S.C. Johnson & Son, Inc. v. Reckitt & Colman ( Overseas ) Ltd.
T-2397-94
Simpson J.
13/1/95
15 pp.
Application for interlocutory injunction -- Plaintiff and defendant launching air freshener products in North American market under names "Neutra-fresh" and "Neutra air" respectively -- Plaintiff buying rights and goodwill for "Neutra-fresh" mark in Canada from smaller company (Belmar) previously operating in Canadian market -- Plaintiff aborting Canadian launch of product due to U.S. interlocutory injunction obtained by defendant prohibiting plaintiff's American launch of product -- No legal impediment to plaintiff's use of mark in Canadian market -- Abortion of Canadian launch purely business decision resulting from U.S. injunction -- Basis for U.S. injunction questionable; appeal pending -- Plaintiff seeking injunction to protect "Neutra-fresh" mark from suffering loss of distinctiveness due to "Neutra air's" sole presence in Canadian market -- Plaintiff's decision to abort Canadian launch reasonable business decision thus not disentitling it to injunctive relief -- As injunction dispositive of litigation from both parties' perspective, "Woods exception" applicable and plaintiff must demonstrate prima facie case on merits -- Plaintiff having to establish, at time public attention first directed to defendant's product: (1) "Neutra-fresh" mark having reputation in mind of general public with respect to air fresheners; and, (2) "Neutra-fresh" recognized as distinctive of one source -- When trade mark not new and used in association with retail product, distinctiveness must be examined from perspective of retail purchaser -- Although plaintiff poised for entry and on brink of establishing significant reputation of "Neutra-fresh" mark, plaintiff's action not creating sufficient reputation for mark with public to support prima facie case for passing-off -- However, Belmar's "Neutra-fresh" air freshener actively promoted to public and achieving meaningful retail exposure thus "Neutra-fresh" distinctive of Belmar's air freshener and public viewing Belmar as sole supplier of product -- Necessary goodwill existing in "Neutra-fresh" mark and deception of public inevitable as two trade marks admittedly confusing -- As present owner of Belmar's rights in "Neutra-fresh" mark, plaintiff satisfying prima facie test for passing-off -- Plaintiff establishing irreparable harm necessary to support application -- Balance of convenience favouring plaintiff-Injunction granted.