For the first time in more than 15 years the Federal Court of
Appeal has upheld an interlocutory injunction in a trademark
infringement case, significantly modifying the stringent test for
On April 23, 2015, the Federal Court of Appeal in Reckitt
Benckiser LLC et. al v. Jamieson Laboratories Ltd. 2015 FC 215
upheld the decision of the Federal Court which issued an
interlocutory injunction prohibiting the Defendant Jamieson
Laboratories Ltd. ("Jamieson") from using its offending
trademark pending trial. The Court order also requires Jamieson to
recall the products from stores across Canada, and destroy all of
its product and marketing material which bear the offending
The Plaintiff Reckitt Benckiser LLC ("Reckitt
Benckiser") is the owner of the MEGARED registered trademark
for use in association with certain dietary and nutritional
supplements, including omega-3 fatty acids and antioxidants. The
MEGARED product is an oral dietary supplement containing krill oil
as the active omega-3 ingredient.
In 2012 Reckitt Benckiser decided to enter the North American
market and engaged in discussions with Schiff Nutrition
International, Inc. ("Schiff"), who owned the MEGARED
product and trademark at the time. Reckitt Benckiser also entered
discussions with the Defendant Jamieson which had been offering a
successful krill-based omega-3 product called SUPER KRILL.
Ultimately, Reckitt Benckiser's discussions with Jamieson broke
down and Reckitt Benckiser instead acquired Schiff's MEGARED
product and trademark.
Just prior to Reckitt Benckiser's launch of its MEGARED
product in Canada Jamieson rebranded its existing SUPER KRILL
product as OMEGARED and launched a massive advertising campaign for
Reckitt Benckiser brought an action for trademark infringement
together with a motion for an interlocutory injunction. In granting
the injunction the Federal Court considered the well established
test which requires that a plaintiff establish:
a serious issue to be tried on the merits of the case;
that the moving party will suffer irreparable harm if the
motion is refused; and
that the balance of convenience favours the granting of the
The hurdle that most parties face in seeking an interlocutory
injunction is demonstrating irreparable harm, which Canadian courts
have defined as harm which is not compensable in monetary terms.
The Federal Court has consistently applied a high standard,
requiring the moving party to show on the basis of clear evidence
that harm will
result should the injunction not be granted. Speculation is not
The Federal Court has now acknowledged that where there is no
methodology to calculate the loss caused by a party's actions,
the harm is irreparable. The Court found that there would be
irreparable harm to the Plaintiff because it would be impossible to
ascertain Reckitt Benckiser's pre-launch market as compared to
its after-launch market since Reckitt Benckiser had been denied the
opportunity to enter the market with the exclusive rights to which
it was entitled.
Notable for trademark owners, the Court also held that where use
of a confusing trademark will cause the plaintiff's trademark
to lose its distinctiveness, the damage to the goodwill and value
of the trademark is impossible to calculate in monetary terms. The
Court found that had Reckitt Benckiser been required to wait until
trial, the MEGARED trademark would lose all distinctiveness in the
The Court also found that the balance of convenience favoured
the granting of the injunction even though the Defendant was
required to retrieve thousands of products from retailers.
Factors that the Court considered in granting the injunction
The visual and phonetic similarity between the MEGARED and
The identical nature of the products and channels of
The similarity between the parties' respective packaging
and that this was a departure from the Defendant's previous
Evidence of instances of actual confusion in the Canadian
The Defendant's specific knowledge of the Plaintiff's
trademark and of the Plaintiff's plans to enter the Canadian
marketplace which the Court characterized as "eyes wide
The timing of the Defendant's decision to sell its OMEGARED
This case is significant in that the Court recognizes that
damage to goodwill can constitute irreparable harm, and it signals
the Federal Court's new willingness to issue an interlocutory
injunction in appropriate circumstances to prevent further damage
to a brand owner's trademark pending trial.
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guide to the subject matter. Specialist advice should be sought
about your specific circumstances.
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