Diageo Canada Inc. v. Heaven Hill Distilleries, Inc.

Diageo Canada Inc. v. Heaven Hill Distilleries, Inc.

The Court found that Heaven Hill's sale, distribution and advertising of ADMIRAL NELSON'S infringed Diageo's registered trade-marks, depreciated Diageo's goodwill and amounted to passing off; accordingly the Court granted declarations of liability, an injunction restraining specified activities, ordered delivery-up/destruction of infringing materials within 30 days, ordered an accounting and quantification of damages at a bifurcated hearing, awarded interest under the Federal Courts Act and costs to Diageo, and amended the earlier judgment under Rule 397 to clarify the application of declarations and remedies to Diamond Estates as stated.

Citation
2017 FC 624
Parties
Plaintiff / Defendant by Counterclaim: DIAGEO CANADA INC.; Defendant / Plaintiff by Counterclaim: HEAVEN HILL DISTILLERIES, INC.; Defendant / Plaintiff by Counterclaim: DIAMOND ESTATES WINES & SPIRITS LTD. d.b.a. KRISCOTT DISTRIBUTORS
Court
Federal Court
Jurisdiction
Canada
Judgment Date
27 June 2017
Procedural Posture
Trade Mark Infringement and Passing Off / Amended Judgment (rule 397 Amendment)
Outcome
Judgment for Diageo: declarations of trade-mark infringement, depreciation of goodwill and passing off against Heaven Hill; injunction and ancillary remedies granted; judgment amended under Rule 397 to clarify application to Diamond Estates.
Legal Topics
Infringement, Depreciation of Goodwill, Passing Off, Injunction and Delivery Up, Accounting and Quantification of Damages, Pre and Post Judgment Interest, Costs
Source Language
English
Trade Mark Law Passing Off Intellectual Property Injunctions Remedies Infringement Depreciation of Goodwill Injunction and Delivery Up +3 more

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Parties

DIAGEO CANADA INC.

Plaintiff / Defendant by Counterclaim

HEAVEN HILL DISTILLERIES, INC.

Defendant / Plaintiff by Counterclaim

DIAMOND ESTATES WINES & SPIRITS LTD. d.b.a. KRISCOTT DISTRIBUTORS

Defendant / Plaintiff by Counterclaim

Procedural Posture

Trade Mark Infringement and Passing Off / Amended Judgment (rule 397 Amendment)

Legal Issues

  1. 1 Whether Heaven Hill's sale, distribution and advertising of ADMIRAL NELSON'S infringed Diageo's trade-marks
  2. 2 Whether Heaven Hill's conduct depreciated the goodwill attaching to Diageo's CAPTAIN MORGAN trade-marks
  3. 3 Whether Heaven Hill passed off ADMIRAL NELSON'S products as CAPTAIN MORGAN products

Ratio Decidendi

The Court found that Heaven Hill's sale, distribution and advertising of ADMIRAL NELSON'S infringed Diageo's registered trade-marks, depreciated Diageo's goodwill and amounted to passing off; accordingly the Court granted declarations of liability, an injunction restraining specified activities, ordered delivery-up/destruction of infringing materials within 30 days, ordered an accounting and quantification of damages at a bifurcated hearing, awarded interest under the Federal Courts Act and costs to Diageo, and amended the earlier judgment under Rule 397 to clarify the application of declarations and remedies to Diamond Estates as stated.

Court Disposition

Judgment for Diageo: declarations of trade-mark infringement, depreciation of goodwill and passing off against Heaven Hill; injunction and ancillary remedies granted; judgment amended under Rule 397 to clarify application to Diamond Estates.

Orders

  • Declarations that Heaven Hill's sale, distribution and advertising in Canada of ADMIRAL NELSON'S infringe and depreciate the goodwill attaching to Diageo's Trade-mark Registration Nos. TMA298,005; TMA409,540; TMA445,025; TMA676,015; TMA676,119; TMA846,828; TMA846,829; TMA848,087; and TMA863,667.
  • Declaration that Heaven Hill has directed public attention so as to cause confusion between its wares/business and those of Diageo and has passed off ADMIRAL NELSON'S bottles as those of CAPTAIN MORGAN.