[1] Euro Excellence has been selling or otherwise distributing the Toblerone and Côte d'Or line of confectionary products in Canada. This May I held that such activities violated Kraft's interest in copyrighted art work in the chocolate bar wrappers, more particularly the Toblerone bear within a mountain, and the Côte d'Or elephant. I enjoined Euro Excellence from continuing to market the products in their original wrappers, unless the wrappers were rendered non-infringing.

[2] Euro Excellence attempted to render the wrappers non-infringing by covering over the copyrighted material with a self-sticking plastic film, which is opaque in way of the artistic works.

[3] In June I was asked to give directions with respect to this proposed methodology. Kraft was concerned that the plastic film could be removed, say by a retailer who wanted to demonstrate he or she was selling the genuine product. It was not necessary for me to face Kraft's concern head-on as I could not remove the plastic film with my fingernails. I approved the Toblerone 100g. bar and two of the three Côte d'Or bars I tested. The one found wanting was the 100g. Côte d'Or Intense bar. It failed because two of the elephants on the wrapper were still visible. One was a brown elephant within the depiction of a piece of the chocolate bar. Although that elephant was dark brown, while the others were white, the artistic work was in the shape of the elephant, not its colour, and so I said the chocolate brown elephant would have to be covered over. The other problem was that one of the white elephants was slightly embossed and its shape was still visible in certain light notwithstanding that it had been covered over.

[4] The parties have come back for further directions. I have to determine whether Euro Excellence has now successfully covered over the brown elephant and the shape of the embossed white elephant in the Côte d'Or 100g. Intense bar. I also need to reconsider the ease with which the plastic film can be removed from all the wrappers in question, as Kraft contends the plastic film, or the method of adhesion, differs from the bars I tested in June. In accordance with my June order Euro Excellence sent Kraft samples of the products in issue so that it could make its own determination as to whether the wrappers were non-infringing. Kraft's A. Louise McLean carried out a fingernail test and found that the film on most bars could be easily removed exposing the artistic work. Other film could be removed easily but the artistic work was lifted off or otherwise damaged.

[5] Euro Excellence contends that it has made no change in the plastic film and its adhesive qualities. However, there is a design change in the film covering the 47.5g. banana snack bar and equivalents. It is using the same company which produced the samples I examined in June.

[6] First, let me deal with the artistic work in the 100g. Côte d'Or bar which was not successfully covered over in the June samples. I examined two new bars and am satisfied that the embossed white bear and the brown bear are no longer visible. Indeed, Kraft does not claim that they are.

[7] The problem is in the ease in which the plastic film can be removed. I again tested a number of bars in open court in Montreal yesterday, September 2. The results are appended hereto.

[8] Unlike the June samples, in some cases, but not all, I was able to remove the film. However, the bars were not left in pristine condition. The ends of the 47.5g. Côte d'Or banana snack bar were almost in pristine condition. In some cases I had to apply such pressure in removing the film that I broke the chocolate bar. In another case, my fingernail tore right through the wrapper and the underlying foil, exposing the chocolate. I tore off elephant heads and left scratches on the wrappers.

[9] Mr. Renaud, for Kraft, matched my efforts bar by bar. He had more success in removing the plastic film, and is to be congratulated on his nimble fingers. However, others might approach this unscientific survey with two thumbs.

[10] I thought it necessary to re-examine the bars I inspected in June, which we have done today, Friday, September 3, in Ottawa.

[11] Although for the most part I found it more difficult to remove the film from the June samples, to my surprise at least in one instance, the 100g. Intense bar, I could remove film with difficulty, but I could not remove the film from the latest sample. There are some vagaries about, perhaps the age of the glue, perhaps the pressure with which it is applied, perhaps the texture of the underlying wrapper. I do not know.

[12] The change with respect to the 47.5g. bar is that in June the elephants on the two ends were covered over by a separate film, which I was able to remove today but with some damage to the underlying wrapper. In the new version, there is simply one overall plastic film which is rectangular in shape with two flaps at either end to cover the elephants on the edge. I was able to remove this single film, but severely damaged the original wrapper.

[13] I have no doubt that Euro Excellence is in good faith in its attempts to render the wrappers non-infringing. Indeed, Kraft does not question its good faith. It is clear that the plastic film is not designed to be removed. We are not talking about "Post-it ®" notes. We are not concerned with what the ultimate consumer might do with the wrapper. The problem is the risk that a motivated merchant might remove the overlaying film.

[14] Why would a merchant want to do that? It is a given in this case that there is commercial value in the art work in question. It is not beyond the realm of imagination that a merchant might remove the plastic film to show customers that he or she is selling the genuine product.

[15] Kraft contends, and I accept, that my own disinterested efforts to remove film would not compare with the efforts of an interested merchant who, with practice and experience, would show better results, as indeed Ms. McLean did.

[16] However, I consider that Kraft is a touch overzealous in its concerns when one takes into account the time, the effort and the damaged inventory. I find it difficult to think a consumer would pay full price for a broken chocolate bar, or one with its wrapper damaged.

[17] To its credit, Kraft produced some samples which it purchased in a retail outlet in Ottawa. Those particular samples had obviously not been interfered with by the merchant.

[18] In conclusion, I am satisfied that the steps taken by Euro Excellence to render the wrappers non-infringing meet the spirit and the letter of my orders of 3 May and 9 June 2004. I do not think the fact that some of the plastic film could be more easily removed yesterday than in June is convincing evidence of a bait and switch on its part.

[19] Euro Excellence seeks costs on a solicitor-client basis. Kraft had originally rejected the samples sent to it in August out of hand. However, its position was later nuanced in the affidavit of Ms. McLean, and as I said, it produced unblemished samples purchased from a merchant. Although, I award Euro Excellence the costs of this motion, I do not award costs on a solicitor-client basis. Although Kraft may be a touch overzealous in its efforts to protect its interests, it is by no means abusive.

"Sean Harrington"

Judge

Ottawa, Ontario

September 3, 2004

APPENDIX

Efforts by Harrington J. to remove plastic film from original Côte d'Or and Toblerone wrappers 2 and 3 September 2004.

1. Côte d'Or 100g. bar

Two bars were tested 2 September. The film at the top was removed. The elephant on the top edge was visible, as was the elephant at the back. However, the elephant on the front of the bar, the embossed elephant, which was also covered over by a thick, red material of some sort, was torn away with the plastic. The plastic in the same location on the second bar was removed with more or less the same results, but with some glue left behind.

The brown elephant on the lower part of the front of the original wrapper was covered over with a different sticker. I was able to remove the film with some effort, but in both cases broke the bar in two, with glue and scratches left on the original wrapper. The brown elephant was visible.

On 3 September I revisited the 100g. Côte d'Or bar which had been produced as Exhibit 2 in June. I tried to remove the plastic film at the bottom of the front of the bar. I was able to remove it with difficulty and scratched the original wrapper. I compared the results with part of the 100g. bar which had been produced on 2 September but left untouched. Although I could get my fingernail under it I could not remove it. It was more resistant than the June bar.

2. 200g. Côte d'Or bar

No such bar was produced in June, but one was on 2 September. I could not remove the plastic film. In fact, I ripped right through the wrapper and the underlying foil, exposing the chocolate bar. As to the brown elephant lower down on the front, I could not find where the plastic film began and ended.

3. 10g. Mignonnette

I was able to remove the film on 2 September but was left with quite a mess as part of the wrapper remained with the sticker. The elephant was visible, but I tore off its head. I tested other Mignonnettes which Kraft had purchased on the open market in Ottawa. It took some effort to get my fingernail under the film, but I was able to pull it off. However, the original wrapper was left with a scratch in one case. In another, there was a tear in way of the elephant's tusks, and in the third I ripped the label near the elephant's tail.

4. Côte d'Or banana snack bar 47.5g.

In the June sample, the elephants at either end of the bar were covered over by separate stickers. I was able to remove them on 3 September, but left abrasion on the original wrapper. The elephants were visible.

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On 2 September, I began to lift what I assumed were separate stickers from either end of the bar. I had no difficulty beginning the removal, but stopped once the elephants were exposed. Again, I left abrasion marks on the original wrapper.

It was pointed out, however, that in the latest samples the 47.5g. banana bar is covered over by a single plastic film in rectangular shape with flaps at either end to cover the elephants. On 3 September, I was able to remove the entire plastic film but left the original wrapper badly damaged.

5. Toblerone

On 2 September I examined a 200g. bar. I was able to tear off the plastic. Beneath the plastic is a piece of paper, triangular in shape, which conceals the mountain and the bear. After tearing off the film, I could see the mountain and the bear, but I had badly torn the original wrapper in way thereof, leaving it quite unattractive.

On 3 September I reexamined the 100g. bar which had been presented in June. I was able to lift the plastic film but after that initial lift could not do more. I used scissors and began cutting through the plastic. However, the triangular piece of paper underneath began to come off, but left behind its white adhesive so that I could not see the mountain.

I tested another 200g. bar on 3 September. I was able to tear off the plastic film quite easily, but as in the case of the 100g. bar, the triangular disc was such that part of it came off with the sticker and part of it remained on the original wrapper so that I could not see the bear within the mountain. I then got my finger under the remaining bit of the triangular piece, lifted it and did see the bear within the mountain. However, what was left can only be described as a "holey" mess.

FEDERAL COURT

NAMES OF COUNSEL AND SOLICITORS OF RECORD

DOCKET: T-1821-02

STYLE OF CAUSE: KRAFT CANADA INC.

KRAFT FOODS SCHWEIZ AG and

KRAFT FOODS BELGIUM SA

and

EURO EXCELLENCE INC.

PLACE OF HEARING: MONTREAL, QUEBEC AND OTTAWA, ONTARIO

DATE OF HEARING: SEPTEMBER 2 AND 3, 2004

REASONS FOR ORDER : HARRINGTON J.

DATED: SEPTEMBER 3, 2004

APPEARANCES:

Arthur Renaud FOR APPLICANT

François Boscher FOR RESPONDENT

SOLICITORS OF RECORD:

Sim, Hughes, Ashton & McKay

Toronto, Ontario FOR APPLICANT

François Boscher

Montréal, Québec FOR RESPONDENT

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Kraft Canada Inc. v. Euro Excellence Inc., 2004 FC 1215

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2004 FC 1215