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Dimock Stratton’s Intellectual Property Law Newsletter | Interlocutory injunction

The Federal Court granted an interlocutory injunction to restrain the sale of essentially the same product into the same channels as the registered trademark.

Dimock Stratton’s Intellectual Property Law Newsletter

By: Dimock Stratton

Reckitt Benckiser LLC v. Jamieson Laboratories Ltd., 2015 FC 215, 2015 CarswellNat 1483 (F.C.).

I.2 — Trademarks — interlocutory injunction granted

Reckitt Benckiser LLC owned the registered trade-mark MEGARED and licensed it to its Canadian subsidiary. The MEGARED trade-mark was applied for in 2008 and registered in 2011, covering dietary and nutritional supplements in capsule form containing ingredients including omega-3 fatty acids.

The MEGARED mark was previously owned by Schiff Nutrition International, Inc., which was later acquired by Reckitt Benckiser. The MEGARED product was not sold directly in Canada until December 2013. However, the MEGARED products had been available to the Canadian market through various websites and, as a result of extensive advertising and promotion in the US, MEGARED had reached Canadians.

Reckitt Benckiser brought this application for an interlocutory injunction to restrain Jamieson from selling essentially the same product into the same channels under the unregistered name OMEGARED. Jamieson launched its OMEGARED product in January 2013, knowing of Reckitt Benckiser’s acquisition of Schiff and its trade-mark MEGARED, and knowing of Reckitt Benckiser’s interest in entering the Canadian market because Jamieson itself had also been a take-over target of Reckitt Benckiser. Previously, Jamieson marketed its product under the name SUPER KRILL. Indeed, Jamieson had received legal warning letters from Reckitt Benckiser regarding the use of OMEGARED.

The Court applied the tri-partite test and granted the interlocutory injunction.

With respect to whether there was a serious issue to be tried, the Court considered Jamieson’s motive for, and the timing of, its OMEGARED launch. Jamieson’s advertising campaign was not a coincidence. The real and dominant purpose of Jamieson’s massive marketing blitz for its OMEGARED product was to knowingly and pre-emptively strike out and frustrate the marketing efforts of Reckitt Benckiser. In addition, Jamieson’s decision to market OMEGARED and the manner it chose to do so gave rise to likely confusion and infringement of the MEGARED mark. Accordingly, there was a very serious issue to be tried.

With respect to irreparable harm, the Court held that where there is no methodology available to quantify loss arising from misconduct and loss arising from normal market competition, irreparable harm will be found. The Court further stated that “where use of a confusing mark will cause the Plaintiffs’ mark to lose its distinctiveness... such damage to goodwill and the value of the mark is impossible to calculate in monetary terms.” In this case, based on the evidence and the Court’s findings regarding confusion, there would be irreparable loss of goodwill and reputation in the MEGARED name if Jamieson’s conduct was not enjoined.

The balance of convenience also favoured Reckitt Benckiser since Reckitt Benckiser had every reason to expect and to enjoy the benefits of its statutory exclusivity and protection, and the compelling fact that its losses would be irreparable.

The Court also commented that Jamieson could not defeat a legitimate trade-mark holder simply by getting into the market earlier. Furthermore, there was no evidence before the Court that Jamieson could not re-market its product under its previous name SUPER KRILL.

The interlocutory injunction was upheld on appeal (Jamieson Laboratories Ltd. v. Reckitt Benckiser LLC (2015), 2015 CarswellNat 1437, 2015 FCA 104 (F.C.A.)).

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