Teresa Scassa - Blog

The U.S. Court of Appeals for the Ninth Circuit has applied U.S. trademark law (the Lanham Act) to the activities of a Canadian citizen operating a business in Vancouver. The court acknowledged that it was applying the Lanham Act extraterritorially, but ruled that it was justified in doing so on the facts of the case.

The extraterritorial application of trademark law is unusual. Registered trademarks are valid only in the country of registration. A Canadian who uses trademarks in Canada could normally only infringe another party's trademark rights if those rights have been acquired through registration or use in Canada. Countries normally get to decide which marks receive protection within their own borders, and a judgment from a foreign court would not be enforceable in Canada without a Canadian court’s approval. The decision in Trader Joe’s Company v. Hallatt, which applies U.S. law to U.S. registered trademarks used in Canada, is therefore quite unusual. However, the facts of the case are also unique.

Many Canadians will recognize the name Trader Joe’s. This grocery store chain, which operates exclusively in the U.S., has carved out a niche for itself as a purveyor of high quality fresh foods. A majority of the products sold in Trader Joe’s stores are branded with Trader Joe’s’ U.S.-registered trademarks. The company has no stores in Canada. It may have contemplated a possible expansion north of the border; in 2010 it took steps to register two of its trademarks in Canada. However, these registrations have not been perfected – quite probably because the company has not started to use the marks in Canada.

The defendant Hallatt is a Canadian citizen living in British Columbia who also has permanent resident status in the United States. In 2011 employees of a Trader Joe’s store in Washington State noticed that Hallatt was making several large purchases per week. It transpired that he was driving the purchased goods across the Canada/U.S. border in order to sell them in Canada. He later opened a store in Vancouver for this purpose. Originally called Transilvania Trading, he changed its name to Pirate Joe’s. He sold Trader Joe’s labelled merchandise at this store at prices considerably higher than in the U.S. After Trader Joe’s took steps to limit Hallatt’s access to their stores, he began to wear disguises to make his purchases. There was also some evidence that he hired people to purchase goods from Trader Joe’s that he could then bring into Canada. The court also found that he used a store sign that resembled Trader Joe’s’, and that the trade dress of his store also resembled that of the plaintiff company.

Trader Joe’s objected to this use of their trademarks and trade dress in Canada. They alleged that it could cause confusion among Canadian consumers who were familiar with the U.S. brand, and that the defendant’s activities might harm their trademarks because they had lost the ability to maintain their strict controls over product quality and freshness. They alleged that they had already received one complaint from a customer who had been made ill after eating Trader Joe’s food from Pirate Joe’s in Canada. They were also concerned about harm to their reputation because the food sold at Pirate Joe’s was overpriced and because the customer service did not meet their standards. Since Canadians would also cross the border and shop at Trader Joe’s stores in the U.S., harm to the store’s reputation from Pirate Joe’s activities in Canada could have an effect on the U.S.-based business.

The complex set of cross-border factors in this case motivated the Court to find that Hallatt had violated the Lanham Act. In the first place, they found that the “use in commerce” requirement of the Lanham Act had been met. Normally, where there is extraterritorial application of the Lanham Act, the plaintiff has to show that goods sold outside of the U.S. have made their way back into U.S. markets in order to show use in commerce. This was not the case here. However, the court was prepared to find that there was nevertheless an impact on U.S. commerce from the sale of the goods in Canada. This flowed from the potential reputational harm from the sale of products of compromised quality and from selling the goods at inflated prices. The court noted that Canadians were regular customers at the Trader Joe’s stores in northern Washington State (40% of credit card transactions at the Bellingham store were by non-residents of the U.S.). These customers might be confused by the sale of Trader Joe’s products in Canada, and might form a negative opinion of the company if the goods sold in Canada were overpriced or of inferior quality. The Court also found other links to the United States that could be used to ground a decision to apply the Lanham Act extraterritorially. The defendant travelled to the U.S. to purchase the goods and/or hired people based in the U.S. to purchase them for him. It also found that his activities might have been assisted to some extent by his landed immigrant status in the U.S.

International comity is a relevant consideration in deciding on extraterritorial application of a country’s laws. The idea is to interfere as little as possible with the sovereignty of another state. In this case, the court noted that there was no ongoing litigation in Canada over trademark issues on the same facts. It also noted that both parties in this case had ties to the United States; the defendant through his landed immigrant status. The Court also found that “an essential part” of Hallatt’s commercial venture took place in the U.S. Perhaps most importantly, the Court found that it was in a position to order the remedies sought by Trader Joe’s. The defendant had assets in the United States so that an award of damages could be enforced in the U.S. against those assets. A court in the U.S. could also order an injunction to stop Hallatt’s activities in purchasing the goods in the U.S. for export to Canada.

The particular facts of this case were clearly a central factor in the court’s decision to apply the Lanham Act extraterritorially. In this sense, then, the case does not signal a shift that would see U.S. courts hearing a flood of trademark infringement suits relating to U.S.-registered trademarks that happen to be used in Canada. Without the substantial links to the U.S. – and the deliberate attempt to trade on the goodwill of the U.S.-based company, the court would likely not have extended U.S. law in this case. Nevertheless, it is a warning to Canadian entrepreneurs that the exploitation of well-known U.S. trademarks, even if not registered in Canada, could, in the right circumstances, expose them to liability on either side of the border.

 

Published in Trademarks

A small Canadian company seems poised to take on the Canadian Intellectual Property Office (CIPO) over the issue of whether the trademark it seeks to register for its vodka, LUCKY BASTARD, is scandalous, obscene or immoral.

Similar to laws in other countries, Canada’s Trade-marks Act bars the registration of marks that would offend public mores. Or at least, that’s the theory. According to s. 9(1)(j) of the Act, no mark that is “scandalous, obscene or immoral” can be adopted as a trademark. Other provisions of the statute bar both the registration (s. 12(1)(e)) and the use (s. 11) of such marks.

The decision as to what is “scandalous, obscene or immoral” is in the hands of the Registrar of Trademarks. The only guidance provided by CIPO on this issue is found in the Trademarks Examination Manual. According to the Manual,

  • A scandalous word or design is one which is offensive to the public or individual sense of propriety or morality, or is a slur on nationality and is generally regarded as offensive. It is generally defined as causing general outrage or indignation.
  • A word is obscene if marked by violations of accepted language inhibitions or regarded as taboo in polite usage. This word is generally defined as something that is offensive or disgusting by accepted standards of morality or decency; or offensive to the senses.
  • A word or design is immoral when it is in conflict with generally or traditionally held moral principles, and generally defined as not conforming to accepted standard of morality.

Clearly, there is an element of subjectivity in making such assessments. In the case of the word “bastard”, it is fair to say that today it is generally considered to be a highly inappropriate term to use to refer to a child born to an unmarried mother. What is less clear is whether, used today in its more casual sense – as in the expression “lucky bastard” – it rises to the level of “causing general outrage or indignation”.

Canada has almost no case law on how to interpret and apply s. 9(1)(k). The experience in other jurisdictions has highlighted the often contentious and sometimes seemingly arbitrary approach to comparable provisions. In some cases, applicants for registration seek to use controversial words in a deliberately edgy way. In a case currently making its way through the courts in the U.S., an Asian-American dance rock band called The Slants is challenging the U.S. Patent and Trademarks Office’s refusal to register their band name as a trademark. They argue that the denial or registration violates their freedom of expression. The band apparently seeks to ‘reclaim’ the otherwise derogatory term. When the trademark DYKES ON BIKES was initially denied registration in the U.S., its owners argued that the term DYKES, although derogatory in some contexts, was, when used self-referentially, had been re-appropriated and was a term of empowerment. These arguments were ultimately successful.

The arbitrariness of provisions barring the registration of trademarks on public order and morality grounds is not limited to the difficult issues around what terms are offensive and in what contexts. A quick search of the Canadian trademarks register reveals that the word “bastard” already appears in several registered trademarks, including FAT BASTARD BURRITO, DOUBLE BASTARD (for beer), PHAT BASTARD (for oysters) and FAT BASTARD (for wine). It is clear from the register that several other attempts to register marks containing the word “bastard” have been abandoned – possibly over objections to the propriety of the term.

In the U.S., challenges to the constitutionality of the equivalent U.S. provision on First Amendment (free speech) grounds have thus far failed. Courts have ruled that the provision only bars registration and not use of the mark, and therefore the right to expression oneself by using the term as an (albeit unregistered) trademark is not affected. The government remains entitled to refuse to grant a state sanctioned monopoly right to use a term that is immoral or disparaging. The constitutional issues will be under scrutiny again in the case involving The Slants, as well as in the infamous Redskins case both of which are making their way through the appellate courts in the U.S. Freedom of expression arguments in relation s. 9(1)(j) of Canada’s Trade-marks Act have yet to be tested in court. It is worth noting that in Canada it is not just registration that is denied to a “scandalous, obscene or immoral” trademark, but also adoption and use. Nevertheless, freedom of expression challenges to a similar provision in Europe have failed under the European Charter of Human Rights because of counter-balancing considerations similar to the Canadian Charter’s tolerance of “reasonable limits” placed on rights so long as they are “demonstrably justified in a free and democratic society”.

There may well be reasons to deny registration to trademarks that clearly cross the line of what is acceptable. Our laws make it clear that discrimination and hate speech, for example, are not tolerated. Perhaps what is needed is a refocussing of the s. 9(1)(j) discretion to concentrate on trademarks that offend norms that are clearly supported by other legislation and the constitution.

The disallowance of LUCKY BASTARD should also be considered in the light of the recent controversy regarding the Edmonton football franchise’s ESKIMOS trademark. The later term is considered derogatory and disparaging of Canadian Inuit (and I note that there a great number of other trademarks on the Canadian register that contain the word “eskimo”). Justice Murray Sinclair of the Truth and Reconciliation Commission has recently called for action to address the use of offensive and racist sports mascots and team names. The infamous Washington Redskins trademarks – under challenge in the U.S. – are also registered (and as yet unchallenged) trademarks in Canada. The arbitrary application of public morality clauses in trademarks law brings discredit to the system. It may also serve to highlight the extent to which some biases are so ingrained within the system that they become normalized.

If the owners of Lucky Bastard Vodka do eventually have to take their trademark fight to court it might mean that we finally get some judicial insight into the proper interpretation and application of s. 9(1)(j). This would surely be welcome.

 

Published in Trademarks

It is rare that a trademark law dispute becomes the subject matter of a documentary film – rarer still when it is a Canadian case that is the focus of attention. Yet some trademark disputes transcend the legal issues that give rise to them. This is so with the case that inspired Heidi Lasi’s recent documentary titled The Oasis Affair. This short film explores the dispute between Les Industries Lassonde, Inc. (a major Quebec company that produces, among other things, OASIS brand juices) and Olivia’s Oasis, a small Quebec business producing soaps and skin care products made with olive oil.

The conflict between the two companies arose from a trademark infringement lawsuit brought by Les Industries Lassonde against Olivia’s Oasis. Lassonde argued that the Olivia’s Oasis trademark for skin care products created consumer confusion with their well-known mark OASIS for fruit juice. Not only did the defendant rebut the trademark claims, it also argued that the lawsuit against it was abusive litigation under relatively new provisions of the Quebec Code of Civil Procedure. These “anti-SLAPP” provisions are intended to discourage parties with deep pockets from using the threat of litigation either to pressure small parties to comply with their demands or to face financial ruin through costly litigation. At trial, Justice Zerbisias of Quebec’s Superior Court found not only that there was no merit to the trademark infringement suit brought by Les Industries Lassonde, Inc., she also agreed with the defendants that the suit fell within the ambit of the anti-SLAPP provisions. She awarded Olivia’s Oasis $125,000 in extra-judicial costs and punitive damages.

While accepting the trademark law outcome, Les Industries Lassonde appealed the award of damages to the Quebec Court of Appeal. [Spoiler alert: stop reading here if you want to learn how it all ends from watching the video.] This Court found that Lassonde’s motives in commencing litigation were not improper. After all, they opined, a trademark that loses its distinctiveness can no longer function as a trademark; a trademark owner must therefore take the necessary steps to preserve the distinctive character of its marks. It nullified the award of damages to the defendant.

Not only does The Oasis Affair provide an account of the litigation, it tells the remarkable story of the social media outcry that followed the Court of Appeal’s decision. In a very short space of time, Les Industries Lassonde faced an unprecedented public backlash – one that ultimately led them to compensate Olivia’s Oasis for the legal fees that had left the small company teetering on the edge of failure.

Heidi Lasi’s documentary is a crisp, engaging account of this case and its aftermath. The film leaves the viewer with an appreciation of the power of social media to create a “court of public opinion”; and suggests that the Olivia’s Oasis affair heralds an important change in how trademark holders must approach the protection of their trademarks and brands.

 

Published in Trademarks

The Pan Am/Parapan Am Games are set to open in Toronto on July 10, 2015. As with any other major sporting event, these Games raise the possibility of ambush marketing – a form of marketing activity designed to take advantage of public interest in a high profile event.

Major event organizers (including the International Olympic Committee, FIFA, and others) see ambush marketing as a threat to their ability to obtain top dollar for lucrative sponsorship opportunities, and they have increasingly put pressure on host countries to enact legislation to prevent ambush marketing. This legislation has proven controversial – and for good reason.

If you are interested in ambush marketing and the Pan Am/Parapan Am Games, you can read my blog post on this issue on Osgoode’s IPilogue here.

Published in Ambush Marketing

Canadian Trademark Law

Published in 2015 by Lexis Nexis

Canadian Trademark Law 2d Edition

Buy on LexisNexis

Electronic Commerce and Internet Law in Canada, 2nd Edition

Published in 2012 by CCH Canadian Ltd.

Electronic Commerce and Internet Law in Canada

Buy on CCH Canadian

Intellectual Property for the 21st Century

Intellectual Property Law for the 21st Century:

Interdisciplinary Approaches

Purchase from Irwin Law