Week 1
There were a number of interesting trademark
decisions during the past two years, which included the Federal Court granting
a rare interlocutory injunction, and providing more clarity regarding place of
origin under paragraph 12(1)(b) of the Trademarks Act, which led to the
issuance of a new practice notice by the Registrar.
Jamieson Laboratories Ltd v Reckitt Benckiser
LLC, 2015 FCA 104
Schiff Nutrition International owned the Canadian
mark, “MEGARED” which registered in March of 2011 in association with a line of
omega-3 products. The Canadian registration was based on Schiff’s U.S.
registration, and Schiff was yet to launch these goods in Canada. In 2012
Reckitt Benckiser wanted to enter the Canadian market and was in acquisition
talks with Schiff and Jamieson, and decided to acquire Schiff. In February
2013, Jamieson registered the mark “Omega Red” for “vitamins, minerals,
nutritional supplements and dietary supplements” and then launched the new
brand in June in Canadian stores. This launch prompted Reckitt to send two warning
letters, even though they had yet to launch their “MEGARED” brand in Canada.
In October 2014, Reckitt commenced an action to
enforce its trademark rights against Jamieson, which was followed soon after by
a motion for an interlocutory injunction. An interlocutory injunction is a
court order that forces or compels the other party to stop a certain act until
the issue at trial is decided. In a rare decision, the Federal Court granted
the injunction, which was upheld on appeal. A party seeking an interlocutory
injunction is required to satisfy the three part test set out in RJR -- MacDonald Inc. v. Canada (Attorney
General), [1994] 1 SCR 311: 1) a serious issue to be tried, 2) the party
seeking the injunction will suffer irreparable harm if the injunction is not
granted; and 3) the balance of convenience favours the party seeking the
injunction.
The Federal Court of Appeal held irreparable harm
would occur if the interlocutory injunction was not granted because Reckitt
would never have opportunity to the market its MEGARED line of goods in the
absence of Jamieson’s infringing behaviour. Loss of distinctiveness and
confusion with Reckitt’s MEGARED mark were also cited as additional reasons.
MC Imports Inc. v. AFOD Ltd., 2016
FCA 60.
MC
Imports Inc imports and sells food products under the trademark Lingayen.
Lingayen is also a municipality in the Philippines known for shrimp paste
products characterised by their aroma and flavour. MC Imports commenced an action
against AFOD alleging infringement its trademark. AFOD imports and sells shrimp
paste products and other fish paste products. AFOD’s imported products included
49 cases of bagoong alamang, a type of fish sauce, and 49 cases of bagoong
guisado. The labels from these products were marked with the AFOD’s trademark
Napakasarap, which also included the words “Lingayen Style” in smaller script,
immediately below the trade-mark.
At
trial, MC Import’s mark was held to be invalid.
The Judge found that since the goods did originate from Lingayen, the mark
was clearly descriptive of the product’s place of origin and the perspective of
the ordinary consumer was not relevant.
The
decision was upheld on appeal. The Federal Court of Appeal held if a trademark
is a geographic name that refers to the actual place of origin of the goods or
services with which the trade-mark is associated, it is clearly descriptive of
place of origin within the meaning of paragraph 12(1)(b) of the Act. The Court
noted that it should remain open to all businesses to describe the origin of
what they are selling, even if the ordinary consumer may not be previously
familiar with that place.
