Federal Court of Appeal Affirms Order for Interlocutory Injunction in Trade-Mark Infringement Case

On April 23, 2015, the Canadian Federal Court of Appeal (the Court) released its decision in Jamieson Laboratories Ltd v Reckitt Benckiser LLC et al, 2015 FCA 104, affirming the decision of Justice Brown (2015 FC 215; previously reported in E-TIPS® Newsletter here) that granted Reckitt Benckisser LLC and Reckitt Benckisser (Canada) Ltd (together, Reckitt) an interlocutory injunction against Jamieson Laboratories Ltd (Jamieson) in a trade-mark infringement action between the parties. The interlocutory injunction prohibits Jamieson from selling its OMEGARED brand omega-3 supplements pending the outcome of the trade-mark infringement action brought by Reckitt based on its trade-mark registration for MEGARED (registered for use in conjunction with, among other things, omega-3-containing supplements). Jamieson had obtained a stay of the injunction pending the outcome of this appeal.

The Court considered the three-part legal test for granting an interlocutory injunction applied by Justice Brown:

• is there a serious issue to be tried?
• will irreparable harm result to the moving party if the relief is not granted?
• does the balance of convenience favour the moving party?

In the Court’s view, Justice Brown had delved too far into the merits of the case when evaluating whether a serious issue to be tried existed. However, the Court was satisfied that Justice Brown’s conclusion on this point had a sufficient basis nonetheless. The Court determined that Jamieson failed to refute Reckitt’s contention that irreparable harm would befall Reckitt if the injunction were not ordered. Finally, the Court rejected Jamieson’s argument that the balance of convenience should favour Jamieson, not Reckitt, because of the harm Jamieson would suffer if forced to revert to marketing its OMEGARED products under their previous name – “Super Krill”. The Court specifically noted that an undertaking made by Reckitt to cover damages associated with Jamieson reverting to the use of the Super Krill brand was unchallenged by Jamieson and sufficient to ensure Jamieson would be made whole in this circumstance.

Accordingly, the Court found no palpable and overriding error with Justice Brown’s application of the law and upheld the injunction, but varied it in order to provide Jamieson with a 30-day window to implement the order.