PC v. PC. Pampered Chef Succeeds In Trademark Infringement Battle: Smart & Biggar Prevails At Trial On Behalf Of Pampered Chef

On July 22, 2019, the Federal Court issued its decision in Loblaws Inc v Columbia Insurance Company, 2019 FC 961. Pampered Chef, a Berkshire Hathaway company and a world-leader in the sale of premium kitchenware products, has succeeded at trial in defending trademark infringement, passing off, and dilution/depreciation of goodwill claims brought by Canada's largest retailer, Loblaws, in relation to its use of a trademark that includes the letters “P”/“C”.

Pampered Chef was successfully represented by Mark Evans, Mark Biernacki, Steven Garland and Graham Hood.

Background

In the 1980s, Loblaws launched its private label brand, President's Choice, and the companion brand PC, in connection with food and grocery products. Over time, Loblaws' use of the PC mark expanded into a range of products and services, including PC branded kitchenware and houseware products, a PC reward incentive program, PC insurance services, PC financial services and PC travel-agency services.

Loblaws registered both the marks PC per se and the PC script logo below for a wide range of goods and services including kitchenware and houseware products:

Pampered Chef makes and sells high-quality kitchen tools. It primarily uses a direct sales model, through which its products are sold via in-home and online cooking and catalogue parties. Pampered Chef also sells its products through its own website, and its independent consultants also promote and sell Pampered Chef's products online, including through social media and by means of “virtual cooking parties”. In 2015, Pampered Chef updated its branding, adopting a family of marks that included the logos below:

Loblaws alleged that Pampered Chef's use of its Short-form Logos in connection with kitchenware products (such as shown below), infringed Loblaws' registered PC Marks, as well as constituted passing off and dilution/depreciation of goodwill.

Decision

The Federal Court dismissed all of the claims against Pampered Chef, finding that Loblaws had not established confusion between Pampered Chef's Short-form Logos and Loblaw's PC Marks.

In conducting its analysis, the Federal Court held that while Loblaws' PC Marks have little to no inherent distinctiveness, through extensive use, publicity, and sales in Canada, Loblaws' PC Marks had acquired substantial distinctiveness and, in the case of the PC Script Mark, fame.

In dismissing Loblaws' claim, the Court gave little weight to Loblaws' expert survey evidence finding it to be of...