The Federal Court of Appeal has confirmed – again
– that adoption and use of a domain name can in fact
constitute the mechanism by which a trademark is infringed in
Canada: Michaels v. Michaels Stores Procurement Company,
Inc., 2016 FCA 88. In fairly brief reasons given from
the bench upholding a default judgment, the Court confirmed the
appellant, who had been the defendant in the court below, was
liable for passing off and trademark infringement.
In confirming that conclusion and upholding the order requiring
that the domain name be transferred to the plaintiff, the Court
noted that "[o]n the evidence before the judge, the domain
name was the mechanism by which the respondent's mark was
infringed, and was the instrument of confusion in the
marketplace." (at para. 9).
While the decision does not extend unreasonably into concluding
that any use of a trademark as a domain name would
constitute infringement or passing off, it recognizes that
confusion may result from the use of a domain name, and that if it
does, such use is actionable.
The finding that confusion can result from use of a trademark in
a domain name should be unsurprising; however, recent jurisprudence
of lower courts in Canada appear to have suggested that use of a
confusing domain name cannot constitute infringement.
Hopefully this decision will put such suggestions to bed.
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The Canadian Intellectual Property Office has issued a report entitled IP Canada Report 2016, discussing trends in IP use domestically, and by Canadians abroad, based on analysis of CIPO's internal data and those collected by the World Intellectual Property Organization.
The value of reliance on a trade-mark registration, as opposed to prior use, stands out sharply in the recent Federal Court of Appeal case of Pizzaiolo Restaurants Inc. v. Les Restaurants La Pizzaiolle Inc. ( 2016 FCA 256 October 28, 2016).
This is an appeal from the Federal Court's decision setting aside the Registrar of Trade-marks decision to the extent that it dismissed the applicant's opposition regarding the mark PIZZAIOLO and Design.
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