990] 35 C.P.R. (3d) 152 (Fed. T.D.); SklarPeppler Inc. v. Decor-Rest Furniture Ltd., [1990] 34 C.P.R. (3d) 76 (Fed. T.D.). 7. E.g., Centre Ice Ltd. v. National Hockey League, [1994] 53 C.P.R. (3d) 34, 166 N.R.44, 75 F.T.R 204, [1994] CarswellNat 1332 (Fed. C.A.); AMEC E&C Services Ltd. v. Whitman Benn & Associates, [2003] CarswellNS 412, Nova Scotia Court of Appeal, 2003 affirming (2003), [2003] N.S.J. No. 173, [2003] CarswellNS 183, 35 C.P.C. (5th) 139, 2003 NSSC 112, 25 C.P.R. (4th) 435, 214 N.S.R. (2d) 369, 671 A.P.R. 369 (N.S. S.C.). 8. E.g., CPC International Inc. v. Seaforth Creamery Inc., [1996] 69 C.P.R. (3d) 297 (Ont. Gen. Div.); Maple Leaf Foods Inc. v. Butler, [2002] Carswell Man 137, 23 B.L.R. (3d) 141 (Man. Q.B.). 9. See, e.g., Church & Dwight Ltd. v. Sifto Canada Inc., [1994] 58 C.P.R. (3d) 316 (Ont. Ct. (Gen. Div.)). 10. See, e.g., Ault Foods Ltd. v. George Weston Ltd., [1996] 68 C.P.R. (3d) 87 (F.C.T.D.); Johnson & Johnson Inc. (c.o.b. McNeil Consumer Products Co.) v. Bristol-Myers Squibb Canada Inc., [1995] O.J. No. 2230 (Gen. Div.); Beatrice Foods Inc. v. Ault Foods Ltd., [1995] 59 C.P.R. (3d) 374 (Ont. Ct. (Gen. Div.)); Maple Leaf Foods Inc. v. Robin Hood Multifoods Inc., Maple Leaf Foods Inc. v. Robin Hood Multifoods Inc., [1994] 58 C.P.R. (3d) 54 (Ont. Ct. (Gen. Div.)), aff'd, November 14, 1994 (Div. Ct.).

1296 Vol. 94 TMR They serve the purpose of keeping matters in the status quo11 until the case can be fully tried and decided on the merits. Once the full trial ensues, an interlocutory injunction is either quashed or replaced by a permanent injunction. Of course, a trial may never take place if the initial injunction effectively decides the matter between the two parties or if the plaintiff abandons its case for any other reason. Indeed, the vast majority of intellectual property cases in which an interlocutory injunction is sought do not continue to trial. Therefore, the evidence in interlocutory injunction applications can be pre-emptive.12

Interlocutory injunctions are discretionary and extreme remedies. They risk causing significant inconvenience or harm to the defendant before the plaintiff has fully proved its case. Moreover, as indicated earlier, they sometimes have the effect of permanently deciding a matter. Thus, courts have come to require a high standard of proof before granting an injunction to the plaintiff. An injunction will generally be granted only where a plaintiff can demonstrate real and irreparable harm.

It was through common law that irreparable harm arose as an evidentiary requirement for an interlocutory injunction. The Supreme Court of Canada articulated the requirements in RJR-MacDonald Inc. v. Canada (Attorney General,13 citing and endorsing the approach taken earlier in Metropolitan Stores.14 The Court held that the following three criteria are to be met:

• a serious issue to be tried must be demonstrated;

11. While the term status quo is used in case law and published authorities without definition, its definition may be subject to debate by parties to a particular dispute, as to the relevant date or circumstances. 12. See, e.g., R. Corbin, A.K. Gill and R.S. Joliffe, Trial by Survey (Carswell 2000), and the chapter therein on survey evidence as proof of harm at interlocutory injunction hearings. 13. [1994] 1 S.C.R. 311, 54 C.P.R. (ed) 114 (S.C.C.). The applicants were large manufacturers of cigarettes, who had challenged the constitutional validity of the Tobacco Products Control Act, which regulated tobacco product advertising and health warnings on tobacco product packages. The Court of Appeal found the legislation to be constitutional. Before a decision on the applicants' leave applications in the main constitutionality action was made, the applicants applied to the Supreme Court of Canada for a stay from compliance with the new packaging requirements. The court observed (at para. 46) that �the same principles should be applied by a court whether the remedy sought is an injunction or a stay,� then wrote (at para. 48):

First, a preliminary assessment must be made of the merits of the case to ensure that there is a serious question to be tried. Secondly, it must be determined whether the applicant would suffer irreparable harm if the application were refused. Finally, an assessment must be made as to which of the parties would suffer greater harm from the granting or refusal of the remedy pending a decision on the merits.

14. Manitoba (Attorney General) v. Metropolitan Stores (MTS) Ltd., [1987] 1 S.C.R 110, 128.

Vol. 94 TMR 1297

• there must be evidence of irreparable harm to the applicant if an injunction were not granted;

• the balance of convenience (actually �inconvenience�) between the parties is to be assessed, i.e., the inconvenience to the defendant assuming the injunction versus the inconvenience to the plaintiff in the absence of injunctive relief.

These three criteria are occasionally referred to collectively as the �tripartite test.� That test is reiterated throughout the case law on injunctions.

The serious issue to be tried can be raised to a higher prima facie standard in cases where the injunction would amount to a final determination of the issues between the parties. This is referred to as the �Woods� exception15 to the general rule that a Court will not undertake detailed examination of the merits of a case in determining whether or not to grant an interlocutory injunction.16

Among the three parts of the test, the irreparable harm requirement is well-known to be the toughest. Even courts have admitted that it presents the most difficulty to a trier of fact.17

American case law provides a frequent backdrop for analysis of irreparable harm by Canadian courts because of the similarity in definition and importance accorded by American courts. Defined in American case law as harm not compensable by monetary damages,18 it has been called �the one great pillar upon which all injunctive relief is premised.�19 In some U.S. jurisdictions, the barrier can be high: in order to qualify as irreparable harm, the injury must be imminent and actual, as opposed to being speculative and remote.20 In other jurisdictions, the evidence of specific instances of confusion, impact on goodwill or lack of control 15. See NWL Ltd. v. Woods, [1979] 1 W.L.R. 1294 [1979] 3 All E.R. 614, [1979] I.C.R. 867, 1 Lloyd�s Rep 1 (U.K. H.L.). �In a case where the outcome of an interlocutory injunction will be either determinative of the dispute, or would cause one of the parties to go out of business, the Court may take into consideration the probability of the success of the action on the merits.� Canadian caselaw application of this principle is found in e.g., Viewpoint International Inc. v. On Par Enterprises Inc., [2001] FCT 629, [2001] CarswellNat 1270, [2001] 1 F.C.J. No. 959 and Dole Food Co. v. Nabisco Ltd., [2000] 8 C.P.R. (4th) 461, [2000] CarswellNat 2314. 16. RJR MacDonald, 1 S.C.R. 311 at para. 55 17. Toronto Cricket Skating & Curling Club v. Cricket Club Townhouses Inc., Ont. Sup. Ct. 03-CV-249314CM1, August 12, 2003, at 341. 18. Morton v. Beyer, 822 F.2d 364, 372 (3d Cir. 1987); Enterprise Intern. v. Corporacion Estatal Petrolera, 762 F.2d 464, 472 (5th Cir. 1985). 19. Sara Lee Corp. v. Kayser-Roth Corp., 1992 U.S. Dist. Lexis 22598, 6:90CV00460, Nov. 3, 1992, at 11, para. 56. 20. Dan River, Inv. v. Icahn, 701 F.2d 278, 283 (4th Cir. 1983); Tucker Anthony Realty Corp v. Schlesinger, 888 F.2d 969, 975 (2d Cir. 1989).

1298 Vol. 94 TMR over the reputation of one�s trademark will be sufficient to establish irreparable harm.21 This acceptance of prima facie evidence in some U.S. jurisdictions is a rare occurrence in Canada, and the trend in Canada continues to be toward reinforcing a very high burden of proof for irreparable harm.22 Success in the Federal court, compared to that in the provincial courts, seems particularly elusive.23

Other forms of injunctions also feature irreparable harm as a key requirement.

One such form, often sought in patent infringement cases, is a preservation order. Pursuant to Federal Court of Canada Rules,24 and other procedural rules, preservation orders may be sought when there is concern that the defendant may destroy or remove the allegedly infringing device from the jurisdiction. Like an interlocutory injunction, a preservation order keeps relevant aspects of the status quo intact, and the same tripartite test as 21. See, e.g., S & R Corp. v. Jiffy Lube Int�l, Inc., 968 F.2d 371, 378 (3d Cir. 1992) wherein it was held that �trademark infringement amounts to irreparable injury as a matter of law� with similar findings in Abbott Laboratories v. Mead Johnson & Co., 971 F.2d 6, 16 (7th Cir.1992) and International Kennel Club of Chicago, Inc. v. Mighty Star, Inc., 846 F.2d 1079 (7th Cir. 1988); also in Pappan Enters., Inc. v. Hardee�s Food Sys., Inc., 143 F.3d 800, 805 (3d Cir. 1998) wherein it was held that �grounds for irreparable injury include loss of control of reputation, loss of trade, and loss of good will; . . . [O]nce the likelihood of confusion caused by a trademark infringement has been established, the inescapable conclusion is that there was also irreparable injury;� also in Opticians Association of America v. Independent Opticians of America, 920 F.2d 187, 196 (3d Cir. 1990), wherein it was held that lack of control over one�s mark �creates the potential for damage to . . . reputation[, which] constitutes irreparable injury for the purpose of granting a preliminary injunction in a trademark case.� 22. For recent examples and judicial analysis establishing a continuing high threshold, see Pfizer Ireland Pharmaceuticals v. Lilly Icos LLC, 2003 FC 1278, and Viewpoint International, Inc. v. On Par Enterprises Inc. T-1678-00 2001 FCT 629, discussion in the latter decision explicitly ruling out (in contrast to some U.S. decisions reviewed supra) that loss of goodwill or instances of confusion alone could suffice for establishing irreparable harm. Published commentaries by Canadian practitioners consistently cite discovery of a very high burden of proof, to the point where potential applicants are discouraged by a seemingly endemic low probability of success. See, e.g., commentary by A. Steele, �Federal Court of Canada Reiterates High Threshold of Irreparable Harm in Interim Injunctions� at http://www.robic.com/publications/Pdf/142.156-AST.pdf; see also the Canada component of the Submission of the Pharmaceutical Research and Manufacturers of America (PhRMA) for the National Trade Estimate Report on Foreign Trade Barriers, December 3, 1999, in which the writers estimate a statistical success rate of 10% for applicants for injunctions and put forward that �The Canadian Courts apply a very high standard of �irreparable harm� . . . impossible to meet in practical terms.� 23. Although cases are not numerous enough to establish a statistical trend, provincial courts have appeared to accept argument of harm more readily. See, e.g., Agropur Cooperative v. Saputo Inc., Dairyland Fluids Division Limited, J.-E. 1003-1833 (Quebec Superior Court, Gascon J.) in which the potential loss of customers was deemed sufficient for a finding of irreparable harm; see also Toronto Cricket Skating & Curling Club v. Cricket Club Townhouses Inc., Ont. Sup. Ct. 03-CV-249314CM1, August 12, 2003; Great Clips Inc. v. PIP Inc., [2003] 76 C.P.R. (3d) 41, Alberta Queen's Bench. 24. 1998, rule 377.

Vol. 94 TMR 1299 that articulated in RJR-Macdonald is adapted by courts to analyze the basis for relief.25 The interpretation of �irreparable harm� in a preservation order is not so much concern for immediate and ongoing marketplace harm, but rather the reasonable likelihood of the defendant�s destroying the allegedly infringing device or removing it from the jurisdiction, rendering the plaintiff unable to prove its claim for infringement.

In certain Mareva injunction26 applications, there may be occasion to consider irreparable harm, if the removal of assets would essentially leave a plaintiff without recourse to damages.27

A stay of proceedings has also been recognized as �a remedy of the same nature� as an interlocutory injunction, and courts have relied on the corresponding common law to apply the tripartite test:

A stay of proceedings and an interlocutory injunction are remedies of the same nature. In the absence of a different test prescribed by statute, they have sufficient characteristics in common to be governed by the same rules and the courts have rightly tended to apply to the granting of interlocutory stay the principles which they follow with respect to interlocutory injunctions.28 Indeed, as indicated earlier, RJR-Macdonald was itself a stay

proceeding, and the Supreme Court did confirm, at paragraph 82, that the tripartite test for injunctions was to be applied to applications for stays.

25. Perini America Inc. v. Alberto Consani North America Inc., [1992] 45 C.P.R. (3d) 48 (F.C.T.D.). 26. A form of injunction without notice to freeze the assets of a party if there is evidence of significant risk that the assets will be disposed of or removed from the jurisdiction. 27. For reviews see J. McArthur, The Mareva Injunction, an Evolving Plaintiff�s Tool, http://www.blakes.com/english/publications/bdr/december2002/Page4.asp; also R. Wasserman, Equity Renewed: Preliminary Injunctions to Secure Potential Money Judgments, 67 Wash. L. Rev. 257 (1992). See early application in Canada in Reading & Bates Horizontal Drilling Co. v. Spie, Horizontal Drilling Co., [1986] 13 C.P.R. (3d) 37 (F.C.T.D.). In Britain, see Z Ltd., [1982] 1 Q.B. at 585; also The Niedersachsen, [1984] 1 All E.R. at 419 (stating that �the test is whether . . . the court concludes, on the whole of the evidence then before it, that the refusal of a Mareva injunction would involve a real risk that a judgment or award in favour of the plaintiff would remain unsatisfied�). 28. Manitoba (Attorney General) v. Metropolitan Stores (MTS) Ltd., [1987] 1 S.C.R 110, at 127, reiterated in Z.I. Pompey Industrie v. ECU-Line N.V., [2003] CarswellNat 1031; [2003] SCC 27, 30 C.P.C. (5th) 1, 224 D.L.R. (4th) 577, 2003 A.M.C. 1280, 303 N.R. 201; Supreme Court of Canada; May 1, 2003; Docket: 28472, and in RJR MacDonald, 1 S.C.R. 311 at para. 46

1300 Vol. 94 TMR

However, the Supreme Court of Canada in Z.I. Pompey29 halted too wide an application of the tripartite test to stays of proceedings matters, particularly with respect to the irreparable harm barrier. This case involved a lawsuit between parties to an international contract. A dispute arose over damage to goods of the plaintiff, while being transported by the defendant. The contract between the parties had specified that Belgium was the only judicial forum for resolving any contractual disputes (the �forum selection� clause). The plaintiff attempted to have the case heard in Canada. The defendant applied for a stay of proceedings, on the grounds of the unambiguous forum selection clause. The application for a stay of proceedings was initially rejected by the prothonotary�s office, and decisions were appealed all the way to the Supreme Court, before a decision was rendered that removed the burden on the applicant from proving �irreparable harm.� The Supreme Court ruled that having to prove irreparable harm was an implausible burden for an applicant in such a dispute�it was rather the plaintiff who should bear the burden of persuading the court that the contractual clause should not apply.

In summary to this section, the assessment of irreparable harm in intellectual property injunction applications can be expected to be influenced by similar issues in other fields of law and other forms of injunctions. Exceptional circumstances have been noted by courts in contract matters where the irreparable harm test is too severe, implausible or preemptive. However, intellectual property disputes have an important distinction from contract and other property disputes because the potential harm relates to intangible assets. Potential loss of reputation, loss of control, potential harm to brand equity or other impacts of confusion�being typically argued by petitioners for intellectual property injunctions�present unique and complex issues of measurement, which are likely to be front and centre to the request for relief.

II. EVOLUTION OF THE BURDEN OF PROOF As a product of common law, irreparable harm has had a

remarkable evolution from being a relatively easy criterion to meet for an injunction, to being the most difficult. It was once inferred directly from a strong prima facie case on the merits, as documented in Kerr on Injunctions:30 29. Z.I. Pompey Industrie v. ECU-Line N.V., [2003] CarswellNat 1031; [2003] SCC 27, 30 C.P.C. (5th) 1, 224 D.L.R. (4th) 577, 2003 A.M.C. 1280, 303 N.R. 201; Supreme Court of Canada; May 1, 2003; Docket: 28472. 30. 6th ed., pp. 17-18, cited in R. Dimock, Remedies for Infringement of Intellectual Property Rights, Volume 1, Principles and Policy (Osgoode Hall 2004).

Vol. 94 TMR 1301

By the term �irreparable injury� it is not meant that there must be no physical possibility of repairing the injury; all that is meant is that the injury would be a material one, and one which could not be adequately remedied by damages; and by the term �the inadequacy of the remedy by damages� is meant that the remedy by damages is not such a compensation as will in effect, though not in specie, place the parties in the position in which they formerly stood. If the act complained of threatens to destroy the subject-matter in question, the case may come within the principle, even though the damages may be capable of being accurately measured. This early view suggests irreparable harm was arguable

whenever the disputed property was destroyed�even if the equivalent financial value could be established. Over the ensuing years, money became the cure-all for harm. If harm was measurable, financial damages would compensate.31 But arguments that harm was not measurable were often accepted at face value, from evidence of the infringement offense itself. Indeed, the complete absence of evidence of irreparable harm could be accepted at the judge�s discretion without disturbing the case for an injunction.32

The 1975 British case American Cyanamid Co. v. Ethicon Ltd.33 was a turning point, making assessment of irreparable harm a distinct obligation. The case concerned a patent for the use of a particular chemical material, named PHAE, to produce absorbable surgical sutures (sutures that disintegrate and are absorbed by the human body once their purpose has been served.) Ethicon introduced its own artificial suture product, which relied on material similar in chemical properties to, but not identical with PHAE. American Cyanamid obtained an injunction in the lower court, arguing that sutures produced by Ethicon infringed their patent. The Court of Appeal overturned the decision, and a subsequent appeal took the case before the House of Lords. Faced with voluminous evidence, and contrary opinions of the lower courts with respect to evidence sufficient for injunctive relief, the House of Lords offered a painstaking analysis, that was to become a well-articulated precedent. Lord Diplock�s explanation of the role of damage assessment is excerpted below:

31. E.g., in Teledyne Industries Inc. et al. v. Lido Industrial products Ltd. 41 C.P.R. (2d) 60 (Ont. C.A.), it was accepted at the trial level and confirmed on appeal that irreparable harm was not established. Damages would compensate for losses. 32. Watchstraps Inc. v. Rodi & Wienenberger AG, [1957] CarswellQue 18; 16 Fox Pat. C. 105, [1957] Que. Q.B. 757, 26 C.P.R. 47; Quebec Court of Queen's Bench; January 16, 1957. 33. [1975] A.C. 396 HL.

1302 Vol. 94 TMR

[T]he governing principle is that the court should first consider whether, if the plaintiff were to succeed at the trial in establishing his right to a permanent injunction, he would be adequately compensated by an award of damages for the loss he would have sustained as a result of the defendant�s continuing to do what was sought to be enjoined between the time of the application and the time of the trial. If damages in the measure recoverable at common law would be adequate remedy and the defendant would be in a financial position to pay them, no interlocutory injunction should normally be granted, however strong the plaintiff�s claim appeared to be at that stage.34 Note that the court in American Cyanamid phrased the

injunction requirement as one of establishing serious �doubt,� rather than certainty, about harm. �Where there was a doubt [emphasis added] as to the parties� respective remedies in damages being adequate to compensate them for loss occasioned by any restraint imposed on them, it would be prudent to preserve the status quo.�35

Since American Cyanamid, the burden continued to escalate from the requirement to show just serious �doubt� about irreparable harm, to requiring proof of likelihood, then evidence of certainty. Five different cases in the Federal Court of Appeal illustrate how case law evolved in Canada over the next twenty years: Cutter Ltd. v. Baxter Travenol Laboratories Ltd.,36 Imperial Chemical Industries PLC v. Apotex Inc.,37 Syntex Inc. v. Novopharm Ltd.,38 Nature Co. v. Sci-Tech Educational Inc.39 and Centre Ice Ltd. v. National Hockey League.40 In Cutter Ltd., which involved a patent infringement claim for blood pack containers used by the Red Cross, Chief Justice Thurlow adopted Lord Diplock�s requirement of irreparable harm from American Cyanamid41 �. . . by which I mean harm in respect of which the damages recoverable at law would not be an adequate remedy,� as a necessary component for interlocutory injunctive relief. The requirement was thereby unambiguously imported to Canada from British law. In Imperial Chemical Industries, a patent infringement action involving a heart medicine, the Court of 34. Id. at 408. 35. Id. 36. [1980] 47 C.P.R. (2d) 53, 57. 37. [1989] 27 C.P.R. (3d) 345, 351 (F.C.A.). 38. [1991] 36 C.P.R. (3d) 129, 133-38 (F.C.A). 39. [1992] 41 C.P.R. (3d) 359, 366-68 (F.C.A.). 40. [1994] 53 C.P.R. (3d) 34, 52-54 (F.C.A.). 41. See review in previous paragraph.

Vol. 94 TMR 1303 Appeal was more definitive about the requirement: �The jurisprudence in this court establishes that the evidence as to irreparable harm must be clear and not speculative.�42 In Syntex, which involved a dispute about trade-mark rights in the size, shape and colour of a pharmaceutical, the Court of Appeal raised the bar of evidentiary standard from a likelihood to a certainty: it held that the finding by the trial judge that the applicant would be likely to suffer irreparable harm was insufficient to warrant the granting of an interlocutory injunction. It considered that the trial judge erred in the use of the tentative expression �is likely [to cause . . .].�43 It was necessary for the evidence to support a finding that the applicant would suffer irreparable harm. A similar high bar was set In Nature Co., which involved a dispute about the name �The Nature Store� in connection with retail store. Speaking for the court, Mr. Justice Stone refused the request for an interlocutory injunction because �. . . the evidence did not clearly show that [irreparable] harm would result.�44 Centre Ice Ltd., which involved the disputed use of the trade-mark Centre Ice for hockey equipment and accessories, reiterated that the evidence must show a certainty, not a likelihood, of irreparable harm. Even evidence of actual confusion was considered insufficient. Rather, the court sought specific evidence that any such confusion had led customers to stop dealing or to consider not dealing with the plaintiff on future occasions. �In the absence of clear evidence that irreparable harm would result at this juncture, an interlocutory injunction should not be issued.�45

During this evolution, there was, from time to time, a mitigating influence exercised in selected cases. If one or the other of the remaining two requirements of the tripartite test (serious issue, balance of convenience) was very strong in evidence, less attention might be paid to irreparable harm. As observed by Robert Sharpe in his 1983 book, Injunctions and Specific Performance,46 each of the aspects of the test were not to be seen as �separate, watertight categories.� Rather, they were factors that �relate to each other, and the strength on one part of the test ought to be permitted to compensate for weakness in another.�47 So, for example, in cases where the courts found that intellectual property

42. [1989] 27 C.P.R. (3d) 345, 351 (F.C.A.) at para. 12. 43. [1991] 36 C.P.R. (3d) 129, 133-38 (F.C.A) at para. 15. 44. [1992] 41 C.P.R. (3d) 359, 366-68 (F.C.A.) at para 21. 45. [1994] 53 C.P.R. (3d) 34, 52-54 (F.C.A.) at para. 11. 46. Robert J. Sharpe, Injunctions and Specific Performance (Canada Law Book 1999). 47. Turbo Resources Ltd. v. Petro Canada Inc., [1989] 24 C.P.R. (3d), 1 (F.C.A.), 2 F.C. 451 (F.C.A.) at para. 29.

1304 Vol. 94 TMR infringement was �flagrant,� they attached less importance to the imperfections in the plaintiff�s argument of irreparable harm.48

Professor Sharpe�s view of a compensatory balance among the three parts of the test now appears less in vogue.49 Some courts have appeared to prefer the efficiency of going straight to the evidence of irreparable harm. They found it wanting, giving short shrift to the analysis of �serious issue� or �balance of convenience.� This was the case in toronto.com. v. Sinclair50 and Viewpoint International Inc. v. On Par Enterprises Inc.51

The crux of the irreparable harm issue is whether measurement is or is not possible. In UL Canada Inc. v. Procter & Gamble Inc.,52 the applicant presented seemingly plausible reasons why harm induced by a misleading advertising campaign could not be measured: UL claimed it was difficult if not impossible to calculate the financial impact of an advertising campaign about Procter�s OIL OF OLAY soap bar, as well as the loss of goodwill and loss of potential customers. It argued further that the effect of the alleged misrepresentation �could alter the habits and perceptions of customers such that it is likely that they would continue to buy Olay Bar regardless of the trial result. It would therefore be impossible to recapture the lost market share.�53 The judge played back each factor raised by UL, and pointed out missed opportunities for demonstrative evidence. He observed that UL had presented no evidence of permanent loss of business, and no evidence that the loss would not be calculable. He noted that a company as established as UL must surely have sales records and business projections from which to calculate or estimate losses and, furthermore, that industry tracking studies existed of market shares of competing soap products. He also observed that UL had failed to account for the impact of its own reduction of advertising on loss of business. The injunction was denied.

In Dole Food Co v. Nabisco Ltd.,54 the court similarly rejected arguments about inability to calculate harm: �. . . mere difficulty in precise calculation of damages does not constitute irreparable 48. See, e.g., Duomo Inc. v. Giftcraft Ltd., [1984] 1 C.P.R. (3d) 165 (F.C.T.D.); Interlogo AG et. al. v. Irwin Toy Ltd. et. al., [1985] 3. C.P.R. (3d) 476 (F.C.T.D). 49. This was his position at the time, now Justice of the Ontario Court of Appeal. 50. [2000] 6 C.P.R. (4th) 487, [2000] F.C.J. No. 795, [2000] CarswellNat 1105, at para. 14 (Fed. T.D.) Henegan. 51. [2001] FCT 629, [2001] CarswellNat 1270, [2001] F.C.J. No. 959 at para. 79 (Fed. T.D.) Lemieux J. 52. [1996] 65 C.P.R. (3d) 534, 547. 53. Id., para. 46. 54. [2000] 8 C.P.R. (4th) 461, [2000] CarswellNat 2314, [2000] F.C.J. No. 1636 at para. 32 (Fed. T.D.). Henegan J. The case related to the name �Fruit Bowls� for processed fruit snacks and desserts, both parties claiming rights in Canada.

Vol. 94 TMR 1305 harm as long as there is some reasonably accurate way of measuring them.� By the time of Viewpoint International,55 the standard of proof had been placed almost out of reach, the Court citing the following passage of a decision of the Ontario Court General Division: �Sophisticated participants in the market place such as these litigants should be able to provide the Court with an indication of loss based upon historical experience and a mathematical or statistical analysis of the circumstances demonstrating that the loss is not reasonably calculable which would give the Court some degree of confidence that the kind of loss being alleged would indeed occur and cannot be calculated . . . with the increased sophistication of accounting and information retrieval techniques, it is probable that any loss could reasonably be established.�

In short, judges aware of the strong advances in quantitative analysis were now inquiring whether that skill could not be applied to measuring the factors of harm. It is a high standard indeed for courts to propose that anything that can be clearly expressed must surely be clearly measurable. It borders on challenging the concept that irreparable harm could exist at all.

Courts are not oblivious to the heavy burden of proof now imposed by the irreparable harm criterion, but are conscious of the need for fairness to credible defendants. In A. Lassonde Inc. v. Island Oasis Canada Inc.,56 the applicant requested protection against the plausible possibility of irreparable harm, while awaiting a final ruling. The court rejected the request for an injunction to act as a �bodyguard� against risks of irreparable harm, observing the �drastic consequences . . . that will result for the party against which the injunction is issued.�

III. IRREPARABLE HARM SWINGS BOTH WAYS Both parties may warn of irreparable harm if their preferred

outcome to the injunction is not achieved.57 In American Cyanamid

55. [2001] FCT 629, [2001] CarswellNat 1270, [2001] F.C.J. No. 959 at para. 76 (Fed. T.D.) Lemieux J. 56. A. Lassonde Inc. v. Island Oasis Canada Inc., [2000] 5 C.P.R. (4th) 165 (F.C.G.D.), varied [2001] 11 C.P.R. (4th) 255 (F.C.A.). The plaintiff was the owner of the trademark OASIS for use in association with fruit juices and other food products. Its products were sold through retail food stores, and the trademark was well-known in Quebec. The defendant was the owner of trademark ISLAND OASIS, for use in association with frozen concentrated cocktail bases, sold to food service wholesalers. The defendant's mark had been used in Canada since 1985. The plaintiff applied for an interlocutory injunction to prevent use of its registered mark by the defendant in Quebec. 57. Defendant may warn of �catastrophic outcome� if he is enjoined. Litton Systems Inc. v. Sundstrand Corp., 750 F.2d 952, 960 (Fed. Cir. 1964).

1306 Vol. 94 TMR Co. v. Ethicon Ltd.,58 Lord Diplock made clear that irreparable harm swung both ways�both parties could look at the risk to themselves depending on the outcome of the injunction, and the �harm� evidence would inevitably affect the assessment of balance of convenience:

If, on the other hand, damages would not provide an adequate remedy for the plaintiff in the event of his succeeding at the trial, the court should then consider whether, on the contrary hypothesis that the defendant were to succeed at the trial in establishing his right to do that which was sought to be enjoined, he would be adequately compensated under the plaintiff�s undertaking as to damages for the loss he would have sustained by being prevented from doing so between the time of the application and the time of the trial. �If damages in the measure recoverable under such an undertaking would be an adequate remedy and the plaintiff would be in a financial position to pay them, there would be no reason upon this ground to refuse an interlocutory injunction.�59 In Sara-Lee v. Kayser-Roth Corp.,60 the plaintiff, manufacturer

of L�EGGS pantyhose, requested the court to restrain the defendant from selling its recently introduced LEG LOOKS brand of pantyhose, due to the name and packaging being confusingly similar with its own products. However, the court found potentially irreparable harm to the defendant if it was obliged to stop advertising and remove its products from the shelf even temporarily. The court acknowledged that some of the potential damages�lost sales in particular�were measurable. However, it also observed the potential for loss of defendant�s reputation �due to the very taint of an injunction.� Moreover, because the defendant company�s product was new to the marketplace, the Court observed that there was no history of company sales to forecast realistically its lost sales.

In summary, since an injunction is an equitable remedy, fairness to both parties will be considered by the court. While procedurally it is not the defendant�s burden to demonstrate irreparable harm, evidence of such to either defendant or plaintiff will go to the balance of convenience and therefore, possibly, to the denial of the injunction and ultimate benefit to the defendant.

58. [1975] 1 All E.G. 504. 59. Id. at 508. 60. 1992 U.S. Dist. LEXIS 22598, 6:92CV00460, November 3, 1992.

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IV. CAN IRREPARABLE HARM STILL BE INFERRED OR OPERATIONALIZED?

In principle, irreparable harm in current jurisprudence means injury to the plaintiff that is not measurable, or cannot be fully compensated by an award of financial damages. In practice, it must be (and has previously been) �operationalized� or inferred from specific circumstances. That is, an assumption must be made as to what will be taken as an indicator, measure or surrogate of this concept to warrant a finding that irreparable harm would �exist� if the status quo were disturbed. Prior courts have used many surrogates and principles to draw an inference of irreparable harm. They will be discussed and illustrated in this section; however, there is hardly a one that has not been rejected by a more recent court decision.

The mere existence of a strong prima facie case for infringement61 was once accepted as evidence of the likelihood of irreparable harm. However, as indicated earlier, several Canadian Court of Appeal decisions have since stated that even if infringement appeared clear on its face, separate, clear and non-speculative evidence of irreparable harm must be given.

Even where plaintiff demonstrates confusion and a resulting likelihood of loss of goodwill, and notwithstanding that several courts have allowed it as a basis for establishing irreparable harm, the Federal Court in Ault Foods,62 and the Court of Appeal in Centre Ice63 disagreed. There is no reason, the latter Court observed, why today�s sophisticated measurement tools should not be able to measure and make reparable any harm that might arise from loss of goodwill.

In several of the patent cases where interlocutory injunctions have been granted, the inability of the defendant to pay was a prime consideration.64 That is, even if financial damages were quantifiable, if not recoverable, irreparable harm is de facto

61. E.g., Apple Computer Inc. v. Franklin Computer Corp., 714 F.2d 1240, 1254 (3d Cir. 1983); Vaughan Mfg. Co. v. Brikam Intern, Inc., 814 F.2d 346, 351 (7th Cir. 1987); Processed Plastic Co. v. Warner Communications, 675 F.2d 852, 858 (7th Cir. 1982); Service & Training, Inc. v. Data General Corp., 963 F.2d 680, 690 (4th Cir. 1992). 62. Ault Foods Ltd. v. George West Ltd., [1996] 68 C.P.R. (3d) 87 (F.C.T.D.). 63. Boutique au Coton Inc. v. pant-o-Rama Inc. per Mr. Justice Rouleau; see also U.S. Surgical Corp. v. Downs Surgical Canada Ltd., [1982] 67 C.P.R. (2d) 140 (Ont. H.C.J.); Sony of Canada Ltd. v. Hi-Fi Express Inc., [1982] 67 C.P.R. (2d) 70, 138 D.L.R. (3d) 662, 21 C.C.L.T. 243 (Ont. H.C.J.); House of Faces, Inc. v. LeBlanc, [1984] 2 C.P.R. (3d) 177, 4 C.I.P.R. 43 (Ont. H.C.J.). 64. E.g., Titaln LInkabit Corp. v. S.E.E. Electronic Engineering Inc., [1993] 48 C.P.R. (3d) 63; Inventions Morin Inc. v. Ouils B.G. R., Inc., [1994] 55 C.P.R. (3d) 75 (F.C.T.D.); Louisville Bedding Co. v. Kwilt-Kraft Industries Ltd. [1994] 56 C.P.R. 3d 269 (F.C.T.D.); Slim Line Design Ltd. v. Pacific Northwest Manufacturing Inc., [1999] 86 C.P.R. (3d) 498.

1308 Vol. 94 TMR predictable. The Supreme Court in RJR Macdonald65 was less committal on this basis of proof of irreparable harm, i.e., the impecuniousness of one party, calling it only �a relevant consideration,� and other courts have refused to allow the defendant�s precarious financial situation to relieve the plaintiff from proof of harm itself.66

Also effective in the past has been evidence that the defendants would use its infringing product to �springboard� with unfair immediacy into the market in anticipation of expiry of the plaintiff�s patent.67 The clear risk of springboarding was taken as a surrogate for irreparable harm. However, more recently, the springboard effect as a surrogate for irreparable harm has been rejected by the Court in cases where the potential loss of market share to the defendant was presented as too speculative.68

There still remain some evidentiary initiatives which have been accepted, or approved in principle by courts, without later case law to invalidate them.

An argument of non-trackable �spillover sales� produced results for the plaintiff in L.M. Lipski Ltd. v. Doral Industries Inc.,69 a case involving a dispute over an industrial design for a houseware item for children. The plaintiff successfully argued that sales of the article to which an allegedly infringing industrial design had been applied would have led to cross-sales of other of the plaintiff�s products�but which ones, and how many, were impossible to know. This case was subsequently distinguished in Samsonite Corp. v. Holiday Luggage Inc.,70 in which an injunction was refused.

A short lifespan in the market has been at least described as a plausible basis for arguing irreparable harm. As observed by the court in Zivin v. Gilbro Ltd.71 (albeit rejecting the injunction for the plaintiff in that case), the irreparable harm barrier �might not be as stringently applied when . . . the subject matter [has] an ephemeral lifespan where market saturation is quickly reached and where the winds of fashion which favour an owner�s venture into hopefully exceptional gains will have an equally exceptional 65. RJR�MacDonald Inc. v. Canada (Attorney General), [1994] 1 S.C.R. 311, 54 C.P.R. (ed) 114 (S.C.C.) at para. 64. 66. toronto.com v. Sinclair, [2000] 6. C.P.R. (4th) 487 at para. 26. 67. See, e.g., Baker Hughes Inc. v. Galvanic Analytical Systems Ltd., [1991] 37 C.P.R. (3d) 512 (F.C.T.D.); Procter & Gamble Inc. v. Colgate-Palmolive Canada Inc., [1995] 61 C.P.R. (3d) 160, 169 (F.C.T.D.). 68. Whirlpool Corp v. Camco Inc., [1995] 65 C.P.R. (3d) 63 (F.C.T.D.). 69. [1988] 3 F.C. 594. 70. [1988] CarswellNat 624; 21 C.I.P.R. 286, 20 C.P.R. (3d) 291, 19 F.T.R. 161; Federal Court of Canada�Trial Division; May 4, 1988; Docket: Doc. No. T-2396-87. 71. [1988] 19 C.P.R. (3d) 516 at 529 (F.C.A.).

Vol. 94 TMR 1309 fickleness about them. If at the same time, the competing product appears in the eye of the Court to be an obvious knock-off and where piggy-back conclusions may be more easily reached, the Court will not hesitate for the sake of pure equity, to grant injunctive relief.�72

The Supreme Court in RJR Macdonald73 had also left some specific opportunities on the table to argue irreparable harm, namely those where �one party will be put out of business by the other [or] . . . where one party will suffer permanent market loss or irrevocable damage to its business reputation . . . or where a permanent loss of natural resources will be the result when a challenged activity is not enjoined. . . .�

In summary, many plausible benchmarks and surrogates have been used to successfully support claims of irreparable harm, but the majority have been subsequently rejected by later courts. The Supreme Court in RJR Macdonald held out the hope of acceptable evidentiary proof�with one caveat: the evidence must be �clear and not speculative.� The entrenchment of this standard, since 1994, is reviewed in the next section.

V. THE EVIDENTIARY PARADOX: CLEAR AND NOT SPECULATIVE EVIDENCE

OF IMMEASURABLE DAMAGES The best way to summarize today�s evolving demands for

evidence of irreparable harm is that it be clear and not speculative. That theme is now echoed in courts across many cases. It was a determining element in the 1994 decision of the Federal Court of Appeal in Centre Ice Ltd. v. National Hockey League74 overturning an injunction decision of the lower court. The plaintiff Centre Ice operated a retail store in Calgary specializing in the sale of hockey equipment and other sporting goods including hockey pants and jerseys with the trade-mark CENTRE ICE. The defendant was the agent of the NHL hockey league for marketing-related merchandise. The plaintiff obtained an interlocutory injunction prohibiting the defendants from using the name �Centre Ice� in Alberta. The defendants appealed on the ground that the trial judge had erred in finding that plaintiff had suffered irreparable injury. The injunction was set aside; i.e., although there was acknowledged evidence of some confusion between the two parties'

72. This point of view has some colour of the Woods exception about it, i.e., a situation in which the matter is essentially decided by an injunction, due to the ephemeral nature of the circumstances. 73. RJR�MacDonald Inc., 1 S.C.R. 311 at para. 64. 74. [1994] 53 C.P.R. (3d) 34 at 52-54 (F.C.A.).

1310 Vol. 94 TMR wares, the court held that confusion did not, per se, result in loss of goodwill and that loss of goodwill, if any, did not establish irreparable harm as not compensable in damages. Clear evidence of loss of goodwill and irreparable harm was deemed to be lacking.

Reviewing case law on the matter of irreparable harm, Mr. Justice Heald, writing for the Court, concluded that the evidence must support a finding that a plaintiff would suffer irreparable harm. He observed that no such evidence had been submitted at the original hearing. He made a similar finding in Ault Foods Ltd. v. George Weston Ltd.,75 in rejecting the application.

In a subsequent case, Sports Authority, Inc. v. Vineberg,76 Judge Rothstein defended the high bar:

Certainly the standard set by Centre Ice is a high one. The reason is that an interlocutory injunction is, by definition, a determination of rights before trial. In an appropriate case, where there is clear evidence upon which reasonable and logical inferences of irreparable harm can be made, the requirements necessary to obtain an interlocutory injunction may be met. Applications for injunctions in intellectual property matters

appear to be decreasing in frequency, due to the known risks of rejection. Recent case law to 2004 is heavily weighted to denials of injunctions, based on insufficiency of evidence of irreparable harm.77

What can non-speculative evidence of future irreparable harm possibly be, when everything about the future is speculative by definition?

VI. OPPORTUNITIES FOR SCIENTIFIC PROOF OR DEFENSE

The evidentiary barrier for obtaining injunctions in the Federal Court of Canada is now very high. Lawyers have become reluctant to encourage clients to invest in applications.78 Strategies that have been selectively successful in the past (as enumerated in 75. [1996] 68 C.P.R. (3d) 87 (F.C.T.D.) at 97. 76. [1995] 61 C.P.R. (3d) 155 (F.C.T.D.), at p. 157. 77. See, e.g., Osiris Inc. v. 1444707 Ontario Ltd.; [2004] CarswellOnt 376; Ontario Superior Court of Justice; January 27, 2004; Docket: 03-CV-257165CM2, at para. 37-38. In a recent (and rare) successful injunction application regarding the trade-mark CRICKET CLUB, the judge made a point of saying that he regarded the evidence to be beyond mere speculation. 78. E.g., Barry Gamache of Leger Robic Richard refers to �the ever expanding wall which makes it very difficult for a plaintiff in Canada to obtain an interlocutory injunction in I.P. infringement cases� in �Allegation of Irreparable Harm Insufficient for Interlocutory Injunctions,� (1994) 8 W.I.P.R. 119.

Vol. 94 TMR 1311 an earlier section) have not necessarily been successful in subsequent proceedings. Outcomes are very hard to predict.

The nub of the problem appears to be that courts have been dissatisfied when only the conceptual basis for irreparable harm, no matter how plausible, has been advanced by counsel. They have also grown impatient with �hand-waving arguments� that harm does not seem measurable. They want direct evidence that is clear and not speculative. They have expressed doubts that today�s sophisticated tools could not measure almost anything to do with marketplace harm. Paradoxically, courts have even proposed that quantitative tools could be applied to support the evidentiary basis that harm is non-measurable.

There seems a ready opportunity to address this proposition head-on, with an innovative form of expert evidence: experts� statements, with support, that they have no knowledge of how to measure the harm at issue�at least not to a standard that would be fair to the parties. The professional literature on measurement readily acknowledges the limited reliability of statistical tools for certain types of forecasting,79 such as the low reliability of forecasts of sales of innovative technologies. This may be relevant in cases of alleged patent infringements for emerging markets. The professional literature on attitudes acknowledges the limited predictability of certain types of attitudinal measures with respect to consumers� future behaviour. It is not just the inherent limitations of measurement tools that affect predictability. Consumers themselves may be poor predictors of their own future reactions to numerous hypothetical situations, such as a trade-mark that produces a gross deception in the marketplace.80 The professional literature on decision-making acknowledges that certain self-assessments by people of their future decisions may be misleading unless tempered with measures of personal confidence.81 These limitations exist not widely (social science measurement tools on the whole are quite effective) but in specific areas that may be pertinent to a case at hand.

If a credible expert assembled such evidence of �inability to measure� with the same thoroughness and detail with which they have typically produced evidence of measurable factors, courts would surely be assisted.

79. E.g., S. Schnaars, Megamistakes: Forecasting and the Myth of Rapid Technological Change (The Free Press 1989). 80. See, e.g., P.J. Hilts, �In Forecasting Their Emotions, Most People Flunk Out,� New York Times, February 16, 1999. A media article drawing on and summarizing the results of research in learned journals. 81. See, e.g., I. Simonson, Trademark Infringement from the Buyer�s Perspective: Conceptual Analysis and Measurement Implications, Journal of Public Policy and Marketing, Vol. 13 (2) 181-99, 1994.

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Moreover, such evidence, if credible, would at a minimum, oblige the burden to shift to the opponent. Now the opponent must produce the measurement tool that would �work� to compensate harm at trial. If the initial expert is right, the opponent will have a difficult time doing so. And any attempt would itself be open to criticism.

It is counter-intuitive to expect an expert to be helpful by saying, �I can�t do it.� Perhaps it is difficult for some experts to admit. But it is an opportunity to provide learned support to what may otherwise appear to the court to be mere advocacy on the part of counsel. Optimism may be taken from IMAX Corp. v. Showmax Inc.82 in which the court readily accepted uncontested expert evidence that potential harm to IMAX�s reputation, by a confusingly-named competitor, would be impossible to measure.

There is a specific opportunity to apply this principle in matters of trade-mark infringement, in the relatively new concept in American case law of �initial interest confusion.�83 The concept acknowledges a marketplace phenomenon whereby people initially misled into approaching a product (thinking it is something else) may decide to buy that product after all, even if the initial confusion subsides before purchase.84 This in turn may erode loyalty to the brand the consumer originally had in mind. The Court in McNeil-PPC, Inc. v. Guardian Drug Co.85 eloquently describes initial interest confusion as follows:

It is clear to the Court that, taken as a whole, it was Defendant's intent in appropriating Plaintiff's trade dress, not only in its packaging but also in its advertising, to confuse or �hook� customers at the initial point of contact with the product, thus initially drawing the customers to its product through the similarity in trade dress. That the customer might realize that Defendant's product is not Plaintiff's before he gets to the check-out counter to pay for it is irrelevant. Even if the consumer realizes that the Arbor product is not the same as the national brand once he picks the product up off the shelf and reads the label, Defendant has already accomplished what it set out to do, which is to confuse the

82. [2000] CarswellNat 135; [2000] 5 C.P.R. (4th) 81, 182 F.T.R. 180, [2000] F.C.J. No. 69; Federal Court of Canada�Trial Division; January 18, 2000. 83. 3 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition § 23:6 (4th ed. 2003). 84. Jordache Enterprises, Inc. v. Levi Straus & Co., 841 F. Supp. 506, 514-15, 30 U.S.P.Q.2d 1721 (S.D.N.Y. 1993) (a recognized type of confusion is when �potential consumers initially are attracted to the junior user�s mark by virtue of its similarity to the senior user�s mark, even though these consumers are not actually confused at the time of purchase). 85. 984 F. Supp. 1066 (E.D. Mich. 1997).

Vol. 94 TMR 1313

consumer at the point when he first reaches for the product on the shelf. It is at that point that the damage is done. Defendant has already succeeded in utilizing the Plaintiff's trade dress to get the customer to consider buying its product. In this Court's view, this is sufficient to constitute a trade dress violation. Initial interest confusion is a simple gestalt concept in

principle, but very complex in its unitary parts. To date, it has been described qualitatively, but not yet studied quantitatively. Models of decision-making in social science would attach probabilities to each of the many nuanced impressions, reactions and behaviours described in examples of initial interest confusion and produce a forecast of impacts with very high error variance. The error variance is a measure of reliability, meaning that even though the model is reasonable in theory, it is unlikely to have stable predictability in the real world without many hundreds of laboratory or marketplace studies. An expert familiar with the social science literature would be able to attest to such, supporting his/her opinions with all of the related literature and its acknowledged limitations. An opposing expert would be hard-pressed to produce a new theory and confirmatory data on the spot.86

In summary, initial interest confusion is but one example of aspects of human perception, reactions and behaviour. Social scientists have not yet captured this confusion in reliable quantitative models for which no literature exists to support that conclusion. The harm would be demonstrably not measurable.

Skeptics may be concerned that such a possibility would merely escalate the opportunities for expensive inconsistent evidence between parties� experts. The concern would not be warranted. The opportunity that exists is to strengthen the credibility and substance of evidence that is already being given, but is seldom accepted, on �irreparable harm.�

VII. CONCLUSION Interlocutory injunctions serve a valuable part of the litigation

process, assisting in the resolution of many conflicts. They provide speedy and cost-efficient justice in urgent circumstances. In the last few years, prospective applicants have wondered whether the severe evidentiary requirements for irreparable harm have been an obstacle to justice. Although many creative strategies have been

86. This does not mean that social science should not commence new research now, outside the deadline-oriented court environment, that will permit measurement tools to catch up with these new demands in law.

1314 Vol. 94 TMR introduced to argue irreparable harm, courts have often used their discretion to disagree with the point of view of plaintiffs� counsel. Courts may be assisted by additional social scientific evidence in this area, which addresses the paradoxical demand for clear and non-speculative proof of irreparable harm. Exploiting published knowledge about quantitative tools to scientifically explain why harm is or is not measurable would make a substantive contribution to addressing this paradox. Such evidence would assist in the predictability of outcomes of potential injunction awards, for potential benefit to both parties to a dispute, as well as to triers of fact.