Brand protection is important. Foreign service providers interested in extending their brand equity to Canada will be encouraged by the Federal Court's recent decision in AT&T Intellectual Property II, L.P v. Lecours, Hebert Avocats Inc., 2017 FC 734. In this case, AT&T was able to protect its brand and maintain its Canadian trademark registration for GO PHONE for use in association with telecommunications services despite evidence that in order to access the services Canadian customers needed to purchase hardware, either an AT&T phone or a Sim card, in the United States.
Lecours, Hebert requested the Registrar give notice under section 45 of the Trademarks Act requiring AT&T to show use of the GO PHONE trademark in Canada within the preceding 3 years. At first instance, the Registrar found that AT&T's evidence of use of its trademark in Canada was ambiguous. The Registrar expunged the trademark on the basis that it was not clear that Canadian customers were able to purchase and obtain the GO PHONE services without having to leave Canada. AT&T appealed and filed fresh evidence.
Procedurally, the Court explained that section 45 is a housekeeping measure intended to rid the Canadian Trademarks Register of "deadwood". The Court found that the requisite "use" of a trademark on websites requires:
- display of the trademark in advertising the services; and
- the ability to make those services available in Canada.
Confirming an expansive interpretation to "use" of a trademark, the Court found that the Trademarks Act does not distinguish between primary, incidental or ancillary services and that "as long as some members of the [Canadian] public, consumers or purchasers receive a benefit from the activity, it is a service." The Court stressed that the evidentiary threshold necessary to demonstrate use in section 45 proceedings is low. While explicit evidence is preferred, the Court drew reasonable inferences of use from the evidence as a whole.
This decision confirms that foreign companies who make services available to Canadians online are entitled to obtain and maintain trademarks to protect their brand in Canada even where they have no physical presence here. To do so, they must produce evidence, when called upon, to show Canadians are actually using and benefiting from the services provided in association with the trademark. There are significant benefits to having a Canadian trademark registration.
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