In a recent decision issued by the Federal Court of Canada, Mr. Justice McHaffie found that use of the trademark or tradename HERBS R US has the effect of depreciating the value of the goodwill attaching to the registered trademark .
Herbs “R” Us Wellness Society, a Vancouver cannabis dispensary, used the trademark and tradename HERBS R US in relation to cannabis products and cannabis-related accessories and the retail of such goods. Toys “R” Us (Canada) Ltd. owns a trademark registration for the logo .
Toys “R” Us sought to enforce its registered trademark against Herbs “R” Us and brought an application in Federal Court for infringement under section 20 of the Trademarks Act, passing off under subsection 7(b) of the Trademarks Act, and a likely depreciation of goodwill under section 22 of the Trademarks Act. Herbs “R” Us did not respond to the application.
Despite finding that there is a high degree of resemblance between and the noticeable differences between the goods and services in relation to which the marks are used partially shifted the balance in favour of Herbs “R” Us. Mr. Justice McHaffie found that there is no trademark infringement under section 20 or passing off under subsection 7(b) of the Trademarks Act.
However, Mr. Justice McHaffie noted that “Even where there is no likelihood of confusion, there may be a likelihood of depreciation of the goodwill attaching to a registered trademark, contrary to section 22 of the Trademarks Act”.
After an analysis of the four elements for a claim under section 22 of the Trademarks Act, Mr. Justice McHaffie ruled that Herbs "R" Us Wellness Society has used Toys “R” Us registered trademark in a manner that depreciates the goodwill attached to it.