2023 FC 804: Energizer Brands, LLC v. Gillette Company

On July 6, 2023, the Federal Court of Canada announced its decision in a trademark dispute between Energizer Brands and the Gillette Company in a case about comparative advertising.  In particular, this dispute involved Energizer and Duracell, the two leading battery brands in Canada. Moreover, Energizer asserted that Duracell’s use of Energizer’s trademarks in their advertising depreciated the value of these trademarks.

The Heart of the Matter

Specifically, Duracell’s battery packages had affixed labels that bore phrases that caught Energizer’s attention. Duracell claimed that their batteries were “15% LONGER LASTING vs. Energizer on size 10, 13, 312”.  Furthermore, they used the trademark Energizer Max on some labels and on other labels the phrases “the bunny brand” and “the next leading competitive brand.”

Legal Context

At issue is the Trademarks Act prohibits any use of a company’s trademark that can erode its goodwill or reputation. This comparative advertising posed a question that the Court needed to answer.

The Verdict

The Court concluded that Duracell had violated Energizer’s rights by employing Energizer’s trademarks on their labels. The court found that that the Energizer HA Sticker and the Energizer MAX AA Sticker are examples of an owner’s trademarks being bandied about resulting in lost control for the owner and lesser distinctiveness. On the other hand, the Court had a different view regarding the phrases “the bunny brand” and “the next leading competitive brand”. The court ruled that an average customer might not take note of these phrases and link them to the Energizer brand. Energizer achieved a partial ruling in its favor and the court issued a directive to Duracell to cease the use of Energizer’s trademarks and the labels carrying them. Energizer also received a damage award of $179,000.

Implications for Brands

This case underscores the importance for businesses to respect the trademarks of others and to not bandy about trademarks of competitors. Furthermore, it provides guidance on the care brands must exercise when making comparative claims in advertising.

Read the Court decision here.