ICBClosestrademarkcase.com

Recently, the Insurance Corporation of British Columbia (“ICBC”) lost a trade-mark dispute against Stainton Ventures Ltd. (“Stainton”), which owns the website <ICBCadvice.com>.  A full version of the decision is available here.

As a brief summary of the trial case, ICBC claimed that Stainton had violated ICBC’s trade-mark rights under sections 9 and 11 of the Trade-Marks Act.  Sections 9 and 11 refer to “official” trade-marks, or trade-marks which are owned by government or public authorities (more discussion here), and aim to prevent others from using these official marks.  The trial judge ruled against ICBC, an appeal by ICBC was unsuccessful, and a further appeal to the Supreme Court was also denied.  The Court ruled against ICBC for many reasons including:

1. ICBC failed to discharge its onus to prove that there were mistakes or confusion resulting from users looking for the ICBC official website and mistakenly directed to Stainton’s website.

2. The mere use of the official mark as a portion of the website address was not enough to prove that Stainton was attempting to redirect traffic from users looking for the ICBC official website (i.e. there was no intention of passing off).

3. An average internet user would not associate Stainton’s website as owned by ICBC, but merely come to the impression that it had something to do with ICBC.  Appeal judge: “a domain name which, in part, contains the name of a business or its acronym will not necessarily be affiliated with or endorsed by that business and may, instead, be the subject matter of the website or entirely unrelated to that business” (at 37).

4. Stainton was not using the official mark “as a trade-mark or otherwise”, and not holding itself out to be offering services under that name (i.e. no infringement).

5. The mere use of the official mark in the website address is not determinative in and of itself, and the website as a whole must be analyzed (at 37).

6. There is a plethora of other websites containing the official mark as an indirect reference such as <sueicbc.com>, <icbcinjurylawyers.ca>, or <ihateicbc.com>.

The Court (at 38) also suggested that the analysis of this case might also apply to non-official trade-marks, and I tend to agree.  What should also be taken from this case is that while Stainton may not have successfully defended this case, it should not be taken as a blanket approval to use any trade-marks in website addresses or within the text of a website.  The Court alludes to the fact that if the website does misdirect traffic or essentially offer a business or services which competes with the owner of the trade-mark, that website may be held to be infringing.  One should also consider that although the mere use of the trade-mark in line with the Stainton case may not be infringing, one should still not use the trade-mark in such a way as to depreciate the goodwill of the registered owner or defame or slander the owner in any way.

For more information on trade-marks, contact me.

HALAL and KOSHER – potential trade-marks?

I came across an interesting case today: Islamic Society of North America – Canada v. Bank of Montreal, in which the Trade-Marks Opposition Board (“TMOB”) was asked to consider whether HALAL was distinctive for the purposes of identifying mortgages, mutual funds, and other investment products for the Bank of Montreal.

The case arose during the course of the trade-mark application process where any interested third party is entitled to “oppose” the trade-mark application, after it passes through initial examination by the Registrar of Trade-Marks, and before it is fully registered.  In this case, the opponent was the Islamic Society of North America – Canada, which claimed that the mark HALAL was descriptive of the quality or nature of the goods and services being offered.

The case re-confirms that a trade-mark can not be merely descriptive of the wares or the quality or nature thereof.  The word HALAL originates from the Qur’an, the Muslim holy text, and generally means lawful or permissible according to the teachings of Allah.  While generally associated with foods, HALAL can be extended to any wares and services, including lending practices.

The TMOB ultimately concluded that the trade-mark was not distinctive at the date of application, meaning that the applicant could not satisfy the TMOB that the use of the word HALAL was tied to its own wares and services.  In doing so, the TMOB considered extensive search results from GOOGLE to show that HALAL was used extensively and linked to many different sources, and could therefore not be linked to the single source, namely, the applicant.

The TMOB also stated that largely because of the extensive use of the term, the trade-mark is unregistrable according to section 12(1)(b) of the Trade-Marks Act, since it was generally accepted to describe the quality and nature of the wares and services offered.  And, if not descriptive, then it would be deceptively misdescriptive, since a large number of Canadians would expect the wares and services to comply with the meaning of the HALAL mark.

Trade-marks which describe the quality or nature of the product, or processes involved in production can potentially be registered as “certification marks”.  These special type of trade-marks do not distinguish a particular source of the wares and services, but rather highlight that wares and services have received a particular “stamp of approval” or certification which the public can rely on as being reviewed and approved.

For more information on trade-marks, contact me.

Confusion between Trade-marks (Masterpiece v. Alavida)

The Supreme Court of Canada on May 26, 2011 released the decision of Masterpiece Inc. v. Alavida Lifestyles Inc. (2011 SCC 27) regarding the test for confusion between trade-marks.  At issue was whether the Court should consider whether two marks could be confusing if they were used in different geographical areas.  The Court confimed that for the purpose of the confusion test, the trade-marks are assumed to exist in the same area.

The case dealt with two retirement living businesses, one in Alberta and one in Eastern Canada.  The Alberta business (Masterpiece) began using its unregistered trade-mark “Masterpiece” in approximately 2001, whereas the Eastern Canadian business (Alavida) began to use its registered trade-mark in approximately 2006.  Upon learning that Alavida was using their trade-mark, Masterpiece commenced an action to expunge the Alavida registration.

The trial court and appeal court each determined that the marks were not confusing for a variety of reasons, including that their geographic locations were distant, and that such a purchase involved considerable capital and purchasers would research their decision between each of the retirement companies.

The Supreme Court of Canada found confusion between the trade-marks, allowed Masterpiece’s appeal, and ordered that the Alavida trade-mark be expunged.  The Court confirmed that to take advantage of exclusive use of a trade-mark in Canada, there must be no likelihood of confusion with another trade-mark anywhere in Canada.

The Supreme Court also affirmed that while purchasers of expensive goods may research their decision to purchase the goods extensively, the issue of confusion is confirmed to be one of first impression, meaning that any research after the first contact with the trade-mark is largely irrelevant.