March 16 2017
Cascades wins battle at the Superior Court
Can a manufacturer of bathroom tissue have a monopoly on representations of small white furry animals? According to the recent Superior Court decision Irving Consumer Products Limited v. Cascades1, the answer is no.
On January 9 of this year, the Superior Court dismissed the demand to obtain a provisional injunction presented by Irving Consumer Products Limited (hereinafter “Irving”), which sought to prevent Cascades from relaunching its bathroom tissue by using the character FLUFF, a cartoon-style rabbit with oversized green eyes. For many years, Irving has been manufacturing bathroom tissue under the ROYALE brand with adorable blue-eyed white Persian kittens. According to Irving, Cascades’ planned use of the FLUFF character on bathroom tissue was likely to cause confusion with Irving’s brands associated with the ROYALE kittens. Trademark applications for several representations of FLUFF the rabbit as well as for the mark CASCADES FLUFF had been filed by Cascades.
The Court noted that many sellers of bathroom tissue currently use the colour blue and white furry animals to promote their products. These elements are in no way exclusive to Irving.
Furthermore, the Court gave little weight to the report of the plaintiff’s expert, stating that the confusion test proposed by the expert was an oversimplification of the confusion test set out by the Supreme Court in the Masterpiece decision2. After taking into consideration the criteria of section 6(5) of the Trade-marks Act, the Court concluded that the average consumer should be able to distinguish between two blue-eyed kittens and a furry creature with large green eyes, i.e. the character FLUFF created by Cascades. Since the ROYALE kittens are already well-known to the consumers, confusion is therefore less likely. The Court also noted that the CASCADES and ROYALE trademarks are always clearly visible on the packaging, which reduces further any risk of confusion.
When analysing the passing off issue, the Court rejected the argument, stating that packaging with white furry animals is not unique and, in any case, Cascades’ new packaging is sufficiently different from Irving’s to avoid any risk of confusion.
As a reminder, four criteria must be met to obtain a provisional injunction: urgency, appearance of right, serious or irreparable harm and balance of convenience favouring granting of the injunction.
Regarding the matter of urgency, the Court pointed out that Irving had waited almost a month before serving its procedure. A first demand letter was sent to the defendant on November 28, 2016, to which Cascades answered on December 8, 2016. However, Irving presented its request for an injunction only on January 5, 2017. Under these circumstances, the delay between Cascades’ response and Irving’s procedure was excessive in the Court’s opinion. Regarding the balance of convenience, the Court concluded that Cascades would have more to lose because it had invested considerable amounts in relaunching its bathroom tissue brand and the launch was imminent. The Court also ruled that Irving had failed to demonstrate that it would suffer irreparable harm. Any damage that Irving might suffer between this judgement and any interlocutory or final judgment would be easily quantifiable and, therefore, not irreparable. For all these reasons, the demand to obtain a provisional injunction was dismissed.
Lessons to Be Learned
Aside from the issue of confusion, this ruling shows how difficult it can be to obtain a provisional injunction in trademark cases. Establishing irreparable harm and proving urgency are often the most difficult steps for a plaintiff. On the question of urgency, this decision is also a reminder of the importance to act quickly when one believes that intellectual property rights are being violated.
1Irving Consumer Products Limited v. Cascades Canada, 2017 QCCS 526.
2Masterpiece Inc. v. Alavida Lifestyles Inc., 2011, 2 S.C.R. 387.