A recent decision of the Federal Court of Canada illustrates there are tactical advantages to combining claims for infringement and passing off to make it more difficult to attack the admissibly of survey evidence.

The Facts

Diageo Canada Inc. (Diageo) sued Heaven Hill Distilleries, Inc. (Heaven Hill). Diageo alleged that Heaven Hill infringed Diageo's trademarks associated with its CAPTAIN MORGAN rum products and that they passed off their ADMIRAL NELSON'S rum products as those of Diageo.

Diageo owns several registered trademarks relating to the CAPTAIN MORGAN character that it uses in association with its rum products. The depiction of the character is a fanciful depiction of Sir Henry Morgan, a 17th century privateer. The depiction has changed with the passage of time but the following depiction is representative of the registrations:

Diageo sells several varieties of CAPTAIN MORGAN rum, including Original Spiced Rum, 100 Proof Spiced Rum, Silver Spiced Rum, Gold Rum, Dark Rum, and White Rum. Each variety of CAPTAIN MORGAN rum bears a label containing a depiction of the character as shown below:

There has been substantial sales of these products for many years combined with significant advertising and promotion.

Heaven Hill

Heaven Hill is a US company that operates a private distillery. Heaven Hill sells and markets distilled spirits. Heaven Hill acquired the assets and business relating to the ADMIRAL NELSON'S brand of rum in July 2011. Heaven Hill revised the packaging of the ADMIRAL NELSON'S brand of rum. A representative label from 2013 is reproduced below:

Heaven Hill shipped ADMIRAL NELSON'S rum products with the revised packaging for sale in Alberta, New Brunswick and Nova Scotia. Relatively shortly thereafter Diageo caused a demand letter to be sent to Heaven Hill putting it on notice of its claims.

The Claim for Passing Off

Diageo asserted that the get up or trade dress associated with its CAPTAIN MORGAN rum products came within the scope of section 7(b) of the Trademarks Act. The subsection states that no person shall

(b) direct public attention to his goods... in such a way as to cause or be likely to cause confusion in Canada, at the time he commenced so to direct attention to them, between his goods... and the goods of another.

To succeed with this claim Diageo had to show there was confusion in the minds of the public as a likely consequence of the defendant's actions.

To prove its case Diageo relied upon, among other things, a consumer survey of 629 Canadian adults of legal drinking age, residing in four Canadian cities who had recently purchased a bottle rum. The survey was carried out by way of in person mall-intercepts in the four cities. Diageo's survey expert concluded there was statistically significant evidence that CAPTAIN MORGAN'S rum was spontaneously and almost exclusively brought to mind on viewing the ADMIRAL NELSON'S rum bottle. Among the ADMIRAL NELSON'S test group 21% of the individuals noted similarities between the respective rums.

The trial judge was satisfied based on this and other evidence that Diageo had established that Heaven Hill had breached subsection 7(b) of the Act. The judge also concluded after reviewing the evidence that Heaven Hill had infringed Diageo's registered trademarks.

Unlike a claim for passing which considers the public reaction to the defendant's trade dress the issue of infringement is decided from the viewpoint of a mythical or average purchaser. Because of this difference some judges in infringement actions have said that survey evidence is not helpful since they can personally determine how a mythical purchaser would react.


Since 2006 the admissibility of survey evidence in actions alleging trademark infringement has been in some doubt because of the approach set out above and because it has been emphasized that the courts must fulfil their gate keeper role to ensure that unnecessary survey evidence is not allowed to extend and complicate court proceedings.

On the other hand there are several decisions in the U.K. involving claims for passing off where survey evidence has been accepted because confusion in the minds of the public as a likely consequence of the defendant's actions is in issue.

There are tactical advantages to combining claims for infringement and passing off to avoid successful attacks on the admissibly of survey evidence.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.