Xylem Water Solutions Manufacturing Alberta ("Xylem")
was the owner of the registered Canadian trademark AQUAVIEW in
association with software for water treatment plants and pump
stations.
Xylem received a section 45 challenge under the Trade-marks
Act (the "Act"). A
section 45 notice requires the owner of a registered trademark to
prove that the mark has been used in Canada during the three-year
period immediately before the notice date. The term "use"
has a special meaning in trademark law. In this case, Xylem was put
to the task of showing "use" of the mark AQUAVIEW in
association with software in Canada during the relevant
period.
How does a software vendor show "use" of a trademark on
software in Canada?
The Act tells us that
The general rule is that a trademark should be displayed at the
point of sale. In Scott Paper Limited v. Georgia Pacific
Consumer Products LP, a case involving a toilet paper
trademark, the Federal Court confirmed the Opposition Board's
view that Georgia-Pacific's mark had not developed any
reputation since it was not visible
until after the packaging was opened.
Arguably, if a mark is not visible at the point of purchase,
it cannot function as a trademark; regardless of how many times
consumers see the mark after they open the
packaging to use the product.
In some ways, Xylem faced a similar problem to the one which faced
Georgia-Pacific. In Ashenmil v Xylem Water Solutions
AB, the Opposition Board tackled this problem as
it relates to software sale. The evidence showed that the
AQUAVIEW mark was displayed on website screenshots, technical
specifications, and screenshots from the software.
The decision in Ashenmil frames the problem this
way:
Regardless, in the section 45 proceeding re: AQUAVIEW the Registrar ultimately accepted Xylem's evidence of use within the relevant period, and upheld the registration of the AQUAVIEW mark. Some important comments that emerge from this case are listed below:
- Software Screenshots: The display of a
mark within the actual software would be viewed by customers
only after transfer of the software. This
kind of display might constitute use of the mark in cases where a
customer renews its license, but is unlikely to
suffice as evidence of use for new customers.
- Technical Documentation: In this case,
the software was "complicated" software for water
treatment plants. The owner sold only four licenses in Canada
within a three-year period. In light of this, it
was reasonable to infer that purchasers would take their time
in making a decision and would have reviewed the technical
documentation prior to purchase. Thus, the display of the mark on
technical documentation was accepted as "use" prior to
the purchase. This would not be the case for, say, a
99¢ mobile app or off-the-shelf consumer software where
technical documentation is unlikely to be reviewed prior to
purchase.
- Website screenshots: Website
screenshots and digital marketing brochures that clearly display
the mark can bolster the evidence of use. Again, depending on the
nature of the software, purchasers can be expected to review
such materials prior to purchase.
- Downloadable Software: Software
companies are well advised to ensure that their marks are clearly
displayed on materials that the purchaser
sees prior to purchase, which will differ
depending on the type of software. The display of a mark
on software screenshots is not discouraged; but it should not
be the only evidence of use. If software is
downloadable, then the mark should be clearly displayed to the
purchaser at the point of checkout.
- An Ounce of Prevention: The cases have shown some "flexibility" to determine each case on its facts, but do not rely on the mercy of the Court: software vendors should ensure that they have strong evidence of clear display of the mark before the point the consumer actually purchases the software. Clear evidence may even prevent a section 45 challenge in the first place.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.