By Richard Stobbe

So much confusion, so little time. The Trade-marks Act teaches us that the use of one trade-mark causes confusion with another trade-mark if the use of both trade-marks in the same area would likely lead to the inference that the products associated with those trade-marks emanate from the same person, even if the products are of a different class. Confusion is assessed by looking at all the surrounding circumstances including:

• the inherent distinctiveness of the trade-marks;

• the extent to which the marks have become known;

• the length of time the trade-marks have been in use;

• the nature of the products or business;

• the nature of the trade; and

• the degree of resemblance between the two trade-marks in appearance or sound or in the ideas suggested by them.

In the case of U-Haul International Inc. v. U Box It Inc., 2015 FC 1345 (CanLII), U-Haul International applied to register the trade-marks U-BOX WE-HAUL and U-BOX, for use in association with “moving and storage services, namely, rental moving, storage, delivery and pick up of portable storage units.” A competitor – U Box It – opposed these applications on the basis of confusion with its registered U BOX IT mark for use for use in association with “garbage removal and waste management services.” 

Are “moving and storage services” in the same area as  “garbage removal and waste management services”? 

U-Haul argued that the two companies offer completely different services, and “that garbage removal and waste management are the ‘exact opposite’ of moving and storage, and in different channels of trade.” However, the court agreed with the opponent’s argument that confusion was based on “the similar manner in which the services are provided, and not on any finding that the services were in fact the same.”

After reviewing all of the factors listed above, the court found a reasonable likelihood of confusion, and refused to register the two marks U-BOX WE-HAUL and U-BOX, based on confusion with the registered mark U BOX IT.

Calgary – 05:00 MST

By Richard Stobbe

A interesting Report on Business article by the founder of a Canadian business is useful as a cautionary tale about brand confusion (see: I was outraged when Sobey’s rebranded its chain with the same name as my company). The author of the article tells of her struggles when grocery chain Sobeys launched a brand - FRESHCO – that was identical to the name of her then 15-year old company, also named FRESHCO.  It sounds like a frustrating experience. In particular, the author notes that her company was “federally incorporated across Canada, and not trademarked,” leaving her with no legal options to prevent the entry of Sobey’s FRESHCO brand for grocery store services. For small business owners or start-ups, this might be worth examining with a legal lens:

• First, it’s important to remember that incorporation is completely different from trademark registration. One is creation of a corporate entity, and one is the registration of a brand name. The corporate name sometimes (but does not necessarily) mirror the core brand name of the business. A corporate name is no guarantee of anything in the trademark realm.
• Next, don’t forget that trademark rights are based on use in the marketplace, and a business generates certain trademark rights even without taking the step of registration at the Canadian Intellectual Property Office. In other words, a  business can defend common law trademark rights based on past use even in the absence of a registered trademark. It’s just harder than with a registered mark.
• A registered trademark provides stronger rights across Canada, and that kind of brand protection should always be considered by business owners as part of their investment. Even after an incident like the one described by this author, it’s open to the earlier user of the mark to apply for registration, even after many years of “unregistered” use.
• In this case, the Sobey’s trademark FRESHCO for grocery services is in a different channel of trade than the author’s FRESHCO mark for construction services. Trademark law permits similar or even identical marks to co-exist, so long as consumers aren’t confused. Think of DELTA for hotel services and DELTA for faucets. Identical marks, different channels of trade. There is actually nothing improper about that, as frustrating as it may seem to the earlier user.

The author appears to have used this as a positive opportunity to reinvest in the brand and refocus the company’s marketing message. If this kind of thing happens to your business, ensure that you get legal advice from an experienced trademark lawyer on your options as you make decisions for your company.

Calgary – 07:00 MST

 
By Richard Stobbe

Can a binding contract be formed merely with a link to another set of terms? (For background on this topic, check out our earlier post What, exactly, is a browsewrap? which reviews browsewraps, clickwraps, clickthroughs, terms of use, terms of service and EULAs).

The answer is clearly… it depends. Consider the American case of Holdbrook Pediatric Dental, LLC, v. Pro Computer Service, LLC (PCS), a New Jersey decision which considered the enforceability of a set of terms which were linked from a paper hard-copy version of the contract. In this case, PCS sent a contract to its customer electronically. The customer printed out the paper version and signed it in hard copy. A hyperlink appeared near the signature line, pointing to a separate set of Terms and Conditions in HTML code. Of course on the paper copy these terms cannot be hyperlinked.

PCS asserted that these separate terms were incorporated into the signed paper contract, since they function as a clickable hyperlink in the electronic version.  The court disagreed: “In order for there to be a proper and enforceable incorporation by reference of a separate document . . . the party to be bound by the terms must have had ‘knowledge of and assented to the incorporated terms.’”  Here, there was no independent assent to the additional Terms and Conditions, and the mixed media nature of the contracting process worked against PCS. In addition to the fact that the separate terms were not easily accessible by the customer, the text was not clear. It merely said “Download Terms and Conditions”, without providing reasonable notice to the customer that assent to the main contract included assent to these additional terms. The additional terms were not binding on the customer.

Lessons for business? Get legal advice!

Calgary – 07:00 MST

By Richard Stobbe

The Vancouver Aquarium brought an injunction application to stop the online publication of a critical video entitled “Vancouver Aquarium Uncovered”, which used the Aquarium’s copyright-protected materials in a “derogatory manner”, according to the Aquarium.

In the fascinating case of Vancouver Aquarium Marine Science Centre v. Charbonneau, 2016 BCSC 625 (CanLII), the court weighed the Aquarium’s effort to prevent the unauthorized use of their copyright-protected video clips, against the movie producer’s argument that the exposé is on a topic of public interest and shouldn’t be silenced.

This represents the first judicial review of Section 29.21 of the Copyright Act, first introduced in 2012, which covers “non-commercial user-generated content”. In the injunction application the court skimmed over this issue, preferring to leave it to trial. However, the court made passing comments about the availability of a defence which relies on showing that the copyright-protected content was used “solely for non-commercial purposes”. In this case, there was evidence before the court that the movie had recently been screened in Vancouver where attendees had been charged a $10 entry fee. The court also made reference to an Indiegogo fundraising campaign related to the movie production.

Ultimately, the court restricted publication of 15 images and video clips – about 4 minutes worth of content - which the Aquarium claimed to own. The injunction stopped short of attempting to enjoin publication of the whole video, but rather ordered that the defendants remove the 15 contested segments from the video.

If it proceeds to trial, this will be one to watch.

Calgary – 07:00 MST

By Richard Stobbe

The adage “use it or lose it” captures the essence of the ongoing requirement to put a trademark into commercial use. If you abandon your mark, you effectively give up your trademark rights. The corollary is to “use it as registered, or lose it” Not quite as catchy, but just as important.

The Federal Court decision in Padcon Ltd. v. Gowling Lafleur Henderson LLP 2015 FC 943 reminds us of this. In this case, a trademark owner obtained a registration in 2006 for the mark THE OUTRIGGER STEAKHOUSE AND BAR in association with “restaurant, bar and pub services”. When challenged, the trademark owner could only show use of the word OUTRIGGER alone, together with the ® symbol, on its menus and on some related promotional materials. 

Are deviations permitted? When the court considers a mark-as-used against the mark-as-registered, it will consider the following test:

…The practical test to be applied in order to resolve a case of this nature is to compare the trade mark as it is registered with the trade mark as it is used and determine whether the differences between these two marks are so unimportant that an unaware purchaser would be likely to infer that both, in spite of their differences, identify goods having the same origin.

That question must be answered in the negative unless the mark was used in such a way that the mark did not lose its identity and remained recognizable in spite of the differences between the form in which it was registered and the form in which it was used.

The court decided that use of OUTRIGGER alone on menus and promotional materials did not constitute evidence of use of the mark-as-registered: THE OUTRIGGER STEAKHOUSE AND BAR. The registration was expunged.

Lessons for business?

• Review your marks-as-used, and compare against your marks-as-registered.
• Consider developing brand guidelines to ensure that your organization, and others who might be authorized to use your trademarks, are in compliance with the guidelines.
• If you already have brand guidelines, ensure that there are clear lines of responsibility for enforcement.

Calgary – 11:00 MT

By Richard Stobbe

A class action case against Facebook (see our previous posts for more background) is heading to the Supreme Court of Canada.

The BC Court of Appeal in Douez v. Facebook, Inc., 2015 BCCA 279 (CanLII)  had reviewed the question of whether the Facebook terms (which apply California law) should be enforced in Canada or whether they should give way to local B.C. law. The appeal court reversed the trail judge and decided that the Facebook’s forum selection clause should be enforced.

Facebook now joins Google, whose own internet jurisdiction is also going up to the Supreme Court of Canada this year.

These are two cases to watch.

Calgary – 07:00 MT