On the same day as the ‘Barbie’
Decision (2 June 2006), the Supreme Court of Canada handed down its
decision Veuve Clicquot Ponsardin v. Boutiques Cliquot Ltée, 2006 SCC 23.
The Veuve Clicquot decision also deals with famous marks and has similar facts and the same result as the Barbie decision (see my article). This
time, the dispute was in relation to the well known ‘Veuve
Clicquot’ for luxury champagne and ‘Cliquot’ for
mid-priced women’s clothing.
In the Veuve Clicquot case, the Supreme Court also
dismissed an allegation made by Veuve Clicquot Ponsardin (pursuant to section
22 of the Canadian Trade Marks Act) that the fame of the Veuve Clicquot
mark for up-market luxury goods is such that associating the name Clicquot
with a mid-range women’s clothing store depreciates the value of
In essence, the Court held that the Appellant had failed to
establish that the respondents had made use of marks which were sufficiently
similar to evoke in a relevant universe of consumers a mental association of
the two marks that is likely to depreciate the value of the goodwill
attaching to the appellant’s mark.
This was essentially because the respondents never used the
appellant’s registered trade-mark as such and if the casual
consumer does not associate the marks displayed in the respondents’
store with the mark of the venerable champagne maker, there can be no impact
on the goodwill attached to the mark.