Trademarks 2016 Update Daniel R. Bereskin, Q.C. October 2016

Topics Meta Tag/Keyword Update When is a trademark “clearly descriptive or deceptively misdescriptive” of the place of origin? Is a software license a “good” for which a trademark can be registered? What constitutes “use in Canada” for a registered trademark covering services? What “special circumstances” can avoid cancellation of a trademark registration for non-use?

Purchased Keywords Auctioned by Google (“Adwords”), Yahoo! and Bing. Sponsored ads appear when users search the Internet. Example: searching “Mercedes 2017 S Class” reveals the following:

Is Unauthorized Use of a Trademark Keyword an Infringement? For search engine operators, the present answer is no. For purchasers of Keywords, the cases are divided, but it appears that unless the associated ad is deceptive in some way, the user of the Keyword is not liable for trademark infringement. For e.g., honest comparative advertising is not an infringement.

Trademark Infringement Proof Must be a clear likelihood of confusion. Rhetoric is not a substitute for evidence. Accused mark must be used as a trademark.

Red Label Vacations Inc. case Manson J. rejected the idea of “initial interest confusion”. Dawson, J. on appeal, did not endorse this view. Similar result in Vancouver Community College case, now under appeal. Does Masterpiece case make a difference? Initial Interest Confusion appears to be losing traction in the USA. Low clickthrough rate could mitigate against confusion.

Google v. Equustek BC CA upheld site-blocking injunction against Google although Google was not a party to original action. SCC is to hear the appeal on December 6, 2016. Google case cited with approval Cartier International and Others vs BSkyB and others, where a site-blocking injunction was granted against major UK ISPs. Injunction was upheld on appeal on July 6, 2016.

Clearly Descriptive/Deceptively Misdescriptive Trademarks Clearly descriptive: when goods/services emanate from a place name identical to the trademark Deceptively misdescriptive: name must not only be misdescriptive of place of origin but must be deceptively misdescriptive.

LEYDA v. PARMA cases Leyda: place name may be clearly descriptive even it is relatively unknown. Parma: Trademark is not deceptively misdescriptive unless Canadians are aware of the place name significance. MC Imports follows Leyda but quaere whether it was decided correctly.

Is Software License a Good? Specialty Software says yes. What is sold is a license, which is intangible.

“Use in Canada” of a Trademark for Services Unicast SA v. South Asian Broadcasting. Broadcasting via the Internet held not to be use in Canada. How to register a service mark principally used abroad: take care in describing the services.

S. 45 “Special Circumstances” Must disclose last date when trademark was used in Canada and for what goods/services. Must provide cogent reasons to justify finding of special circumstances. Poor market conditions not an excuse, but evidence of real effort to use mark in Canada can make a difference, e.g. Gouverneur Inc. case.

Daniel R. Bereskin, Q.C. – Partner dbereskin@bereskinparr.com THANK YOU Daniel R. Bereskin, Q.C. – Partner dbereskin@bereskinparr.com October 2016