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  • Clairol Revisited: Its Adverse Effect on Honest Comparative Advertising

Clairol Revisited: Its Adverse Effect on Honest Comparative Advertising

  • 15 May 2024
  • 6:00 PM - 9:00 PM
  • GEORGE Restaurant, 111C Queen St E
  • 11


In-person Dinner

GEORGE Restaurant (111C Queen St. E)

Wednesday, May 15, 2024 at 6:00pm

The Trade Mark Law Revision Committee was formed in 1947 to recommend changes to Canadian trademark legislation. The Committee, headed by Dr. Harold G. Fox considered that the law should protect registered trademarks from disparagement, i.e. tarnishment. Section 22 was enacted in 1954, and shortly thereafter Dr. Fox wrote that the ambit of s. 22 was broader than tarnishment, it also should extent to blurring. The Clairol case involved neither dilution by blurring nor dilution by tarnishment. Instead, Thurlow J. decided that the defendant’s packages marked with Clairol trademarks, took unfair advantage of Clairol’s reputation as market leader. In order to avoid interfering with comparative advertising in print media, he read s. 4(1) into s. 22. This led to the bizarre result that comparative advertising in print media involving services would violate s. 22 whereas the same would not be the case if the comparison involved goods. As a result of Clairol, a succession of Federal Court cases has gone even further in impeding honest comparative advertising in relation to marking of goods. Such conduct has been enjoined even in cases where the respondent was not a newcomer and therefore could not be seen to be riding on the coattails of the market leader. 

Dan Bereskin is a founding partner of Bereskin & Parr LLP. He was appointed King's Counsel in 1982 and as a Member of the Order of Canada in 2020. He is the author of The Canadian Law of Unfair Competition; Prosecuting and Defending Domain Name Disputes; editor and author of Trademark Dilution and Free Riding, and of more than 50 articles on various IP subjects.

The presentation is eligible for up to one hour of substantive CPD. 

Please join us at 6PM for a cocktail reception followed by dinner and the presentation by Dan.

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