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

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

The Court found that the identified paragraphs of the prior Judgment did not accord with the Reasons, removed those paragraphs, granted declarations of trade-mark infringement and associated injunctive and remedial relief against Heaven Hill (binding Diamond Estates unless modified), and allowed both parties a 30-day opportunity to file written submissions on costs limited to 20 pages, pursuant to the Federal Courts Rules and the Court's corrective authority under Rule 397.

Citation
2017 FC 738
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
28 July 2017
Procedural Posture
Trademark Infringement / Further Amended Judgment (post Trial) on Costs and Enforcement Remedies
Outcome
Further amended judgment granted in part; prior Judgment amended to remove inconsistent paragraphs and to permit written submissions on costs; declarations of trade-mark infringement and injunctions ordered; damages and quantification reserved.
Legal Topics
Trade Mark Registration, Goodwill Depreciation, Injunctions, Deliver Up/destruction, Accounting and Damages, Costs
Source Language
English
Intellectual Property Trademark Law Civil Procedure Trade Mark Registration Goodwill Depreciation Injunctions Deliver Up/destruction Accounting and Damages +1 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

Trademark Infringement / Further Amended Judgment (post Trial) on Costs and Enforcement Remedies

Legal Issues

  1. 1 Whether Heaven Hill's sale, distribution and advertising of ADMIRAL NELSON'S infringed Diageo's registered trade-marks and depreciated goodwill
  2. 2 Whether Diamond Estates is bound by the declarations against Heaven Hill
  3. 3 Whether paragraphs 3 and 5(d) of the prior Judgment should be removed to align the Judgment with the Reasons

Ratio Decidendi

The Court found that the identified paragraphs of the prior Judgment did not accord with the Reasons, removed those paragraphs, granted declarations of trade-mark infringement and associated injunctive and remedial relief against Heaven Hill (binding Diamond Estates unless modified), and allowed both parties a 30-day opportunity to file written submissions on costs limited to 20 pages, pursuant to the Federal Courts Rules and the Court's corrective authority under Rule 397.

Court Disposition

Further amended judgment granted in part; prior Judgment amended to remove inconsistent paragraphs and to permit written submissions on costs; declarations of trade-mark infringement and injunctions ordered; damages and quantification reserved.

Orders

  • Heaven Hill’s sale, distribution, and advertising in Canada of the ADMIRAL NELSON’S rum products 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.
  • Heaven Hill has directed public attention to its wares and business so as to cause confusion in Canada between its wares and business and the wares and business of Diageo in Canada.