Decision highlights divergence between case law and CIPO practice as to trademark use

Canada

The Canadian Trademarks Opposition Board (TMOB) has reaffirmed that 'use' of a trademark in Canada requires visual use; oral use of a trademark does not qualify as trademark use. In doing so, the decision highlights a divergence between case law, the practice of the Canadian Intellectual Property Office (CIPO) and recent comments from the Canadian Federal Court of Appeal.

The decision arose out of a summary trademark expungement proceeding under the Canadian Trademarks Act. Section 45 of the act provides that the registration of a trademark may be expunged if the registered owner cannot establish that the mark has been in use in Canada, in the normal course of trade, during the relevant three-year period. The three-year period runs backwards from the date of the notice from the Trademarks Office that a proceeding under Section 45 of the act has been commenced. Although the Trademarks Office may issue such a notice of its own accordance, notices are generally issued only at the behest of a third party. A person seeking expungement under Section 45 of the act need not have an interest in the matter.

In Sergey Poltev v MMI-GOC LLC (2012 TMOB 167), the TMOB was asked to consider whether the trademark GEEKS ON CALL had been in use in Canada during the relevant period. Part of the evidence filed by the registered owner, MMI-GOC LLC, was an affidavit which affirmed that, when customers contacted the registered owner through a toll-free number, they were greeted by an automated call system that began by saying “thank you for calling GEEKS ON CALL”. MMI-GOC asserted that it offered consulting services over the phone to customers in Canada and the oral reference to the trademark was use in association with those services. The TMOB was asked to consider whether this oral reference to the trademark was sufficient to constitute 'use' of the trademark, as required by Section 4 of the act.

The TMOB did not undertake a substantive analysis of this question. Instead, it relied on long-standing case law which has held that oral references to a trademark do not constitute use. A trademark must be depicted visually.  

The lack of analysis is perhaps not surprising when one considers that the visual depiction of a trademark has long been a tenet of Canadian trademark law. In order to satisfy the statutory criteria for use, courts have said that a trademark must be used visually, even though this requirement is not set out in the act. The rationale behind this interpretation was that non-visual references were said to be inconsistent with the normal meaning of 'mark', as set out in the act.

The decision of the TMOB is interesting when compared with the practice of CIPO, which, earlier in 2012, announced that it was accepting applications for trademarks which are sound marks, which by necessity are referenced only orally and cannot be depicted visually.

The divergence of opinion between CIPO and traditional case law is partly based on the fact that the act does not include a requirement that a trademark be depicted visually. Rather, that requirement was imparted by case law. In that sense, CIPO is not acting contrary to the letter of the act in accepting sound marks. Why then should the oral reference to GEEKS ON CALL not also qualify as trademark use? 

The Federal Court and the Federal Court of Appeal have both recently made some comments on whether use of a trademark must be visual. In a trademark dispute between Imperial Tobacco Canada Limited and Philip Morris Products SA, the Federal Court, in finding that Philip Morris Products SA did not infringe Imperial Tobacco Canada Limited’s rights in the MARLBORO trademark, confirmed that use of a trademark must be visual.

On appeal, the Federal Court of Appeal agreed that Philip Morris did not 'use' the MARLBORO trademark within the meaning of Section 4 of the act in association with its products. Philip Morris did not display the mark on its packaging nor did it advise retailers to refer to the product as MARLBORO. Interestingly, the Federal Court of Appeal commented that its reasoning should not be interpreted as an endorsement of the trial judge’s holding that a trademark had to be depicted visually to constitute 'use'. It appears that the Federal Court of Appeal was having some difficulty in confirming what had heretofore been an accepted tenet of Canadian trademark law.

It will be interesting to see how the TMOB and the courts treat non-visual uses of a trademark in the near term. Some commentators have argued that the traditional position requiring visual use was based on a historical and outdated interpretation of the word 'mark' in the act. CIPO appears to have accepted that and the Federal Court of Appeal has at least left open the possibility that non-visual use of a trademark may be considered 'use' under the act.

In the long term, the Federal Court of Appeal, the Supreme Court or the Government of Canada may need to step in to clarify the state of affairs.

Antonio Turco, Blake Cassels & Graydon LLP, Toronto

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