In the recent decision of Red Label Vacations Inc v 411
Travel Buys Limited2015 FCA 290, the Federal Court of Appeal
appears to have made a distinct effort to limit the scope of the
trial judge's ruling that copying of metatags, including third
party trademarks, did not constitute copyright or trademark
infringement. This decision leaves open the possibility of a
different result in appropriate future cases.
In our March 9, 2015
IP Update, we reported the Federal Court decision, which
contained one of the first detailed considerations by a Canadian
Court of the issues of copyright and trademark infringement via the
use of metatags.
With respect to copyright, the trial judge held that copyright
did not subsist in the Plaintiff's metatags because they were
simple key words and did not contain sufficient skill and judgment.
Therefore, there was no copyright infringement by the Defendant.
The trial judge expressly left open the possibility that copyright
could subsist in metatags in different circumstances. The trial
judge also found no infringement on an alternative basis.
With respect to trademarks, the trial judge found that the
Defendant's use of the Plaintiff's trademarks in metatags
did not entice consumers to visit the Defendant's website and
did not give rise to confusion. Therefore, there was no trademark
infringement. The trial judge made similar findings on the issues
of passing off and depreciation of goodwill. The trial judge also
made certain broad statements that appeared to hold that a metatag
could never, by itself, constitute a basis for trademark confusion.
These findings were the first of their kind in Canadian law and
arguably result in a more narrow scope of trademark protection than
the law that has developed in the United States and Europe.
Court of Appeal decision
The Court of Appeal found that the trial judge set out the
correct legal test for each issue and that the Appellant was unable
to show any clear errors in the trial judge's findings of fact.
On this basis, the decision of the trial judge was upheld.
Importantly, the Court of Appeal also made comments which appear
intended to limit the scope of the trial judge's decision to
the facts of the case. For example, the Court of Appeal stated that
"in some situations, inserting a registered trademark (or a
trademark that is confusing with a registered trademark) in a
metatag may constitute advertising of services that would give rise
to a claim for infringement". This finding leaves open the
possibility of trademark infringement through use of metatags in
In an unusual step, the Court of Appeal also issued concurrent
reasons, which upheld the trial judge's decision based on
narrow grounds without endorsing the remainder of the trial
judge's findings. In particular, the concurrent reasons ended
with the following paragraph:
"To conclude, the decision of the Federal Court must be
read in light of the facts before the Court. The extent to which a
trademark may be used in metatags without infringing the trademark
is, of necessity, fact specific. These reasons ought not to be read
as endorsing the Judge's remarks relating to "initial
interest confusion" or as endorsing every alternate basis on
which the Judge dismissed the action".
The decision indicates that under Canadian law, the use of third
party trademarks as metatags may constitute trademark infringement,
and the copying of third party metatags may constitute copyright
infringement, in appropriate cases. It remains for future cases to
clarify what factual circumstances would be required to establish
The preceding is intended as a timely update on Canadian
intellectual property and technology law. The content is
informational only and does not constitute legal or professional
advice. To obtain such advice, please communicate with our offices
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Materials from a recent "refresher training" for examiners at the Canadian Intellectual Property Office (CIPO) highlight inconsistencies between CIPO's examination practices and Supreme Court precedent.
Grey marketing, sometimes referred to as "parallel
importation", is the diversion of goods, originally intended
for sale only in certain countries, to other countries where they
were not intended to be sold.
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