T-9104-82
Source Perrier (Societe anonyme) (Plaintiff)
v.
Fira-Less Marketing Co. Limited (Defendant)
Trial Division, Dubé J.—Toronto, December 6,
1982; Ottawa, January 5, 1983.
Trade marks — Infringement — Goodwill of mark "Per-
rier" depreciated by sale of tap water under name "Pierre Eh!"
— Defendant's product sold as political satire — Intention to
compete denied — Public might suppose Perrier sanctioned
defendant's product — Interlocutory injunction granted —
Confusion of customers likely — Freedom of expression not
giving right to depreciate goodwill of registered trade mark —
Irreparable damages and balance of convenience tests met
Trade Marks Act, R.S.C. 1970, c. T-10, ss. 6(5)(e), 19, 20,
22(1) — Canadian Charter of Rights and Freedoms, being
Part I of the Constitution Act, 1982, Schedule B, Canada Act
1982, 1982, c. 11 (U.K.), s. 2(b).
Constitutional law — Charter of Rights — Right to free
dom of expression not justifying depreciation of registered
trade mark's goodwill by sale of item intended as political
satire — Canadian Charter of Rights and Freedoms, being
Part I of the Constitution Act, 1982, Schedule B, Canada Act
1982, 1982, c. 11 (U.K.), s. 2(b).
The plaintiff, a French company, is the bottler and distribu
tor of spring water marketed under the name "Perrier". It seeks
an injunction to restrain a recently incorporated Ontario com
pany from advertising and distributing bottled water in associa
tion with the name "Pierre Eh!" in that the value of the
goodwill attaching to the plaintiffs trade mark is likely to be
depreciated by the defendant's conduct. The plaintiffs product,
sold in Canada since 1936, enjoys annual Canadian sales of
over fourteen million dollars. It was admitted that the defend
ant's tap water is being marketed as a form of political satire
directed at the Prime Minister and Government of Canada.
Any intention to compete with plaintiffs product is denied.
Indeed, the defendant's product contains a disclaimer that it is
not to be confused with that of the plaintiff. Plaintiffs concern
is that the public may not be amused by this satirization and
may suppose it to be sanctioned by Perrier.
Held, the motion should be allowed and an interlocutory
injunction granted. The plaintiff has established a prima facie
case of infringement. Confusion in the minds of customers was
likely in view of the degree of resemblance between the wares.
It was the general appearance of the product that mattered. To
the eyes of the ordinary purchaser, the "Pierre Eh!" bottle
resembles that of the plaintiff. More significant was the dilu-
tion of the quality of plaintiffs mark, the impairment of its
long-established business integrity and the injury to its goodwill
brought about by the deception perpetrated by the defendant.
The most liberal interpretation of freedom of expression, as
provided for in paragraph 2(b) of the Canadian Charter of
Rights and Freedoms, does not embrace the freedom to
depreciate the goodwill of registered trade marks, nor does it
afford a licence to impair the business integrity of the owner of
the marks merely to accommodate the creation of a spoof. The
tests of irreparable damages and balance of convenience, faced
by an applicant for an interlocutory injunction, had been met.
CASES JUDICIALLY CONSIDERED
APPLIED:
Clairol International Corp. et al. v. Thomas Supply &
Equipment Co. Ltd. et al. (1968), 55 C.P.R. 176 (Ex.
Ct.); Dallas Cowboys Cheerleaders, Inc. v. Pussycat
Cinema, Ltd., et al., 201 USPQ 740 (1979); The Coca-
Cola Company v. Gemini Rising, Inc., 175 USPQ 56
(1972).
NOT FOLLOWED:
Girl Scouts of the United States of America v. Personal
ity Posters Mfg. Co., Inc., 163 USPQ 505 (1969); Irving
Berlin et al. v. E. C. Publications, Inc., 329 F.2d 541
(1964).
COUNSEL:
I. Goldsmith, Q.C. and K. Murray for
plaintiff.
J. Little for defendant.
SOLICITORS:
I. Goldsmith, Q.C., Toronto, for plaintiff.
Holden, Murdoch, Finlay, Toronto, for
defendant.
The following are the reasons for order ren
dered in English by
DuBÉ J.: This motion is for an injunction
restraining the defendant from infringing the
exclusive rights of the plaintiff in any of its trade
marks, from using the marks in a manner likely to
depreciate the value of the goodwill attaching
thereto, from advertising, distributing and market
ing bottled water in association with the name
"Pierre Eh!" in bottles substantially similar to
those of the plaintiff's "Perrier" bottles, and from
distributing leaflets bearing the name "Pierre
Eh!".
The motion was heard at Toronto on December
6, 1982. Both parties were heard and the injunc
tion was granted from the bench. I outlined in
broad terms at the time the reasons behind my
decision and said that more comprehensive reasons
would be released later. These are the reasons.
The plaintiff (hereinafter "Perrier") is a French
company which carries on the business of bottler
and distributor throughout the world, including
Canada of a naturally sparkling spring water origi
nating from Vergeze, Gard, France, under the
name of "Perrier". Since 1936 Perrier has market
ed its product in Canada through various distribu
tors, in a distinctive green bottle, in association
with the trade name "Perrier" in a distinctive
typeface and with distinctive upper and lower
labels on its bottles. Since approximately 1975
Perrier has been marketed in Canada in bottles of
three sizes, 695 mL, 330mL, and 195 mL.
The trade name "Perrier", as well as the various
labels and the representation of the bottle, are
registered under six separate Canadian trade
marks and do enjoy, since the respective dates of
their registration, the exclusive right to the use of
the trade marks throughout Canada by virtue of
the provisions of section 19 of the Trade Marks
Act, R.S.C. 1970, c. T-10.
The trade marks have been extensively adver
tised in Canada since the early 1950's and even
more extensively since 1980 under a new local
distributor. The advertising and promotion
expenses for 1980 and 1981 were in excess of
$3,240,000 for Canada. The sales for the year
1981 were in excess of 14.8 million dollars in this
country. The product "Perrier" is undoubtedly
well known in Canada and the defendant does not
dispute its popularity.
The defendant is a recently—October 7, 1982—
incorporated Ontario company. Since incorpora
tion the defendant has been advertising, promoting
and selling in Canada a 750 mL bottle of ordinary
tap water in a green bottle bearing the name
"Pierre Eh!" in a typeface substantially similar to
that used by the plaintiff. The "Pierre Eh!" green
bottle sports upper and lower labels which at first
glance appear substantially identical to the "Per-
rier" labels while the small print is different.
Attached to the neck of the "Pierre Eh!" bottle is a
recipe leaflet titled "Pierre Eh!" in a typeface
substantially identical to that of Perrier's. The
wording appearing in small print on the upper and
lower labels, and in the leaflet, consists of what
purports to be humorous comments directed to the
present federal administration and the Prime
Minister.
In his statement of fact and law the defendant's
counsel readily admits that the "Pierre Eh!" prod
uct "is being marketed as a humorous political
spoof or satire directed at the Prime Minister and
Government of Canada". He argues that the
"Pierre Eh!" bottles are not being marketed in
competition with the Perrier product. His affidavit
evidence shows that the "Pierre Eh!" bottles are
sold in specially designed displays featuring a large
cardboard poster prominently displaying a carica
ture of the Prime Minister: in no retail outlet are
the "Pierre Eh!" bottles displayed in proximity to
the "Perrier" bottles. The defendant's product car
ries a suggested retail price of $4.95, whereas the
large "Perrier" bottle normally retails at $1 a
bottle.
Still according to the defendant's solicitor,
because of the distinguishing factors between the
two bottles—such as the shape of the "Pierre Eh!"
bottle which is straight sided, the gold cap on the
"Pierre Eh!" bottle (whereas the plaintiff's bottle
comes with a green top cap), the actual wording in
small print, the attached booklet—there can be no
confusion between the bottles, "particularly since
the Defendant's product clearly indicates it is mar
keted by the Defendant and contains a disclaimer
that it is not to be confused with the Plaintiff's
product".
On the other hand, the plaintiff's counsel argued
that the "Pierre Eh!" product not only causes
confusion, but is also likely to reflect adversely on
the Perrier reputation having regard to the fact
that the plaintiff is a French company and is in no
way involved in any political activities in Canada.
He fears, in particular, that members of the public
may well form the impression that Perrier has
sanctioned or condoned such political spoof, and
that there may well be members of the public who
do not regard it as amusing.
In my view, the plaintiff has established a prima
facie case of infringement by the defendant upon
the Perrier trade marks, which registered trade
marks are entitled to protection under the provi
sions of section 20 of the Trade Marks Act.'
Having regard to the degree of resemblance be
tween the wares, the defendant is likely to create
confusion in the minds of the customers. The
degree of resemblance to be considered under
paragraph 6(5)(e) of the Act 2 is not such a high
degree of resemblance as would withstand minute
and detailed scrutiny. To the eyes of the ordinary
purchaser, the "Pierre Eh!" bottle definitely
resembles the Perrier bottle. The size and colour of
the bottles, the positioning and colour of the yellow
labels on the bottles, the similar typeface of the
trade marks, and the similarity in appearance and
pronunciation of "Perrier" and "Pierre Eh!", are
not only likely to cause confusion but are obviously
1 20. The right of the owner of a registered trade mark to its
exclusive use shall be deemed to be infringed by a person not
entitled to its use under this Act who sells, distributes or
advertises wares or services in association with a confusing
trade mark or trade name, but no registration of a trade mark
prevents a person from making
(a) any bona fide use of his personal name as a trade name,
or
(b) any bona fide use, other than as a trade mark,
(i) of the geographical name of his place of business, or
(ii) of any accurate description of the character or quality
of his wares or services,
in such a manner as is not likely to have the effect of depreciat
ing the value of the goodwill attaching to the trade mark.
2 6....
(5) In determining whether trade marks or trade names are
confusing, the court or the Registrar, as the case may be, shall
have regard to all the surrounding circumstances including
(e) the degree of resemblance between the trade marks or
trade names in appearance or sound or in the ideas suggested
by them.
meant to cause confusion. Otherwise, the spoof
would not be a spoof. In such cases of obvious
imitation what imports is not the small print but
the general appearance of the product.
Of more significance, however, is that the
defendant is depreciating the value of the goodwill
attached to Perrier's marks contrary to the provi
sions of subsection 22(1) of the Act. 3 The fact that
the defendant intends to produce a spoof does not
take away from the deception created in the minds
of the customers. The defendant is clearly attempt
ing to cash in on the well-established reputation of
Perrier, and the deception, in my view, tends to
dilute the quality of its trade marks, to impair its
business integrity established over the years, and
to cause injury to its goodwill.
Undoubtedly, a customer approaching the
"Pierre Eh!" bottle and examining the labels will
discover the spoof, but confusion is not the test to
be used under section 22, "the test is the likelihood
of depreciating the value of the goodwill attaching
to the trade mark, a result which would not neces
sarily flow from deception and which might result
without deception being present". 4
The intention to create a spoof, as a defence to
infringement, was considered by American courts
in the three following cases.
In Girl Scouts of the United States of America
v. Personality Posters Mfg. Co., Inc., 5 the defend
ant distributed a poster exhibiting a pregnant smil
ing girl dressed in the Junior Girl Scouts' green
uniform, with her hands clasped over her protrud
ing abdomen. The words "BE PREPARED" com
pleted the portrait. The District Court, S.D. in
New York denied the motion for a preliminary
3 22. (1) No person shall use a trade mark registered by
another person in a manner likely to have the effect of
depreciating the value of the goodwill attaching thereto.
4 Clairol International Corp. et al. v. Thomas Supply &
Equipment Co. Ltd. et al. (1968), 55 C.P.R. 176 (Ex. Ct.), at
p. 195.
5 163 USPQ 505 (1969).
injunction and concluded as follows [at page 5101:
Those who may be amused at the poster presumably never
viewed the reputation of the plaintiff as being inviolable. Those
who are indignant obviously continue to respect it. Perhaps it is
because the reputation of the plaintiff is so secure against the
wry assault of the defendant that no such damage has been
demonstrated.
The Girl Scouts decision was referred to in
Dallas Cowboys Cheerleaders, Inc. v. Pussycat
Cinema, Ltd., et a1. 6 In that case the Cheerleaders
moved for a preliminary injunction to restrain the
production and exhibition of a motion picture en
titled "Debbie Does Dallas". The Court found that
the ninety-minute pornographic film featuring
titillating encounters between cheerleaders and
football players clearly intended to convey to the
viewer the impression that the plaintiffs were
involved. The District Court, S.D., New York held
that the obvious intent of the defendant "is to cash
in upon the favorable public image of the Dallas
Cheerleaders, including the image of a particular
quality of feminine beauty and character". The
Court added that "It is not difficult to conceive of
the possibility that the use of plaintiff's trade
marks by the makers of a movie would subtly
suggest that the movie is sponsored by plaintiff, or
that plaintiff's cheerleaders are performing in the
movie". The Court found that the movie in its
advertising created a "likelihood of confusing
members of the public as to the sponsorship of the
movie by the Dallas Cowboys Cheerleaders". It
concluded that the defendant wilfully misappro
priated plaintiff's trade names and trade marks
and that if "such activities are allowed to continue,
there will inevitably be a dilution, or whittling
down, of the reputation and good will associated
with plaintiff's names and marks". The prelim
inary injunction was issued.
The Girl Scouts decision was further considered
in The Coca-Cola Company v. Gemini Rising,
Inc.' by the District Court, E.D. New York where
6 201 USPQ 740 (1979).
7 175 USPQ 56 (1972).
Coca-Cola brought an action to enjoin the defend
ant from distributing a poster which consisted of
an exact blown-up reproduction of the Coca-Cola
trade mark, except for the substitution of the
script letters "ine" for "Cola", so that the poster
reads "Enjoy Cocaine". The Court granted the
preliminary injunction. In the course of its judg
ment it made the following comments which bear
reproduction. At page 60:
In this day of growing consumer resistance to advertising
gimmicks, a strong probability exists that some patrons of
Coca-Cola will be "turned off' rather than "turned on" by
defendant's so-called "spoof' with resulting immeasurable loss
to plaintiff. In such circumstances injunctive relief is the only
adequate remedy if the right to it exists.
The defendant submits that the plaintiff's right
to the protection of its trade marks must be
balanced with the defendant's rights to freedom of
opinion and expression and relies on paragraph
2(b) of the Canadian Charter of Rights and Free
doms, being Part I of the Constitution Act, 1982,
Schedule B, Canada Act 1982, 1982, c. 11(U.K.),
which provides:
2. Everyone has the following fundamental freedoms:
b) freedom of thought, belief, opinion and expression, includ
ing freedom of the press and other media of communication;
The defendant argues that parody and satire are
deserving of substantial freedom and that a finding
of infringement should not be made where the
satiric product does not fulfill and does not intend
to fulfill the demand for the original product and
where the parodist has not appropriated more from
the original product than is necessary to conjure
up the satire.
The defendant relies on another American deci
sion, Irving Berlin et al. v. E.C. Publications,
Inc., 8 an action for copyright infringement against
the publishers of Mad Magazine. It was alleged
that the defendants parodied the songs of the
plaintiffs. The Court held that the use of the
plaintiffs' works in the "broad-gauged" burlesques
fell far short of "substantial" takings. It held that
[at page 545] "as a general proposition, we believe
" 329 F.2d 541 (1964).
that parody and satire are deserving of substantial
freedom ... many a true word is indeed spoken in
jest".
In my view, the most liberal interpretation of
"freedom of expression" does not embrace the
freedom to depreciate the goodwill of registered
trade marks, nor does it afford a licence to impair
the business integrity of the owner of the marks
merely to accommodate the creation of a spoof. It
must be borne in mind that this application for an
injunction does not originate from the targets of
the parody—those in the political trade are expect
ed to be blessed with a broad sense of humour—
but from the owner of the trade marks.
It is trite law that an applicant for an interlocu
tory injunction must establish that his losses pend
ing trial could be irreparable. I find, on the basis
of the evidence filed, that the damage to the
reputation of the plaintiff would be most serious
and that the recently incorporated defendant com-
pany—not really in the business of marketing
sparkling water—would hardly be in a financial
position to pay any damages awarded against it.
Nor does the balance of convenience favour the
defendant: the plaintiff company, a genuine inter
national bottler, is clearly in a position to cover
whatever financial losses the defendant may have
sustained as a result of this injunction, if it turns
out that the plaintiff is not successful in this
action.
For all those reasons the injunction was granted
against the defendant until judgment.
You are being directed to the most recent version of the statute which may not be the version considered at the time of the judgment.