Federal Court considers whether use of mark on invoice constitutes use

In Hortilux Schreder BV v Iwasaki Electric Co Ltd (2011 FC 967), the Federal Court has considered whether use of a trademark on an invoice constitutes use.
Canada, unlike many other jurisdictions, requires use to obtain a trademark registration, although the use may not have occurred in Canada, depending upon the basis of application in this country. However, to maintain a Canadian registration, the use must occur in Canada.

What constitutes 'use' for goods and services is defined by the Canadian Trademarks Act. Determining whether a mark has, in fact, been used within the statutory requirements is straightforward if, for example, the trademark is applied to a label affixed to a bottle of fruit juice, or it is advertised during the performance of a service. It becomes less clear when, in conjunction with goods, the use falls under the statutory catch-all wording: “… is in any other manner so associated with the wares that notice of the association is then given to the person to whom the property or possession is transferred.”

In that context, invoices are sometimes provided as evidence of use for goods. As the trier of fact stated in this case, “the display of a trademark on an invoice that accompanies wares is considered 'use' in association with the wares if the trademark and the wares are associated to a point that the receiver would thereby get notice of the association”. When does this happen?

The court found the following factors relevant in determining when use of a trademark on an invoice constitutes use:
  • The trademark is prominent;
  • The trademark is distinguished from other matter in the invoice;
  • It is clear that the reference is to a trademark and not a company name (with company address and other contact information);
  • If the recipient of the goods is not an end consumer, but rather a distributor who would have familiarity with the trademark owner’s business, then it might be reasonable to assume that said type of purchaser would understand that the trademark is distinguishing the source of the goods referred to in the invoice;
  • It is clear that the goods of only one manufacturer are being sold; and
  • No other trademark appears in the invoices.
The above factors are well discussed in this appeal from a decision from the Opposition Board wherein the applicant’s entitlement to registration was challenged on the grounds of previous use of a confusing mark by the opponent in Canada.

Toni Polson Ashton, Sim & McBurney/Sim Lowman Ashton & McKay LLP, Toronto

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