The Fight Over Depreciation Of Goodwill In Canada Keeps Going And Going …

This article was originally published by the World Trademark Review  on March 25, 2020. It has been republished with permission.

While comparative advertising can be an effective tool for comparing and contrasting competing brands, there are limits on what claims can lawfully be made. One such limit is provided by Section 22 of the Trademarks Act, which prohibits use of "a trademark registered by another person in a manner that is likely to have the effect of depreciating the value of the goodwill attaching thereto."

The plain language of Section 22 of the Trademarks Act suggests that a claim for depreciation of goodwill may be limited to use of registered trademarks.  However, in Veuve Clicquot Ponsardin v Boutiques Cliquot Ltée, the Supreme Court of Canada found that such claims could extend to use of marks "sufficiently similar" to the registered mark to evoke in consumers a mental association of the two marks that is likely to depreciate the value of