Bunny Brand Has Its Day in Court

On October 29, 2018, in Energizer Brands, LLC v The Gillette Company, 2018 FC 1003, the Court granted in part The Gillette Company (Duracell)’s motion to strike certain allegations from Energizer’s Statement of Claim.

Energizer alleged that Duracell’s use of the terms “the next leading competitive brand” and “the bunny brand” was contrary to subsections 22(1), 7(a) and 7(d) of the Trade-marks Act.  Duracell brought a motion for summary judgment to strike Energizer’s claims in relation to Duracell’s use of the terms “the next leading competitive brand” and “the bunny brand”.

Applying the decision in Veuve Clicquot Ponsardin v. Boutiques Cliquot Ltée (2006 SCC 23), the Court held that subsection 22(1) applies to Duracell’s use of “the bunny brand” because the term creates a mental association in the mind of a consumer.  However, the Court was not persuaded that a consumer would associate Duracell’s use of “the next leading competitive brand” with the Energizer trademarks.

The Court found that subsections 7(a) and 7(d) of the Act apply to Duracell’s use of “the bunny brand” since the term “is nourished by sufficient trademark or “intellectual property” interest”.  However, the Court ruled that “the next leading competitive brand” was not supported by sufficient trademark interest.

The Court granted the motion in part, ruling that Duracell’s use of “the bunny brand” may offend sections 22, 7(a), and 7(d) of the Act, and so will not be struck from the pleadings.  However, the Court struck Energizer’s claim dealing with Duracell’s use of “the next leading competitive brand”.

Summary By: Michelle Noonan