After eight years of litigation, a federal judge has issued a permanent injunction against Duracell Canada to prohibit its use of rival Energizer Canada’s trademarks.
“I conclude Energizer is entitled to a permanent injunction restraining Duracell from using the Energizer trademarks,” wrote Justice Janet Fuhrer of the Federal Court. Energizer was awarded $179,000 by the justice in damages and costs.
Energizer protested Duracell’s marketing of its battery packs claiming the product was “15 percent longer lasting versus Energizer.”
In their respective reports in court, both companies presented expert witnesses with differing opinions regarding which battery had a longer life, Blacklock’s Reporter said.
“I conclude Duracell has not made any false or misleading representations or statements,” wrote Ms. Fuhrer. However, use of a rival’s trademark name in comparative advertising did breach the Trademarks Act, the Court said.
“The plaintiff and defendant represent the leading battery brands in Canada and are each other’s biggest competitors,” wrote Ms. Fuhrer. “Together they supply more than two-thirds of the household consumer battery market in Canada. Duracell has the largest market share.”
Ms. Fuhrer said that using the name of Duracell’s competitor against them in order to claim product superiority resulted in “likely depreciation of goodwill” in the Energizer trademark.
“The evidence establishes the sticker campaign was aimed at increasing Duracell’s market share when it already was the market leader at the expense of the next leading competitor, Energizer.”
The Court said the “15 percent longer lasting” claim appeared without any disclaimer or qualification.
“Energizer asserts their examination of the testing data shows that the Energizer performance claim is untrue.”
“This is a case about comparative advertising,” wrote Ms. Fuhrer.
“In determining a case like this, the Court often is tasked with considering whether the challenged activity depreciates goodwill and unfairly trades on a claimant’s reputation through a competitor’s false or misleading statements about the claimant or their products, or whether the activity is permissible competition that does not violate the claimant’s intellectual property rights.”
The Court made it clear that the Trademarks Act was intended to protect the owners’ right to sell goods to “the average harried consumer” out shopping, who would be “someone who does not pause to give the matter any detailed consideration or scrutiny, if they pay any attention at all.”
Ms. Fuhrer pointed out that customers spend very little time assessing product information.
“Consumers take only seconds to absorb the information on packaging and labels in a retail setting, 12 to 25 seconds on average,” she said. “I am left applying my own common sense as a potential buyer of the goods.”
