Duracell misuses Energizer bunny trademark

The Canadian Federal Court decided that Duracell can’t put Energizer battery trademarks on Duracell packages with a claim that the Duracell batteries last longer.

This was a case of comparative advertising. There was no suggestion that Duracell was trying to confuse consumers that the batteries were in any way connected to the Energizer brand.

This action was started in 2015, and went through a series of motions and appeals, resulting in a trial in early 2022.

Duracell’s stickers

Duracell put stickers on its battery packages with messages like “15% longer lasting vs Energizer…” The decision includes photographs of the various stickers and displays.

Energizer claimed those references were a trademark infringement, depreciated the value of Energizer’s goodwill in the brand, and were misleading under the Trademarks Act and the Competition Act.

The court decided that the inclusion of the Energizer trademarks on the stickers violated section 22 of the Trademarks Act and depreciated the value of the goodwill attached to the Energizer trademarks. The court awarded damages and ordered Duracell not to use the Energizer trademarks in that way.

Not all of the Duracell stickers contained Energizer trademarks. Some referred to them indirectly with messages like “up to 15% longer lasting vs. the next leading competitive brand”. Or “up to 20% longer lasting vs. the bunny brand…”

Energizer has a trademark registration for the Energizer Bunny image. The court found that Duracell’s references to “the bunny brand” did not violate Energizer’s trademark rights, even though “the bunny brand” clearly refers to the well-known Energizer Bunny. The decision said, “The Energizer Bunny is an iconic “spokes character.” It is a well-known, if not famous, trademark.”

The Bunny Brand

Regarding the reference to “the bunny brand”, the court said that to link that phrase to Energizer “…requires that the consumer take an extra mental step or steps when confronted with the indirect phrase “the bunny brand,” in contrast to the more direct trademarks, ENERGIZER and ENERGIZER MAX. First, the consumer would need to see the words “the bunny brand.” Second, the consumer would need to think of Energizer’s iconic spokes character. Then the consumer would need to remember that the word ENERGIZER is written on the bunny’s drum, thereby completing the link to an Energizer Trademark, or simply recall that a pink, bespectacled bunny with large feet and wearing a drum with ENERGIZER on it is a spokes character for, or trademark of, Energizer.”

In my view that could have gone the other way. It would not be unreasonable to take the position that the Energizer Bunny is a well-known famous mark, and most consumers seeing “the bunny brand” on battery packaging would immediately think of the Energizer Bunny and Energizer batteries.

On the misleading advertising claims, the court decided that based on the disclaimers on the stickers and the testing that Duracell had done, they were not misleading within the meaning of the law. Anyone interested in that aspect should read the decision.

Takeaways

• Don’t put a competitor’s trademark on your packaging, even for comparative advertising purposes.
• You may be able to get away with veiled references to your competitor for on-package comparisons.
• Be careful that the claims you make are not misleading and can be backed up with evidence. The test for misleading advertising is complex and nuanced.

David Canton is a business lawyer and trademark agent at Harrison Pensa with a practice focusing on technology, privacy law, technology companies and intellectual property. Connect with David on LinkedIn and Twitter.

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