The Federal Court of Appeal has upheld an interlocutory injunction awarded in a trademark proceeding (2015 FC 215, unreported), with a small variance to provide 30 days to comply, rather than forthwith. The injunction prohibits Jamieson from using the word OMEGARED and mandates the recall of products and other materials that would offend the terms of the prohibition.
Reckitt owns and licences the mark MEGARED for supplements containing omega-3 fatty acids. Jamieson now markets omega-3 fatty acid products under the name OMEGARED, following a rebranding in January 2013 when the products were called SUPER KRILL.
The Appeal Court summarized the Federal Court decision. All the elements of the tripartite test from RJR-McDonald v. Canada (Attorney General),  1. S.C.R. 311 were found to be present:
- A serious issue to be tried – finding that Jamieson had undertaken its rebranding effort with the dominant purpose of frustrating Reckitt’s entry into the Canadian market.
- Irreparable harm – finding that Reckitt’s damages in the event of success in the underlying action would be impossible to calculate, given that Reckitt would never have had the chance to operate its business in the absence of Jamieson’s infringing behavior. Also finding loss of goodwill and quality concerns among customers.
- Balance of convenience – finding that Jamieson had proceeded with its rebranding activity “eyes wide open” to the possibility of legal action by Reckitt.
Although the Court of Appeal found that the motions Judge delved too far into the merits of the case, this was not fatal to the decision. On balance, the decision was upheld and only the procedural matter of its implementation was varied.