A recent decision of the Federal Court deals with problems that can occur when a trademark owner's corporate name and principle trademark contain similar elements.
The Facts
Illico Communication Inc., ("ICI") is a small Quebec company. ICI initially offered computer assisted jurisprudential research products and services including a newsletter. It has subsequently expanded its activities by adding the design, hosting and maintenance of websites and the provision of promotional and communication services.
ICI owned two trademark registrations for the trademark ILLICO which were not in issue and a registration for the trademark ILLICO COMMUNICATION for use in association with "publishing graphics, corporate graphics and promotional and communication graphics, specifically advertising, magazines and signs, design of Internet showcases and photographs, and related services, specifically writing translation and proofreading".
It appears that Vidéotron S.E.N.C. ("Vidéotron") a fairly large Quebec corporation launched its digital television service under the name of ILLICO and was precluded from obtaining a trademark registration for this mark by virtue of the registration of ILLICO COMMUNICATION owned by ICl. As a result, Vidéotron caused section 45 proceedings to be instituted concerning ICI's registration.
Section 45 Proceedings
The purpose of section 45 of the Trade-marks Act is to provide a summary procedure for trimming the register of "dead wood".
The section provides that the Registrar at the written request made after three years from the date of the registration of a trademark by any person who pays the prescribed fee, shall, unless the Registrar sees good reason to the contrary, give notice to the registered owner of the trademark requiring the registered owner to furnish within three months an affidavit or statutory declaration showing with respect to each of the wares or services specified in the registration, whether the trademark was in use in Canada at any time during the three-year period immediately proceeding the date of the notice and, if not, the date when it was last so in use and the reason for the absence of such use since such date.
Section 45 requires an affidavit or statutory declaration not merely stating but "showing" sufficient facts to demonstrate trademark use within the meaning of the definition of a "trade mark" in section 2 and of "use" in section 4 of the Act.
The section 45 proceedings brought on behalf of Vidéotron proceeded to a hearing at which the hearing officer, on reviewing the evidence, found that ICI had used "Illico Communications Inc." as a company name but not as a trademark in association with services. As a result, the registration was expunged. It was also found the evidence presented was deficient in showing use of the mark in association with all of the services.
The Federal Court Proceedings
ICI appealed from this decision to the Federal Court. In accordance with the Trademarks Act, ICI filed additional evidence to show use of the trademark ILLICO COMMUNICATION. The court found that the new evidence was material and applied the correctness standard of review and assessed the matter de novo.
A key element of the evidence showed that ICI had used a logo which was not in issue and underneath that logo the following words:
Illico ®
Communication inc.
In addition, in most instances ICI's address, telephone number and website address were immediately adjacent to the logo and the words shown above.
The judge concluded that when a company's corporate name and its principal trademark were identical, as a matter of law, there exists a rebuttable presumption that the corporation is using its tradename rather than its trademark. In cases of this type, each case must be analyzed on its own facts but the fact remains that it was up to ICI to rebut the presumption.
While there were other deficiencies in ICI's evidence the judge was not satisfied that ICI had rebutted the presumption. It was telling that ICI chose to use the ® with the word ILLICO rather than with the expression ILLICO COMMUNICATION and in the vast majority of instances added the word "Inc." to the expression.
Comment
This type of problem is a common one, particularly for smaller businesses. The key to distinguishing a trademark from a tradename is to give the trademark special typographical emphasis so that it stands out as a trademark separate and distinct from any corporate name or trade name and to use the designation " or ® appropriately to indicate that it is a trademark.
Trademarks are associated with goods or services and distinguish those goods and services from the goods and services of the other businesses. Tradenames are used to identify a specific business and are typically used in association with an address line.
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.
