Branding not only includes the development of a brand but also its protection.  The trademarks associated (or that will be associated) with a brand must be protected from unauthorized use as such unauthorized use could impact the brand in a number of ways.  For example, if lesser quality goods are sold under a trademark that is confusingly similar to yours, the unauthorized use could impact the goodwill associated with your already established brand or may affect your brand’s ability to build a loyal customer base.  At times, in order to stop the unauthorized use of a registered trademark, the owner of the trademark may need to commence court proceedings.

In trademark infringement cases, there are certain (rare) circumstances where it may be appropriate for the owner of a registered trademark to bring an application requesting that the court order an interlocutory injunction.  An interlocutory injunction is an order which occurs at an interim stage of a case and requires a person to do something or to stop doing something.  The owner of a registered trademark would ask the court to require an alleged infringer to refrain from the alleged infringing action until the case has been resolved – for example, a trademark owner may request that the court order the alleged infringer to cease using a confusingly similar logo until the court determines whether the alleged infringer’s behaviour is lawful.

This year, in the case of Reckitt Benckiser LLC v Jamieson Laboratories Ltd. (the “Reckitt Case”), the Federal Court was faced with the decision of whether or not to issue an interlocutory injunction.

Reckitt Benckiser LLC’s MEGARED trademark covered “dietary and nutritional supplements in capsule form containing (among other elements) omega-3 fatty acids, to be used to support cardiovascular health, healthy cholesterol levels and joint health”.  Jamieson attempted to sell OMEGARED for nearly identical purposes in the same market as MEGARED.  Both the OMEGARED and MEGARED product lines included products made from krill oil.  Reckitt’s MEGARED product line was exclusively krill oil-based, while Jamieson sold one product made with salmon oil under OMEGARED.

Reckitt Benckiser LLC (the owner of the registered Canadian trademark “MEGARED”) and Reckitt Benckiser (Canada) Limited (the licensee and sole Canadian distributor of MEGARED product; collectively, “Reckitt”) brought an application for an interlocutory injunction preventing Jamieson Laboratories Ltd. (“Jamieson”) from using the word “OMEGARED” in association with its products.

To obtain an injunction, the party seeking the injunction (in this case, Reckitt) must satisfy the following three part test:

1. the party must establish a serious issue to be tried on the merits of the case;

2. the party must demonstrate irreparable harm to him/her/it if the injunction is refused; and

3. the party must show that the balance of convenience favours granting the injunction.

In the Reckitt Case, the Federal Court was satisfied that there was a serious issue to be tried, finding that a serious issue arose as to trademark infringement and passing off.  Further, the Federal Court concluded that Jamieson undertook its rebranding effort with the purpose of interfering with Reckitt’s entry into the Canadian market.  (OMEGARED is the product which was previously known as “Super Krill”.  This change in branding was made despite Jamieson’s knowledge that Reckitt was in the process of bringing its MEGARED product into the Canadian market.)

The Federal Court also found that Reckitt would experience irreparable harm in the absence of an injunction.  First of all, since Reckitt would not have had the chance to operate its business in the absence of Jamieson’s infringing behaviour, it would be impossible to calculate Reckitt’s damages if Reckitt was successful in the underlying action.  Secondly, Jamieson’s infringing behaviour would cause Reckitt to lose goodwill due to a loss of distinctiveness of its MEGARED mark.  Finally, given that the product line Jamieson was selling under OMEGARED included a non-krill oil-based product, Jamieson’s use of OMEGARED could cause customers to develop quality concerns regarding Reckitt’s products.

Finally, the Federal Court found that the balance of convenience favoured Reckitt, noting that Jamieson was aware of Reckitt’s trademark registration and the possibility of legal action by Reckitt when it rebranded Super Krill.

The Federal Court ordered that Jamieson be forthwith prohibited from any and all use of the word “OMEGARED” or any other word or mark confusingly similar to “MEGARED” in association with Jamieson’s business and products until the Court rendered a final determination of the action.  Further, Jamieson was ordered to recall all OMEGARED documents, records, products, packaging, displays, advertisements, signs, whether in electronic form or otherwise.

Jamieson unsuccessfully appealed the Federal Court’s decision.  The Federal Court of Appeal dismissed Jamieson’s appeal, varying the Federal Court’s order so that Jamieson would be provided with 30 days to refrain from using “OMEGARED” (the order initially stated it is “forthwith” prohibited instead of providing a specific time period).

In this case, we see that an interlocutory injunction may be issued to protect a trademark owner’s brand pending trial.  However, despite Reckitt’s success, it is important to recognize that the Court’s willingness to exercise its discretion to issue an interlocutory injunction in this case does not mean the remedy is appropriate in all trademark infringement matters.

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