Federal Court of Canada issues interlocutory injunction in trade-mark infringement case

On February 20, 2015, the Federal Court of Canada released the decision of Justice Brown in Reckitt Benckisser LLC v Jamieson Laboratories Ltd, 2015 FC 215, allowing a motion by the plaintiffs, Reckitt Benckisser LLC and Reckitt Benckisser (Canada) Ltd (together, Reckitt) for an order seeking an interlocutory injunction against the defendant, Jamieson Laboratories Ltd (Jamieson) in a trade-mark infringement action. Interlocutory injunctions have become increasingly rare in IP litigation before the Canadian Federal Courts, making the basis for successful motions worthy of note.

Reckitt and Jamieson both market natural health products containing omega-3 fatty acids in Canada. Reckitt markets their brand under the registered trade-mark MEGARED (registered 2011). Jamieson markets their brand under the unregistered trade-mark OMEGARED, which Reckitt has alleged is confusing with MEGARED. Jamieson’s OMEGARED brand entered the Canadian market first (summer of 2013) in a highly marketed re-branding of Jamieson’s already successful SUPER KRILL brand. Reckitt’s MEGARED brand, though popular in the US, did not enter the Canadian market until the end of 2013.

In order to secure an interlocutory injunction, the moving party must prove:

1. there is a serious issue to be tried;
2. irreparable harm would be suffered if the motion is refused; and
3. the balance of convenience favours the moving party.

(RJR MacDonald Inc v Canada (AG), [1994] 1 S.C.R. 311 at 347-349)

Justice Brown found a serious issue to be tried based on the legal merit of Reckitt’s confusion claim. He found that the evidence in support of confusion, including evidence of actual confusion in the marketplace, confirmed that irreparable harm would occur in a manner that was “clear and not speculative”. Finally, Justice Brown found that the balance of convenience favoured Reckitt after determining that Jamieson was aware of Reckitt’s registration and proceeded to market with their OMEGARED brand nonetheless.

Throughout his reasons, Justice Brown voiced substantial concern with Jamieson’s motivation for going to market with the OMEGARED brand. The nature of injunction as an equitable remedy adds an element of discretion that overlays the legal test, and may have played a role in this decision. Justice Brown found that “[w]hile Jamieson’s actions might have a genuine business purpose in another context, in my opinion that becomes much less relevant, and ultimately irrelevant, given [Jamieson’s main intent] […] to pre-emptively strike at the MEGARED mark, notwithstanding the Plaintiffs’ registered rights.”

Jamieson has filed a notice of appeal and the Federal Court of Appeal of Canada has stayed the injunction awarded by Justice Brown pending the outcome of the appeal.