Order prohibiting Google from delivering search results heads to SCC

The Supreme Court of Canada has agreed to hear an appeal from a decision of the B.C. Court of Appeal which upheld a worldwide injunction against Google Inc. (“Google”), wherein Google was ordered to stop delivering search results to its users that pointed to certain websites.

You can find my commentary on the B.C. Court of Appeal’s decision in Equustek Solutions Inc. v. Google Inc., 2015 BCCA 265, here.

The facts underlying the appeal arose from Equustek Solutions Inc.’s (“Equustek”) attempts to enforce its intellectual property rights against a former distributor, Datalink Technologies Gateways Inc. (“Datalink”).  Allegedly, Datalink was passing off Equustek’s products as its own and using Equustek’s confidential information and trade secrets to manufacture a competing product.  Equustek was successful in obtaining various interlocutory orders against Datalink; however, Datalink failed to comply with those orders, and continued “clandestine” operations online to market and sell its infringing products.

In order to more effectively stop Datalink’s infringing activities, Equustek sought an injunction against Google (which was not a party to the dispute), restraining it from publishing search results that included Datalink’s websites, on the basis that this was the only way to give effect to the orders already in place.  The B.C. Supreme Court granted the order, and the B.C. Court of Appeal upheld the order on appeal.

In its brief reasons granting leave to appeal, the Supreme Court of Canada outlined the issues for its consideration:

-          Under what circumstances may a court order a search engine to block search results, having regard to the interest in access to information and freedom of expression, and what limits (either geographic or temporal) must be imposed on those orders?

-          Do Canadian courts have the authority to block search results outside of Canada’s borders?

-          Under what circumstances, if any, is a litigant entitled to an interlocutory injunction against a non-party that is not alleged to have done anything wrong?

Whatever the Supreme Court of Canada decides in this matter will hopefully provide direction and clarify the law regarding the ability of a Canadian Court to grant a worldwide injunction, as well as with respect to access to information and freedom of expression in the digital age.

We will keep you updated.


Save the Date: the Importance of the Date of First Use in Canadian Trade-mark Applications (for now)

A recent decision of the Canadian Trade-marks Opposition Board, Constellation Brands Québec Inc. c Sociedad Vinícola Miguel Torres, S.A., 2016 TMOB 4 (“Miguel Torres”), serves as a reminder of the importance of stating an accurate and supportable date of first use, when claiming use as a basis for registration in Canada.

In Miguel Torres, the Applicant filed an application to register the trade-mark HEMISFERIO (the “Mark”) for “wines”, claiming use in Canada since at least as early as October 28, 2011.  As one of its grounds of opposition, the Opponent alleged that the Applicant had not used the Mark in Canada as of the claimed date of first use.

As support for its claimed date of first use, the key piece of evidence relied upon by the Applicant was an invoice dated October 28, 2011, which purportedly corroborated the date of first use asserted by the Applicant’s affiant.  However, the Opposition Board instead agreed with the Opponent’s submission that while the invoice was dated October 28, 2011 and goods were shipped to Canada from Chile on that date, the approximate date of arrival in Canada of those goods was not until January 26, 2012.

Accordingly, because transfer of the property in or possession of the wine bearing the Mark from the Applicant to its Canadian distributors did not take place in Canada until after October 28, 2011, there was no “use” of the Mark in Canada, within the meaning of Section 4(1) of the Trade-marks Act (the “Act”), as of the date of first use claimed in the application.  The application was therefore refused.

While we understand that there will no longer be a need to claim a date of first use in trade-mark applications once the Canadian trade-mark regime changes (likely in 2018), for the time being, trade-mark applicants should strive to claim a date of first use that is accurate and, where possible, supported by documentary evidence.

Location Matters: The Perils of Geographic Names as Trade-marks

When choosing a trade or business name it may seem like a good idea to incorporate the location of your business into the name. There are benefits: it is helpful for marketing, it gives your audience an idea of where your business is and who your market is, it can help establish your business in a neighborhood, and it can help you build a brand based on community and locality.

However, using the location of your business in your trade or business name can cause difficulties when it comes to registering that name as a trade-mark. Under section 12(1) (b) of the Trade-marks Act, a trade-mark is not registerable if it is clearly descriptive or deceptively misdescriptive of the place of origin of the goods or services with which the trade-mark is used, unless that trade-mark has acquired distinctiveness through its use.

The Federal Court of Appeal recently reviewed section 12(1)(b), and considered the issue of whether a service provider can register, as a trade-mark, the name of a geographic location, purely in relation to its services.

In 2012, a dental practice owned by Dr. Cragg applied to register the trade-mark OCEAN PARK (the “Mark”) in association with dental services based on use since as early as 2000. The Mark was registered for use in association with “dental clinics” in 2013.

Prior to Dr. Cragg applying to register the Mark, another dentist, Dr. Lum purchased an existing dental practice a block away from Dr. Cragg’s and changed the name of the practice to “Ocean Park Dental Group”. Then, after moving the practice, Dr. Lum changed the name to “Ocean Park Village Dental”, and advertised and displayed signage using the trade-name “Village Dental in Ocean Park”.

In early 2014 Dr. Cragg brought an action against Dr. Lum for infringement of the Mark. In response, Dr. Lum brought an action seeking to invalidate the Mark on the grounds that it was not registerable under section 12(1)(b) of the Trade-marks Act.

In the court below, the trial judge held that in order to prove that a trade-mark is not registerable under section 12(1)(b), a plaintiff has to show (1) that a trade-mark refers to a geographic location; and (2) that the location was indigenous to the services in question. Under this analysis, in order for the Mark to be non-registerable, a reasonable person would have equate the geographic location “Ocean Park” with dental services.  Based on the evidence, the trial judge found that this was not the case, and the court dismissed the action to invalidate the Mark.

However, the Court of Appeal held that this was not the correct analysis.  Instead, the analysis under section 12(1)(b) is to focus on:

-          the type of services involved;

-          the average consumers to whom the services are offered; and

-          the character of the geographic location.

Under this analysis, if the trade-mark is the name of the geographic location where the services or goods are provided, then the trade-mark is descriptive within the meaning of 12(1)(b) and non-registerable because the trade-mark is descriptive of the origin of the services or goods.

The Court of Appeal reminded us that the reason why trade-marks that are descriptive of geographic locations are not registerable or protectable is to prevent a single service provider from monopolizing the name of a geographic location, so as to prevent other service providers from using that name to describe their own services.

On the issue of acquired distinctiveness, the problem identified by the Court of Appeal was that while geographic locations can be used in business names and for other purposes, they often do not meet the key requirement of a registerable trade-mark: distinctiveness. In this case, the Mark as registered, OCEAN PARK, was never used by itself in association with dental services. It was always used in the context of the name Ocean Park Dental. In this case, upon hearing “Ocean Park”, consumers would not think about Dr. Cragg’s dental services; as such, it could not be said that the Mark had acquired distinctiveness. Therefore, the Mark was declared invalid and struck from the Trade-mark Register.

This case warns businesses to be careful when choosing geographic locations as business or trade names which they may wish to register as a trade-mark. The use of a geographic location within the context of a broader trade-mark may be permissible. However, it is unlikely that a business can expect to register a trade-mark consisting purely of a geographic location, unless that business and the trade-mark have acquired significant distinctiveness through lengthy and extensive advertising and use.

About the Blog

The authors of the Canadian Trademark Blog are all members of the Canadian law firm Clark Wilson LLP, based in Vancouver, Canada. Each author's practice focuses–either in whole or in substantial part–on Canadian intellectual property law. Together, they manage the trade-mark portfolios of local, national and international brand owners in nearly all industries and markets.

The Authors