Advocacy Matters - Summer 2020

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mark that is sufficiently similar to the registered
trademark to evoke a mental association of the
two marks, (2) the registered trademark is sufficiently
well known to have significant goodwill,
(3) the respondent’s mark has been used in a
manner likely to have an effect on that goodwill,
and (4) the likely effect would be to depreciate
its goodwill. Toys “R” Us established each
of those four elements.
The strong resemblance between HERBS “R”
US and TOYS “R” US was held to be sufficient
to evoke a mental association between the
marks. The TOYS “R” US mark was sufficiently
well known in Canada to have significant goodwill
associated with it. The court concluded that
it could infer the existence of a linkage in the
mind of a consumer from the marked similarities
between the marks combined with the evidence
of extensive use, sales, and advertising
associated with the TOYS “R” US mark.
With respect to depreciation, the courts have
recognized that it can come through disparagement,
from the reduction of distinctiveness
resulting from a mark being “bandied about
by different users,” through the blurring of
brand images, or from a “whittling away” of
the brand’s power to distinguish the owner’s
products. Justice McHaffie concluded that the
use of the HERBS “R” US trademark amounted
to “another trader ‘bandying the mark about’
in a fashion that reduces the distinctiveness”
of the TOYS “R” US mark, and “’whittles away’
at the brand’s power to distinguish Toys “R”
Us’ products.” The creation of an association
between a cannabis dispensary and the Toys
“R” Us brand was likely to “tarnish the goodwill
associated” with the TOYS “R” US trademark.
Further, “there was no reason for Herbs “R” Us
to adopt and use the HERBS “R” US trademark
other than to trade off the goodwill and reputation
established by Toys “R” Us, and that this
points to a finding of depreciation.”
The court granted an injunction against the
use of the HERBS “R” US trademark in any form
and delivery up or destruction of goods, packaging
and advertising material that bears the
HERBS “R” US trademark in any form. The court
assessed nominal damages of $15,000.
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Wednesday, September 30, 2020
1:00 pm - 4:00 pm ET
Live Online
You negotiate every day and yet most negotiate instinctively or
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To learn more or register visit
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A joint presentation with the
Law Society of Ontario.