COMPARATIVE ADVERTISING AND TRADEMARKS: ENERGIZER BRANDS, LLC v. GILLETTE COMPANY

2023-07-26

Caroline Jonnaert and Stéphanie Karam[1]
ROBIC, L.L.P.

Comparative advertising is a widespread commercial practice in the sale of goods and services. It essentially consists of comparing a company’s product or service with those of one or more competitors, highlighting the advantages of the company’s product or service[2]. Although comparative advertising is a tolerated practice in Canada, it must nevertheless comply with certain rules[3], in addition to not infringing the intellectual property rights of the competitor company being advertised. The Energizer Brands, LLC v. Gillette Company case illustrates this principle.

This federal court case involved labels on packaging of Duracell brand batteries claiming that they were “15% more durable than Energizer batteries”. Other labels displayed the registered trademark ENERGIZER MAX, as well as the expressions “the bunny brand” and “the next leading competitive brand”. In this context, Energizer claimed infringement of its trademarks, and more specifically of section 22 of the Trademarks Act[4] (the “Act“).

Comparative advertising and trademarks

Section 22 of the Act provides that no person shall use a trademark registered by another person in a manner likely to diminish the value of the goodwill attached to that mark[5]. To demonstrate a violation of this proceeding, the plaintiff must prove, on a balance of probabilities, that: (1) its registered mark is being used by the defendant; (2) goodwill is attached to its mark; (3) its mark has been used in a manner likely to have an impact on that goodwill; and (4) that impact is likely to be the diminution of the value of the goodwill[6].

In this case, the Court ruled in favor of Energizer for the labels bearing the registered trademarks ENERGIZER and ENERGIZER MAX. With regard to these labels, the four (4) required elements were in fact met: (1) there was no doubt that Duracell was in fact using the Energizer marks, although not as a mark to distinguish its goods[7]; (2) the Energizer marks were sufficiently well known and enjoyed a sufficient degree of goodwill attached to them; (3) the probable linkage between Duracell’s use of the Energizer mark and the effect on that goodwill was well present; and (4) the likelihood of depreciation of goodwill was demonstrated. The Court considered that Duracell’s use of the ENERGIZER and ENERGIZER MAX marks diluted their value, making them less distinctive and potentially causing them to lose goodwill[8].

On the other hand, evidence of consumer reaction to other labels mentioning “the bunny brand” and “the next leading competitive brand” was not considered sufficient to meet the third criterion. The expression “the bunny brand” in fact requires an additional effort on the part of the consumer to establish this linkage[9]. The context in which the labels were used by Duracell was an important part of the analysis, since the Court determined that the positioning and size of these expressions made it unlikely that the average consumer in a hurry would stop long enough to read the label and associate the reference to the “bunny brand” (written in very small type) with that of Energizer[10]. On the other hand, the expression “the next leading competitive brand” did not create an obvious linkage in the consumer’s mind[11]. Indeed, the Court held that the evidence was not sufficiently convincing to determine that the average consumer would have been persuaded to change his or her consumption habits by the display of these two labels.

Although Energizer had not demonstrated any losses directly caused by Duracell’s[12] use of the labels in question, the Court nevertheless awarded damages of $179,000 and a permanent injunction against the Gillette Company[13].

Key takeaways

This decision shows that the Federal Court evaluates a potential violation of section 22 of the Act in the context of comparative advertising according, among other things, to its context. The extent of use of a competitor’s registered trademark, the size of the typeface used, the positioning of the packaging on a shelf, or even the use of terms that relativize the company’s claims can all affect the assessment.

If you have any questions about comparative advertising or any other advertising initiative, please do not hesitate to contact the members of our Advertising & Marketing Law and Regulatory Affairs teams.


© CIPS, 2023.

[1] Caroline Jonnaert is a lawyer, trademark agent and partner, and Stéphanie Karam is a lawyer at ROBIC, L.L.P., an intellectual property full-services firm composed of lawyers, patent and trademark agents. They would like to thank Charles-Étienne Ostiguy for his contribution to the writing of this article.

[2] For further details, consult: Advertising Standards Canada, “Guidelines for Comparative Advertising”, (2012), online: guidelinesCompAdvertising-en.pdf (adstandards.ca)

[3] See in particular: Competition Act, R.S.C. (1985), c. C-34 and “Comparative Advertising Guidelines”, supra note 2.

[4] Energizer Brands, LLC v. Gillette Company, (2023) CF 804, par. 143 and 144.

[5] Trademarks Act, R.S.C. (1985), c. T-13, s. 22.

[6] Veuve Clicquot Ponsardin v. Boutiques Cliquot Ltée, 2006 SCC 23.

[7] Clairol International Corp. et al v. Thomas Supply and Equipment Co. et al, 1968 CanLII 1280 (CA EXC), 2 Ex CR 552, p. 570.

[8] Energizer v. Gillette, supra note 4, (2023) CF 804, par. 143 and 144.

[9] Id. at par. 156.

[10] Id. at par. 155.

[11] Id. at par. 161.

[12] Id. at par. 243.

[13] Id. at par. 262.