Trademarks: Recent Developments in Canadian Law A. Kelly Gill Gowling Lafleur Henderson LLP Phone: (416)

Overview 2 1.Trademark Legislative Update 2.Trademark Infringement through Keyword Advertising and Meta Tags 3.Jurisdictional Issues 4.Remedies

3 1.The Broadening of Infringement 2.New Border Provisions Trademark Legislative Update

4 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 trade- mark...

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 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. 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 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 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? 9

Keyword Advertising and Meta Tags 10 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

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 18 Interlocutory injunctions Remedies for Contempt

Remedies 19 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

Remedies 20 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?

Remedies 21 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

Remedies 22 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

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 montréal  ottawa  toronto  hamilton  waterloo region  calgary   vancouver  beijing  moscow  london A. Kelly Gill Tel: (416)