Much Ado About Krill Pills

Reckitt Benckiser v. Jamieson

Much Ado About Krill Pills

The Federal Court of Appeal, in Reckitt Benckiser LLC v. Jamieson Laboratories Ltd., 2015 FCA 104, recently affirmed a decision of the Federal Court granting an interlocutory injunction against infringement of a registered trademark. The decision may serve as an important benchmark for plaintiffs seeking interlocutory relief in trademark disputes.

Reckitt concerned an action by Reckitt Benckiser LLC and Reckitt Benckiser (Canada Limited) (collectively, “Reckitt”) against Jamieson Laboratories Ltd. (“Jamieson”), for infringement of the registered trademark MEGARED. The MEGARED trademark was registered in association with dietary and nutritional supplements, and was used by Reckitt in connection with a line of krill oil-based fatty acid supplements. Jamieson sold a line of krill and fish oil-based fatty acid supplements under the unregistered trademark “Omega RED.”

Reckitt brought an action for trademark infringement and passing-off, and moved for an interlocutory injunction. The motion judge applied the classic tripartite test from RJR-MacDonald v. Canada. As with most cases involving interlocutory relief, the decision turned principally on the issue of irreparable harm. On that issue, the court found that if Jamieson’s activities were not enjoined, the Plaintiffs would lose distinctiveness in the MEGARED trademark due to use of the confusing trademark “Omega RED,” and that the resulting loss of goodwill would be irreparable. Having also found in Reckitt’s favour on the other two stages of the RJR-MacDonald test, the injunction was granted.

The decision below may represent a departure from previous Federal Court jurisprudence. In Centre Ice Ltd. v. National Hockey League (1994), 53 CPR (3d) 34 (“Centre Ice”), the Federal Court of Appeal held that neither the loss of goodwill nor the existence of confusion, by itself, is sufficient to make out irreparable harm. Moreover, the Federal Court has regularly held that a moving party must provide “clear and not speculative” evidence that it would, in fact, suffer irreparable harm.

On appeal, in a judgment authored by The Honourable Chief Justice Noël, the motion judge was rebuked for delving too deeply into the merits of the case at the “serious issue to be tried” stage, but the decision below was affirmed (save for a variation to the implementation of the Order). Jamieson relied heavily on Centre Ice in its appeal, arguing that Reckitt should be required to show “clear and not speculative” evidence of irreparable harm. But the Court of Appeal found that Reckitt should not be required to produce evidence of lost sales or price reductions because Jamieson entered the market first. The motion judge’s conclusions on loss of goodwill and irreparable harm were upheld.

Reckitt is noteworthy for brand-owners, as it may suggest a changing of the tides in Federal Court jurisprudence with respect to the court’s willingness to grant injunctive relief in appropriate trademark cases. The decision is also noteworthy for lawyers in British Columbia. Plaintiffs seeking interlocutory relief in trademark cases have in many cases chosen to pursue their disputes in British Columbia, as the threshold for proving irreparable harm has arguably been lower than the Federal Court standard reflected in decisions such as Centre Ice (consider, e.g., the recent decision in Woodpecker Hardwood Floors (2000) Inc. v. Wiston International Trade Co., Ltd., 2013 BCCA 553). After Reckitt, plaintiffs may be more willing to pursue interlocutory relief in the Federal Court, and other jurisdictional and procedural considerations may weigh more heavily in advising clients on their choice of forum.