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Energizer partially successful against Duracell in comparative advertising case

Last month, the Federal Court held that Duracell had used certain of Energizer’s trademarks in a manner that was likely to depreciate the value of the goodwill attached to those trademarks, in contravention of section 22 of the Trademarks Act.

Energizer owns registered trademarks for ENERGIZER, ENERGIZER MAX, RABBIT & Design, and ENERGIZER BUNNY & Design.

Between 2014 and 2017, Duracell affixed stickers to packages of its AA and hearing aid batteries. The stickers variously read “15% longer lasting vs. Energizer on size 10, 13, and 312” [Energizer HA Sticker], “Up to 20% longer lasting vs. the bunny brand on sizes 10, 13 & 312” [Bunny Brand HA Sticker]. “Up to 15% longer lasting vs. Energizer Max” [Energizer Max AA Sticker], and “up to 15% longer lasting vs. the next leading competitive brand” [Next Leading Competitive Brand Sticker].

Energizer was able to show likely depreciation of goodwill in its ENERGIZER and ENERGIZER MAX trademarks as a result of the Energizer HA Sticker and the Energizer Max AA Sticker. However, the Court determined that there was insufficient linkage between Energizer’s trademarks and the Bunny Brand HA Sticker and the Next Leading Competitive Brand Sticker to support a section 22 claim.  The Court further held that the performance claims of all of the stickers were not false or misleading and therefore did not contravene sections 7(a) and 7(d) of the Trademarks Act and section 52 of the Competition Act.

Energizer was awarded a permanent injunction restraining Duracell from using the Energizer HA Sticker, the Energizer Max AA Sticker and Energizer’s trademarks on battery packages, and $179,000 in damages.

The full decision is reported here.

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