Federal Court Decisions

Date: 20170627

Docket: T-740-14

Citation: 2017 FC 624

Ottawa, Ontario, June 27, 2017

PRESENT:  The Honourable Mr. Justice Boswell

AMENDED JUDGMENT

[1]  The Defendant/Plaintiff by Counterclaim, Diamond Estates Wines & Spirits Ltd., with the consent and agreement of both of the other parties to this proceeding, has requested in its letter of June 22, 2017, that the June 12, 2017 Judgment issued in this proceeding (citation 2017 FC 571) be amended so that the Judgment not be unintentionally interpreted in a manner requiring Diamond Estates to participate in any appeal or motion by Heaven Hills in order to take the benefit of a resultant decision. Specifically, Diamond Estates requests that paragraph 4 of the Judgment be amended as follows:

“Diamond Estates shall be bound by the three foregoing declarations unless they are reversed, set aside or otherwise modified.”

Diamond Estates also requests that paragraphs 5-8 of the Judgment be amended to remove any reference to Diamond Estates, and to add a new paragraph 9 which reads as follows:

“Paragraphs 5, 6, 7 and 8 shall also apply to Diamond Estates unless they are reversed, set aside or otherwise modified.”

[2]  Accordingly, it is hereby ordered pursuant to Rule 397 of the Federal Courts Rules that the Judgment issued with respect to this proceeding on June 12, 2017, is amended to now read as follows:

JUDGMENT

THIS COURT’S JUDGMENT is that:

1. HeavenHill’s sale, distribution, and advertisinginCanadaof theADMIRAL NELSON’S rum products infringeand depreciatethe goodwillattachingto 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.

2. HeavenHillhas directedpublic attention toits wares andbusinessso as to cause confusion in Canadabetweenits wares andbusiness and thewares andbusiness ofDiageo in Canada.

3. HeavenHillhas passed offthe ADMIRAL NELSON’S bottles asbeingthose of CAPTAIN MORGAN.

4. Diamond Estates shallbebound bythe three foregoingdeclarations unless they are reversed, set aside or otherwise modified.

5. HeavenHill, itsrespectiveofficers, directors, shareholders,employees,licensees, representatives, agents, and anypersonunder its authorityor control,and anycompany, partnership, business entityorperson with which it is associated or affiliated, isrestrained, prohibited and enjoined from, directlyor indirectly:

1. selling, distributing, importinginto Canada,exportingfrom Canada, offeringfor sale or advertisingin Canada, alcoholicbeverages in association with the ADMIRAL NELSON’S character or any other character which causes or is likely to cause confusion with, or which is likely to have the effect of depreciating the value of the goodwill attaching to, Diageo’sTrade-markRegistration Nos.: TMA298,005; TMA409,540; TMA445,025; TMA676,015; TMA676,119; TMA846,828;TMA846,829; TMA848,087; and TMA863,667;

2. selling, distributing, importinginto Canada,exportingfrom Canada, offeringfor sale or advertisingin Canada, alcoholicbeverages in association with theADMIRALNELSON’Sbottles or anyotherbottle that is likelytocauseconfusion with theCAPTAIN MORGAN bottles, individuallyor collectively;

3. directingpublicattention to its wares, services or business in such away as to cause orbelikelyto cause confusion in Canadabetween itswares, services or business and thewares, services or business ofDiageo; and

4. passingoff the ADMIRALNELSON’Srum productsas and for thoseofDiageo’s CAPTAIN MORGANrum products.

6. HeavenHill shall forthwith and, in anyevent, within 30 days of the date of this judgment, deliver-up to a representative of Diageo, or at Diageo’selection astatement of destruction under oath of,allADMIRAL NELSON’S bottles in its possession or controlin Canadawhich would offend the foregoinginjunction,and allmaterial ofanynature, including allpackages, labels, and advertisingmaterial, in its possession or control in Canada, theuse ofwhich would offend such injunction.

7. Heaven Hill shall submit to an accounting and pay to Diageo such damages as may be determined upon hearing of the Quantification Issues as stated and defined in the Court’s Bifurcation Order dated July 16, 2015.

8. HeavenHillshall payto Diageo pre-judgmentand post-judgment interest onanydamages asassessed inaccordancewith theBifurcation Orderdated July16, 2015, pursuant to sections 36 and 37 ofthe Federal Courts Act.

9. Paragraphs 5, 6, 7 and 8 shall also apply to Diamond Estates unless they are reversed, set aside or otherwise modified.

10. Diageo shall haveits costs of this action, including its disbursements and any applicable taxes,in suchamounts as maybeagreed to byHeaven Hilland Diageo.If theyareunableto agree as to the amount of such costsand disbursements andanyapplicable taxesthereon within20 days of the dateofthis judgment, either partyshallthereafter be at libertyto applyfor an assessment of costsin accordancewith the Federal Courts Rules.

"Keith M. Boswell"