Olympic gold medallist’s trademark claim against Apple survives faulty service
Retired Quebec-based sprinter Bruny Surin claims the logo for mobile app Apple News infringed his clothing line’s trademarked design
Olympic gold medallist Bruny Surin can proceed with his trademark infringement claim against Apple after a Quebec judge rejected the tech giant’s attempt to have the case dismissed for improper service.
Surin – a member of the 4X100m men’s relay team that took the top prize for Canada at the 1996 Olympic Games in Atlanta – filed a claim seeking $30,000 in damages against Apple in June 2020, alleging that the logo for its Apple News service looks too similar to the one he uses for his own clothing line.
The former athlete also sought an injunction forcing Apple to stop using the logo for its mobile app, which launched in 2015, several years after Surin registered his own design with the Canadian Intellectual Property Office.
However, according to Quebec Superior court Justice Thomas Davis’ recent ruling, Surin never managed to serve his originating documents on Apple, and the company applied to have his case dismissed as a result.
The judgment says Surin ran into trouble when his process server turned up at Apple Canada’s Toronto headquarters in July last year, only to be told that there was nobody in the building to accept service.
Instead, the Olympian sent copies of his claim to an email address for the company’s Canadian legal department and to a lawyer at Baker McKenzie who had previously responded to Surin’s demand letter on Apple’s behalf.
In his decision, Justice Davis concluded that Surin’s attempts fell short of compliance with the Hague Convention on International Service and thathe had missed the three-month deadline set by the civil code for expiry of an unserved originating application.
Still, the judge exercised his discretion to authorize service at Apple’s Californian headquarters via post, taking into account the difficulties associated with the Covid-19 pandemic and Surin’s attempts to keep the file moving.
“On balance, given the Court’s mission to adjudicate disputes brought before it and given the rules of proportionality, the Court concludes that service by postal channels should be authorized,” Justice Davis wrote. “In the Court’s view, Apple will not suffer any significant prejudice if the Court authorizes Mr. Surin to serve his Originating Application by postal channels in the United States, notwithstanding the expiry more than three months since its filing. This happens somewhat regularly in class action proceedings where international service is required.”
“Moreover, there does not appear to be any bar to Mr. Surin refiling his application in the event that the Court were to dismiss the current one. This may be all the more the case given that the Apple trademark, according to the documents that Apple has filed, specifically trademark application number 1810389, was only registered on April 8, 2021, although the application had been filed on November 11, 2016,” the judge added.
The case is not Surin’s first dispute with a large multinational over his intellectual property: back in 2017, he sued sports apparel manufacturer Puma in Quebec for trademark infringement over the company’s alleged unauthorized sale of running shoes bearing his name.
Puma failed in an attempt to have the case over its “Cell Surin” shoes dismissed for lack of jurisdiction because of its lack of connection to Quebec, before the parties reportedly settled the dispute the following year on confidential terms.
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