Canadian Trademark Blog

Maintained by Clark Wilson LLP

Both Here and There: Trademark Use on Websites Available in Canada

By In Case Law, Registration

According to a December, 2012 decision of the Federal Court, HomeAway.com, Inc v. Hrdlicka, “a trade-mark which appears on a computer screen website in Canada, regardless where the information may have originated from or be stored, constitutes for Trade-marks Act purposes, use and advertising in Canada.”  This broad statement suggests that the appearance of a trade-mark on a computer screen is sufficient whether or not services are available or performed in Canada.  However, the decision is best understood in context. 

HomeAway.com, which acquired and now operates the well known Vacation Rentals by Owner or VRBO website at VRBO.com, sought to expunge the trade-mark VRBO which Hrdlicka had applied to register in 2009 for use in association with services described as “vacation real estate listing services”.  HomeAway.com sought to establish prior use of VRBO.  HomeAway.com had a computer presence in Canada, but no physical presence.  In analyzing section 4(2) of the Act which states that “a trade-mark is deemed to be used in association with services if it is used or displayed in the performance or advertising of those services”, the Court noted that there was little jurisprudence regarding use by means of a computer screen display.  The Court then adopted the concept that an activity can be “both here and there” from a series of earlier cases involving tax, criminal activity and copyright and sought to interpret section 4(2) “in a manner consistent with modern day realities”, namely “that information which is stored in one country can be said to exist in another; in this case Canada.”

The Court then went on to describe the HomeAway.com business as being “advertising, on its website, homes, apartments and the like owned by third persons who wish to rent them to others”, suggesting that HomeAway.com offers the same services as the Classifieds section of a newspaper.  The Court used the accessing of properties in “Montreal” and “Niagara-on-the-Lake” as examples of how the website might be used.  It is not clear whether there was actual evidence before the Court of Canadians posting and accessing properties on the website, but presumably this was available.

In the circumstances, Hrdlicka’s registration was expunged in light of HomeAway.com’s prior use, the absence of any use by Hrdlicka until 2012 and evidence that Hrdlicka was trying to sell his trade-mark to HomeAway.com.

The question now is whether the mere appearance of a trade-mark in advertising available on a website in Canada is enough to constitute use in association with services.  However, when the statement from the Federal Court is read in context, it would appear that the services must be available to or accessed by Canadians.  Some further case law may be necessary to clarify this point.

Invoices Evidencing Use and Abandoning Use of Trademarks

By In Trademark Oppositions

A decision from the Federal Court of Appeal, Iwasaki Electric Co. Ltd. v. Hortilux Schreder B.V, provides some useful commentary regarding invoices as evidence of trademark use and regarding the issue of abandonment. 

Hortilux opposed Iwasaki’s application to register HORTILUX in association with electric lamps.  The Opposition Board accepted October 1997 as Iwasaki’s date of first use and concluded that the invoices submitted by Hortilux did not establish use prior to October 1997, although no reasons were provided byt the Board on this particular issue.  No additional evidence on this point was provided on appeal, but the Federal Court judge, applying a standard of reasonableness, reviewed the case law and concluded that Hortilux did have use prior to October 1997.  The Court of Appeal concluded there was no reason to interfere with the judge’s decision. 

The Court of Appeal quoted the judge’s earlier decision that “if a trademark is placed at the top of the invoice, with no use in the body of the invoice, the use will not generally be in association with the invoiced wares…”, but agreed that there were exceptions to this general rule, noting the judge’s reasons for drawing an exception in this case: the trademark was prominent on the invoice, appearing in large font and with design elements; it was clear that HORTILUX was not simply the trade name, particularly when Hortilux B.V. appeared separately; the recipient was the distributor and would therefore have understood that HORTILUX referenced the source of the reflectors; the reflectors were the only goods referenced in the invoices and no other trademark appeared on the invoices.

Having found use prior to October 1997, the Federal Court judge also had to consider whether the mark had been abandoned by Hortilux at the time Iwasaki’s application was advertised (a point that the Board Member did not need to address).  The Court of Appeal agreed that when applying the test in section 16(5) of the Trade-marks Act – whether at the time an application is advertised, a confusing trademark has been “abandoned” – there must be evidence of an intention to abandon. If the failure to use has continued for a long period of time, this may amount to evidence of an intention to abandon absent evidence to the contrary.  However, in this case there was affidavit evidence stating that Hortilux did not intend to abandon the mark.  This evidence did not amount to evidence of use but that was not necessary.  Thus, the judge had made no overiding error and Hortilux succeeded on its appeal.

Warm wishes – and thanks

By In Uncategorized

On behalf of the Canadian Trademark Blog team, please accept our warmest wishes for a happy and prosperous new year.   We plan to do our best to continue providing timely trademark-related information and insight, through 2013 and beyond.

Special thanks to you, our visitors, for your continued readership – and for making us one of the top 10 intellectual property and technology-related blogs in the country.  We know many of you have been with us since our start over six years ago, and we certainly value your support and interest.

Happy new year.

Bodum Gets French Pressed by Federal Court In Trademark Dispute

By In Case Law, Protection & Enforcement, Registration

Canada’s Federal Court has recently handed Bodum USA, Inc. (Bodum) another loss in its ongoing fight to enforce its trademark and other intellectual property rights in this country.  In the most recent decision, the Court has found that the Canadian Registration for the trademark FRENCH PRESS is invalid and unenforceable.  This Registration is owned by Pi Design AG (Pi), a related entity to Bodum and the licensor of the mark to Bodum in Canada and covers wares described as non-electric coffee makers.

As a result,  Bodum’s infringement claims against Meyer Housewares Canada Inc. (Meyer) over its use of the FRENCH PRESS mark have been dismissed.  Even worse for Bodum, the Registration for FRENCH PRESS has been ordered expunged on the grounds that it should never have been issued in the first place and even if it was properly registered, that Registration is now invalid on the basis that the mark is descriptive and not distinctive of Bodum as the sole source of the goods that this mark is registered in association with.

When assessing the evidence presented by the parties, the Court found that the term “French Press” was already in widespread use in North America as a generic term describing a popular type of coffee making device in 1995, which Pi was aware of when it sought to register the mark in Canada and thereby claim exclusive rights to the mark.  The Registration for this mark issued in 1997.

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In Honour of Black Friday – Big Brand Retailers Fight Quebec Language Law

By In Branding, Case Law, Famous Marks, Legislation

CBC reports that a group of  well-known retailers, including  WALMART, COSTCO and BESTBUY, are taking the Quebec Government’s French language watchdog to Court over its recent requirement that all retailers have signs that include either a generic French name or add a slogan or explanation to reflect what they are selling.  For example, rather than featuring signage with just the well-known WALMART mark, the Quebec government wants that retailer’s signs to now read “Le Magasin WALMART” or something to that effect.

While Quebec’s French Language Charter requires the name of a business to be in French, until now this requirement hasn’t been applied to registered trademarks by the Office Québécois de la Langue Française (OQLF).  There has been some debate over the last few years about whether unregistered trademarks should be treated the same as registered trademarks in terms of this exemption.  The OQLF is now requiring all signs to include French language, whether or not registered or unregistered trademarks are involved.

For their part, the retailers (also including GAP, OLD NAVY and GUESS) argue that there has been no formal change to the applicable provision of the language law.  Further, they argue that the OQLF has no right to change the application of the existing law and that by changing its policy, it is in effect changing the law.  The retailers also point out that these are all famous brands and through extensive long term use they have come to identify the businesses behind them, such that no one in Quebec needs the assistance of the language law to know what these businesses sell or represent.

Some other popular brand owners, such as KFC or “Poulet Frit Kentucky” as it’s known in Quebec, have already opted to adopt Quebec specific branding, rather than carry on with an English business name.

A trial of this matter is unlikely to take place before the end of 2013.

RIM Wins Right To Continue Using BBM Trademark

By In Case Law, Protection & Enforcement

Research in Motion Ltd. received some good news late last week, in the form of a Federal Court of Canada ruling that allows it to keep the BBM trademark for its popular messenger service.  BBM Canada, a Canadian television and radio research firm  that has been using the BBM mark for 60 years, commenced infringement proceedings on the basis that RIM’s use of the BBM mark  confused the public.  The Court disagreed, ruling that RIM’s use of the mark could peacefully co-exist with BBM’s use, which the Court said extended only to the field of broadcast measurement services.  News reports on the decisions suggest that BBM will appeal the decision.

Trademark Settlement Agreements: Lost in Translation

By In Case Law, Protection & Enforcement

A recent Ontario case is a rare example of parties seeking a judicial interpretation of a trademark settlement agreement.  It also emphasizes the importance of understanding all possible translated meanings of a word before committing to refrain from using any translated versions, a challenge that often arises in a bilingual country.

In Skipper Online Services (SOS) Inc. v. 2030564 Ontario Inc., the Ontario Superior Court of Justice considered a settlement agreement that restricted Boatsmart from using translated versions of particular words.  Skipper and Boatsmart were competing companies that administered online training for the Pleasure Craft Operator Card as required by Transport Canada.  The parties had a trademark dispute regarding the words each party could use as metatags, which are “hidden keywords” affecting how the parties appear in search engine results.  The two companies entered into a settlement agreement, wherein Boatsmart agreed to refrain from using the following words or “any reversals, misspellings, translations or plurals” thereof in its metatags:  BOATER EXAM; EXAMEN DE BATEAU; EXAMEN BATEAU; BOATEREXAM; EXAMENBATEAU.

Boatsmart, however, continued to use the phrases “BOAT EXAM” and “BOATING EXAM”, both of which can be translated as “EXAMEN DE BATEAU”.  Skipper sought a declaration that Boatsmart’s continued use of “BOAT EXAM” and “BOATING EXAM” was in breach of the agreement, since the agreement plainly restricted translations of “EXAMEN DE  BATEAU”.

Boatsmart, on the other hand, contended that the agreement was ambiguous, and that the parties never intended to restrict the terms “BOAT EXAM” and “BOATING EXAM”.  It argued that the word “translations” in the agreement referred to translations into any languages other than English or French, since the agreement already included specific terms in English and French.  Boatsmart further asserted that any other interpretation would result in commercial absurdity and go beyond what was necessary for the agreement’s purpose.

The Court found that the plain meaning of the agreement restricted Boatsmart from using the translated terms of “EXAMEN DE BATEAU”, including “BOAT EXAM” and “BOATING EXAM”.  Furthermore, the Court disagreed that the agreement’s context indicated an intention to allow Boatsmart to use the terms.  The purpose of the agreement was to limit as much as possible the parties’ use of certain terms and phrases in relation to their websites, in order to affect the search engine results.  A finding that Boatsmart was restricted from using these terms did not go beyond what was necessary for the agreement’s purpose.  The application was therefore granted.