Powering-down Use Of Registered Trademarks In Comparative Advertising

Section 22 of the Canadian Trademarks Act prohibits the use of a registered trademark "in a manner that is likely to have the effect of depreciating the value of the goodwill attaching thereto".

The Federal Court recently released its long-awaited decision in Energizer Brands, LLC and Energizer Canada Inc. v The Gillette Company et al (2023 FC 804). Although Section 22 was enacted almost 70 years ago, this decision is one of a few cases that has engaged in a detailed review of the application of the Section 22 depreciation of goodwill provisions in the context of comparative advertisements.

Background Facts

In this action, Energizer sought damages against The Gillette Company and several of its affiliates (collectively "Duracell") for a comparative advertising campaign. As part of the campaign, Duracell sold batteries in packaging displaying stickers that included claims relating to the performance of Duracell's batteries as compared to those of Energizer.