PC V. PC: Pampered Chef Succeeds Once Again In Trademark Infringement Battle: Smart & Biggar Prevails In Dismissal By Federal Court Of Appeal

• Published date: 19 February 2021
• Subject Matter: Intellectual Property, Litigation, Mediation & Arbitration, Trademark, Trials & Appeals & Compensation
• Law Firm: Smart & Biggar
• Author: Mr Noelle Engle-Hardy

On February 15, 2021, the Federal Court of Appeal issued its decision dismissing an appeal from the Federal Court's trial decision in Loblaws Inc v Columbia Insurance Company, 2019 FC 961. As previously reported, Pampered Chef, a Berkshire Hathaway company and a world leader in the sale of premium kitchenware products, successfully defended a claim for trademark infringement, passing off, and dilution/depreciation of goodwill brought by Canada's largest retailer, Loblaws Inc. ("Loblaws"), in relation to its use of a trademark that includes the letters "P"/"C". Pampered Chef was successfully represented before the Federal Court of Appeal by Mark Evans, Steven Garland, Graham Hood, Noelle Engle-Hardy.

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 (collectively, the "PC Marks") 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:

("Long-form Logo")

("Short-form Logos")

At trial, Loblaws alleged that Pampered Chef's use of its Short-form Logos with kitchenware products infringed Loblaws' registered rights in its PC Marks. Loblaws also argued that consumers who had never heard of Pampered Chef could first be exposed to its Short-form Logos without previously or simultaneously encountering Pampered Chef's name or Long-form Logo, leading those consumers to think, for a brief moment, that they were viewing a PC branded product produced by Loblaws.

Justice Southcott found that Loblaws' PC Marks and Pampered Chef's Short-form Logos bore some resemblance, and were used in the course of selling...