Trademarks:
Recent Developments in
Canadian Law
A. Kelly Gill
Gowling Lafleur Henderson LLP
Phone: (416) 862-3536
kelly.gill@gowlings.com
Overview
1. Trademark Legislative Update
2. Trademark Infringement through Keyword
Advertising and Meta Tags
3. Jurisdictional Issues
4. Remedies
2
Trademark Legislative Update
1. The Broadening of Infringement
2. New Border Provisions
3
Trademark Legislative Update
• What 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 trademark...
4
Trademark Legislative Update
• Section 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 tradename;
(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.
5
Trademark Legislative Update
• New Border Provisions
• Part of the initiative to combat counterfeit products
• Allows Customs:
• to detain counterfeit products
• Alert the IP owner
• IP owner must then commence court proceedings
• Request For Assistance (“RFA”)
• Does not apply to common law trademarks
6
Keyword Advertising and Meta Tags
Vancouver Community College v Vancouver
Career College
• Defendant purchased VCC as a keyword in 2009
• Plaintiff asserted common law trademark in VCC
because of use between 1965-1990 and
commencing again in 2013
• Defendant’s domain was VCCollege.ca
• Defendant’s website never displayed VCC and
clearly conveyed who they were
7
Keyword Advertising and Meta Tags
• Plaintiff alleged common law passing off
• Reputation (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 misrepresentation
• Despite evidence of consumers mistakenly going to
the defendant’s site because of the keyword, because
once on the site it was clear to be that of the defendant
8
Keyword Advertising and Meta Tags
• The Take Away:
• Keyword advertising using someone else’s nonregistered trademarks will not constitute passing
off provided there is no misrepresentation on the
website
• But what about if those keywords had been
registered trademarks?
9
Keyword Advertising and Meta Tags
Red Label Vacations v 411 Travel Buys Ltd.
• Plaintiff operates travel info and booking site
redtag.ca
• Registered trademarks for
• redtag.ca
• redtag.ca vacations
• Shop. Compare. Payless!! Guaranteed
10
Keyword Advertising and Meta Tags
• Defendant 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 declined
11
Keyword Advertising and Meta Tags
• Court acknowledged that some U.S. Courts have
found initial interest confusion and infringement
• But not here because
• Meta tags only resulted in the defendant’s website
being listed in the search results
• This gives the consumer an ability to choose, albeit the
rankings may impact that choice
• And the website itself was not confusing
12
Keyword Advertising and Meta Tags
“The 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.”
13
Keyword Advertising and Meta Tags
• The Take Away:
• According to this case, no infringement to use a
competitors trademark, registered or not, as a
meta tag
• International law is mixed on trademark
infringement and meta tags
• EU Court of Justice has confirmed that meta
tags con constitute “advertising”
• And section 20 says “advertising” is an
infringement
14
Jurisdictional Issues
Equustek Solutions v Jack (Google Inc. non-party)
• Plaintiff obtained injunction against defendants
for selling counterfeit products from BCSC
• Defendants continued in a clandestine manner
through various websites, and relying on search
engine traffic
• Plaintiff obtained an Order against Google Inc.
prohibiting it from delivering search results that
included those websites
15
Jurisdictional Issues
• Google appealed
• Outside the jurisdiction of the Court because it has no
presence in BC (no office, employees)
• And is merely an innocent third party
• BCCA upheld the injunction and held that
• Google had a sufficient connection to BC
• It gathers data in BC
• Advertises its services in BC
• And sells advertising to BC residents
• And these are precisely the activities to which the
injunction was directed
16
Jurisdictional Issues
Douez v Facebook
• BCSC certifies a class action relating to the
unauthorized use by Facebook of user names
and likenesses, contrary to BC Privacy Act
• Facebook appeals
• BCCA overturns the decision on the basis of
conflict of laws
• Facebook’s standard terms and conditions had a
clear and enforceable forum selection clause
requiring disputes to be adjudicated in California
17
Remedies
• Interlocutory injunctions
• Remedies for Contempt
18
Remedies
Jamieson Laboratories Ltd. V Reckitt Benckiser
• Plaintiffs owned the TM MEGARED for use in
association with dietary supplements
• Defendants had been selling a krill-based product
under the name SUPER KRILL
• Prior to the Plaintiffs launching their product in
Canada, the Defendants rebranded their product as
OMEGARED and launched a major advertising
campaign
• Plaintiffs brought action for TM infringement with
motion for an interlocutory injunction
19
Remedies
The RJR MacDonald test for an interlocutory
injunction?
1. Is there a serious issue to be tried?
2. Will the moving part suffer irreparable harm if the
injunction is not granted?
3. Does the balance of convenience favour the granting
of the injunction?
20
Remedies
• Federal Court granted the injunction
• On 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
21
Remedies
• The 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
22
Remedies
Trans-High Corp. v Hightimes Smoke Shop
• Defendant infringed plaintiff’s trademark
• Injunction granted, along with costs and
damages in the amount of $55K
• Defendant did not obey Order
• Contempt proceedings commenced against
corporate defendant and its sole officer and
director
• Agreed to obey Order and plead guilty to
contempt
23
Remedies
• Still did not obey Order
• Trademark was eventually stopped but no payment
• Went 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
proceeding
• And 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 paid
24
Remedies
• Still did not obey
• The Take Away:
25
Remedies
26
Thank You
A. Kelly Gill
Tel: (416) 862-3536
Email: kelly.gill@gowlings.com
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