Federal Court of Appeal: use of trademark at top of invoice constitutes 'use'

In Iwasaki Electric Co Ltd v Hortilux Schreder BV (2012 FCA 321, December 7 2012), the Federal Court of Appeal has considered whether use of a trademark on an invoice constitutes 'use'.

This case involved an application by Iwasaki Electric Co Ltd to register the trademark HORTILUX based on use in Canada for electric lamps. Among other things, the opponent pleaded confusion with its marks HORTILUX and HORTILUX SCHREDER previously used in association with lighting reflectors. The respective parties' goods were both directed to the horticultural industry.

The most common and non-controversial method to demonstrate use of a mark in Canada in respect of goods is to have the mark displayed on the goods themselves, and/or on the packaging/labelling therefor.

Sometimes invoices are tendered to establish use – with varying degrees of success – as in this case. At the Opposition Board, the hearing officer dismissed the invoices as evidence of use of the mark HORTILUX because the mark “did not appear in the body of the invoices”. This was done notwithstanding other decisions which held that “placement of a trademark at the top of an invoice could be use… in association with wares referenced in the invoice”.

The trial judge reversed the hearing officer, after looking at the following factors:

• The prominence of the mark (it appeared in “very large font (different from the surrounding text)” and in a “stylised form with design elements (different from the surrounding text)”);
• The trademark did not appear as a company name;
• The goods of other manufacturers were not included on the invoice;
• It was clear that the purchaser associated the mark with the goods; and
• No other trademark appeared on the invoices.

This decision was further appealed to the Court of Appeal. Quoting from an earlier Federal Court decision (Tint King) wherein the judge had stated that “use of a trademark on an invoice may or may not be considered use in association with wares described in the invoice", and reviewing the evidence at hand, the Court of Appeal held that the judge had not committed any reviewable error.

While the opponent finally achieved its goal to have Iwasaki’s application refused, one should remain mindful that, in the portion of the quote taken from the Tint King decision, is the following statement:

“If a trademark is placed at the top of the invoice, with no use in the body of the invoice, the use will not generally be in association with the invoiced wares…”. (emphasis added)

This decision should therefore be seen as a cautionary note to trademark owners - a trademark owner needs to fit within an exception to the general rule.

Toni Polson Ashton, SIM. IP Practice, Toronto