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.
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
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
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
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
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.
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A recent Saskatchewan Court of Queen's Bench decision allowed a court-appointed receiver to sell and transfer intellectual property rights free and clear of encumbrances, finding that a license to use improvements of an invention was a contractual interest and not a property interest.
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