Slide 1
Trademarks: Recent Developments in Canadian Law A. Kelly
GillGowling Lafleur Henderson LLPPhone: (416)
[email protected]
1Overview2Trademark Legislative Update
Trademark Infringement through Keyword Advertising and Meta
Tags
Jurisdictional Issues
Remedies
3The Broadening of Infringement
New Border ProvisionsTrademark Legislative UpdateTrademark
Legislative Update4What activities constitute infringement
Section 20 used to read:The right of the owner of a registered
trade-mark to its exclusive use shall be deemed to be infringed by
a person not entitled to its use under this Act who sells,
distributes or advertises wares or services in association with a
confusing trade-mark...
Trademark Legislative UpdateSection 20 now reads:The right of
the owner of a registered trade-mark to its exclusive use is deemed
to be infringed by any person who is not entitled to its use under
this Act and who(a)sells, distributes or advertises any goods or
services in association with a confusing trade-mark or
trade-name;(b)manufactures, causes to be manufactured, possesses,
imports, exports or attempts to export any goods in association
with a confusing trade-mark or trade-name, for the purpose of their
sale or distribution;(c)sells, offers for sale or distributes any
label or packaging, in any form, bearing a trade-mark or
trade-name, if(i)the person knows or ought to know that the label
or packaging is intended to be associated with goods or services
that are not those of the owner of the registered trade-mark,
and(ii)the sale, distribution or advertisement of the goods or
services in association with the label or packaging would be a
sale, distribution or advertisement in association with a confusing
trade-mark or trade-name; or(d)manufactures, causes to be
manufactured, possesses, imports, exports or attempts to export any
label or packaging, in any form, bearing a trade-mark or
trade-name, for the purpose of its sale or distribution or for the
purpose of the sale, distribution or advertisement of goods or
services in association with it, if(i)the person knows or ought to
know that the label or packaging is intended to be associated with
goods or services that are not those of the owner of the registered
trade-mark, and(ii)the sale, distribution or advertisement of the
goods or services in association with the label or packaging would
be a sale, distribution or advertisement in association with a
confusing trade-mark or trade-name.
5Trademark Legislative UpdateNew Border ProvisionsPart of the
initiative to combat counterfeit productsAllows Customs: to detain
counterfeit productsAlert the IP ownerIP owner must then commence
court proceedingsRequest For Assistance (RFA)Does not apply to
common law trademarks6Keyword Advertising and Meta TagsVancouver
Community College v Vancouver Career College
Defendant purchased VCC as a keyword in 2009Plaintiff asserted
common law trademark in VCC because of use between 1965-1990 and
commencing again in 2013Defendants domain was
VCCollege.caDefendants website never displayed VCC and clearly
conveyed who they were7Keyword Advertising and Meta TagsPlaintiff
alleged common law passing offReputation
(trademark)Misrepresentation (confusion)Damage (resulting from the
trademark confusion)Failed to prove a protectable reputation in VCC
(i.e., no common law trademark)Also failed to prove a
misrepresentationDespite evidence of consumers mistakenly going to
the defendants site because of the keyword, because once on the
site it was clear to be that of the defendant8Keyword Advertising
and Meta TagsThe Take Away:
Keyword advertising using someone elses non-registered
trademarks will not constitute passing off provided there is no
misrepresentation on the website
But what about if those keywords had been registered
trademarks?9Keyword Advertising and Meta Tags10Red Label Vacations
v 411 Travel Buys Ltd.
Plaintiff operates travel info and booking site
redtag.caRegistered trademarks for redtag.ca redtag.ca
vacationsShop. Compare. Payless!! Guaranteed
Keyword Advertising and Meta TagsDefendant competitor launches
in 2009 and includes meta tags red tag vacations shop, compare
& payless
No use visible to consumers
Plaintiff alleged that visits to its website declined11Keyword
Advertising and Meta TagsCourt acknowledged that some U.S. Courts
have found initial interest confusion and infringement
But not here becauseMeta tags only resulted in the defendants
website being listed in the search resultsThis gives the consumer
an ability to choose, albeit the rankings may impact that choiceAnd
the website itself was not confusing12Keyword Advertising and Meta
TagsThe use of metatags in a search engine merely gives the
consumer a choice of independent and distinct links that he or she
may choose from at will, rather than directing a consumer to a
particular competitor. Rankings may affect the choice to be made,
but nevertheless, such a choice exists.13Keyword Advertising and
Meta TagsThe Take Away:
According to this case, no infringement to use a competitors
trademark, registered or not, as a meta tagInternational law is
mixed on trademark infringement and meta tagsEU Court of Justice
has confirmed that meta tags con constitute advertisingAnd section
20 says advertising is an infringement14Jurisdictional
IssuesEquustek Solutions v Jack (Google Inc. non-party)
Plaintiff obtained injunction against defendants for selling
counterfeit products from BCSCDefendants continued in a clandestine
manner through various websites, and relying on search engine
trafficPlaintiff obtained an Order against Google Inc. prohibiting
it from delivering search results that included those
websites15Jurisdictional IssuesGoogle appealedOutside the
jurisdiction of the Court because it has no presence in BC (no
office, employees)And is merely an innocent third partyBCCA upheld
the injunction and held thatGoogle had a sufficient connection to
BCIt gathers data in BCAdvertises its services in BCAnd sells
advertising to BC residentsAnd these are precisely the activities
to which the injunction was directed16Jurisdictional IssuesDouez v
FacebookBCSC certifies a class action relating to the unauthorized
use by Facebook of user names and likenesses, contrary to BC
Privacy ActFacebook appealsBCCA overturns the decision on the basis
of conflict of lawsFacebooks standard terms and conditions had a
clear and enforceable forum selection clause requiring disputes to
be adjudicated in California
17Remedies18Interlocutory injunctions
Remedies for Contempt
Remedies19Jamieson Laboratories Ltd. V Reckitt Benckiser
Plaintiffs owned the TM MEGARED for use in association with
dietary supplementsDefendants had been selling a krill-based
product under the name SUPER KRILLPrior to the Plaintiffs launching
their product in Canada, the Defendants rebranded their product as
OMEGARED and launched a major advertising campaignPlaintiffs
brought action for TM infringement with motion for an interlocutory
injunction
Remedies20The RJR MacDonald test for an interlocutory
injunction? Is there a serious issue to be tried?Will the moving
part suffer irreparable harm if the injunction is not granted?Does
the balance of convenience favour the granting of the
injunction?
Remedies21Federal Court granted the injunctionOn the second step
of irreparable harm, the Court held:where use of a confusing mark
will cause the Plaintiffs' mark to lose its distinctiveness, that
is, its ability to act as a distinctive and unique signifier of the
Plaintiffs' wares or business, such damage to goodwill and the
value of the mark is impossible to calculate in monetary terms
Federal Court of Appeal upheld the injunction
Remedies22The Take Away:
Knowing use of a confusing mark may sway the equities in favour
of granting an injunction
Where trademarks are clearly confusing, there is precedent that
it represents damage to goodwill that is impossible to quantify
RemediesTrans-High Corp. v Hightimes Smoke ShopDefendant
infringed plaintiffs trademarkInjunction granted, along with costs
and damages in the amount of $55KDefendant did not obey
OrderContempt proceedings commenced against corporate defendant and
its sole officer and directorAgreed to obey Order and plead guilty
to contempt23RemediesStill did not obey OrderTrademark was
eventually stopped but no paymentWent back to Court where it was
held:Defendant and director fined for contempt$50K payable to the
Court as a fine$55K to the plaintiff for the trial costs$62K to the
plaintiff for costs of having to bring the contempt proceedingAnd
in the event of non-compliance within 30 days, the director was
liable to be imprisoned for not less than 14 days, to continue
until the contempt is purged and the penalties paid24RemediesStill
did not obey
The Take Away:25Remedies26
A. Kelly GillTel: (416) 862-3536Email:
[email protected] Youmontral ottawa toronto hamilton
waterloo region calgary vancouver beijing moscow london
