Quality Program Services Inc. v. Canada

Quality Program Services Inc. v. Canada
Court (s) Database
Federal Court Decisions
Date
2018-10-04
Neutral citation
2018 FC 971
File numbers
T-1787-16
Notes
Digest
Decision Content
Date: 20181004
Docket: T-1787-16
Citation: 2018 FC 971
Ottawa, Ontario, October 4, 2018
PRESENT: The Honourable Mr. Justice Southcott
BETWEEN:
QUALITY PROGRAM SERVICES INC.
Plaintiff
and
HER MAJESTY THE QUEEN IN RIGHT OF ONTARIO AS REPRESENTED BY THE MINISTER OF ENERGY
Defendant
JUDGMENT AND REASONS
I. Overview
[1] The Plaintiff, Quality Program Services Inc. [QPS], has brought this action against the Defendant, Her Majesty the Queen in Right of Ontario as represented by the Minister of Energy [Ontario], claiming damages and other relief for trade-mark infringement, passing off and depreciation of goodwill under the Trade-marks Act, RSC 1985, c T-13 [the Act]. These claims relate to the mark “EMPOWER ME”, registered by QPS under the Act in connection with energy awareness, conservation, and efficiency services, and Ontario’s use of the mark “emPOWERme” in connection with a website used to educate Ontario electricity ratepayers about the Ontario electricity system and energy conservation.
[2] Following commencement of this action, Ontario requested that the Registrar of Trade-marks [the Registrar] give public notice of Ontario’s adoption and use of “emPOWERme” as an official mark of the Government of Ontario under s 9(1)(n)(iii) of the Act, and the Registrar subsequently gave such notice. In addition to other defences, Ontario argues that this status as an official mark affords a complete defence to QPS’s claims.
[3] This Judgment and Reasons relates to a motion for summary trial under Rule 213 of the Federal Courts Rules, SOR/98-106, filed on December 27, 2017 and argued in Vancouver on June 25, 2018.
[4] As explained in greater detail below, I have found that s 9(1)(n)(iii) of the Act does not insulate Ontario from claims under the Act. The claim by QPS for infringement under s 20 of the Act succeeds, because I have found that Ontario’s mark is confusing with QPS’s mark. The other claims fail, because they turn on the development by QPS of goodwill in connection with its mark, which is currently limited to the province of British Columbia and is not affected by the use by Ontario of its mark in the province of Ontario. My Judgment awards QPS damages of $10,000.00.
II. Background
[5] QPS is a British Columbia company, incorporated in 2009, which since April 2012 has delivered in British Columbia a program focusing on energy awareness, conservation, and efficiency, currently known as “Empower Me” [the Empower Me Program]. This program targets communities of new Canadians, which QPS found were not participating in energy efficiency programs established by governments and public utilities. QPS attributes this lack of participation to a lack of awareness and often a fear or mistrust of governmental authorities resulting from some new Canadians’ experiences with more authoritarian forms of government in their countries of origin.
[6] The Empower Me Program approaches new Canadians by hiring trusted people from their communities as “Energy Mentors”, who then perform outreach in these communities to recruit people into the program as “Champions”. The Energy Mentors work with these recruits to provide them with information and advice about energy conservation and efficiency. The Champions pass on this knowledge to others in the community or recruit other Champions into the program. QPS derives revenue from the Empower Me Program through sponsorship by local governments, utilities companies, and businesses. At the time QPS filed this motion, it operated the Empower Me Program only in British Columbia, but the affidavit of the company’s President, Areef Abraham, filed on October 31, 2017 in support of this motion, states that QPS intends to expand the program into Alberta and Ontario in 2018.
[7] QPS filed a trade-mark application with the Canadian Intellectual Property Office on April 12, 2013, for use of the mark “EMPOWER ME” in connection with energy awareness, conservation, and efficiency services. Although QPS initially branded its program as “Empower Green”, it has been using “EMPOWER ME” as a trade-mark since April 20, 2013, when the mark was displayed at QPS’s booth at a festival in Surrey, British Columbia The registration sought by QPS was granted on July 23, 2014, with trade-mark registration no. TMA882733. QPS uses the “EMPOWER ME” mark on its website, social media, various types of promotional materials, at booths at community cultural events, and in advertising in various publications. The mark has also been used under license by sponsors to promote the Empower Me Program. The mark is typically displayed, employing a combination of capital and lower case letters, as “EmPower Me”.
[8] On November 27, 2013, Ontario announced that it was launching a website with the name “emPOWERme”, which it described as intended to help energy consumers in Ontario take charge of the power they use by better understanding the province’s electricity system. While the “emPOWERme” site has gone through various iterations since its launch, its aim throughout has been to educate Ontarians about electricity generation, distribution, measurement and conversation aspects of this system.
[9] The affidavit of John Whytock, the Director of the Communications Branch of the Ontario Ministry of Energy, filed by Ontario in support of its position on this motion, also explains that Ontario is in the process of migrating the Ministry of Energy’s website to the main Ontario government website and that, once this process is complete, the “emPOWERme” webpage will no longer exist. Mr. Whytock also explains that Ontario intends to remove all references to the term “emPOWERme” from the content migrated to the new site. As such, as explained by Ontario’s counsel at the hearing of this motion, the “emPOWERme” site may soon cease to exist, although Ontario’s counsel acknowledges that this is not legally relevant to the relief claimed in the present motion.
[10] QPS became aware of Ontario’s website in November 2015 and on December 15, 2015 wrote to Ontario, requesting that it cease and desist from use of the “Empower Me” mark. Ontario responded on February 18, 2016, taking the position that the content and promotion of its website have been limited to the province of Ontario and that it has not used the name “emPOWERme” for any commercial purposes. Ontario also pointed out that the Ontario Ministry of Energy was a public authority under the Act, which authorized it to request that the Registrar give public notice of its adoption and use of “emPOWERme” as an official mark of the Government of Ontario. QPS followed up on August 10, 2016 with a letter from its counsel maintaining its position, and on October 26, 2016, it commenced this legal action.
[11] Ontario subsequently sought official mark status for “emPOWERme”, by writing to the Registrar on December 19, 2016, requesting that the Registrar give public notice of adoption and use by the Ministry of Energy of “emPOWERme” as an official mark pursuant to s 9(1)(n) of the Act. The Registrar gave such public notice on January 10, 2018.
III. Issues
[12] Having considered the various arguments advanced by the parties, I adopt the Plaintiff’s characterization of the issues to be decided by the Court as an appropriate framework to address the parties’ arguments. These issues are as follows:
Is this action suitable for disposition by summary trial?
Does the official mark status of “emPOWERme” afford the Defendant protection against the Plaintiff’s claims?
Did the Defendant infringe the Plaintiff’s trade-mark, contrary to ss 19 and 20 of the Act?
In the alternative, is the Defendant liable to the Plaintiff for passing off, contrary to s 7(b) of the Act?
In the further alternative, did the Defendant depreciate the value of goodwill attaching to the “EMPOWER ME” trade-mark, contrary to s 22 of the Act?
If the Defendant is liable for any of the Plaintiff’s claims, what is the appropriate remedy?
IV. Analysis
A. Is this action suitable for disposition by summary trial?
[13] Ontario does not take issue with the suitability of this action for disposition by summary trial. While Rule 213 permits a party to bring a motion for summary trial, it is Rule 216(6) that entitles the Court to grant judgment, either generally or on an issue. That Rule provides that, to grant judgment, the Court must be satisfied that there is sufficient evidence for adjudication, regardless of the amounts involved, the complexities of the issues and the existence of conflicting evidence, and the Court must not be of the opinion that it would be unjust to decide the issues on the motion.
[14] This Court has held that the factors to be considered in determining whether summary trial is appropriate include the amount involved, the complexity of the matter, its urgency, any prejudice likely to arise by reason of delay, the cost of taking the case forward to a conventional trial in relation to the amount involved, the course of the proceedings, and any other matters that arise for consideration (see Driving Alternative Inc. v Keyz Thankz Inc., 2014 FC 559 [Driving Alternative] at para 36).
[15] I agree with QPS’s position that these factors favour deciding this matter by summary trial. The potential monetary award sought by QPS is relatively modest, which favours avoiding the cost to the parties of a full trial. There are no complex factual issues or issues of credibility to be determined, and the outcome of this matter turns significantly on questions of law. Further, a timely determination of this matter by summary trial is beneficial because of the intention of QPS to expand its business outside British Columbia in the near future, and a determination by summary trial will avoid rather than create delay.
B. Does the official mark status of “emPOWERme” afford the Defendant protection against the Plaintiff’s claims?
[16] This issue raises a pure question of law, which Ontario argues represents a complete defence to all claims asserted by QPS. Ontario takes the position that, because its “emPOWERme” mark has official mark status under s 9(1)(n)(iii) of the Act, the effect of that section and the jurisprudence that has considered it is to immunize Ontario against any claims under the Act arising from its use of that mark. QPS disputes this position, arguing that s 9(1)(n)(iii) affords Ontario certain protections against use by others of marks likely to be mistaken for the official mark, but that it does not immunize Ontario against claims. QPS submits that this point has not been addressed previously in the jurisprudence considering s 9(1)(n)(iii) and that Ontario’s position is not supported by the wording of s 9(1)(n)(iii), consideration of its interaction with other provisions of the Act, or the jurisprudence upon which Ontario relies.
[17] Beginning with the language of s 9(1)(n)(iii), that provision states as follows:
Prohibited marks
Marques interdites
9 (1) No person shall adopt in connection with a business, as a trade-mark or otherwise, any mark consisting of, or so nearly resembling as to be likely to be mistaken for,
9 (1) Nul ne peut adopter à l’égard d’une entreprise, comme marque de commerce ou autrement, une marque composée de ce qui suit, ou dont la ressemblance est telle qu’on pourrait vraisemblablement la confondre avec ce qui suit :
[…]
[…]
(n) any badge, crest, emblem or mark
(n) tout insigne, écusson, marque ou emblème :
[…]
[…]
(iii) adopted and used by any public authority, in Canada as an official mark for goods or services,
(iii) adopté et employé par une autorité publique au Canada comme marque officielle pour des produits ou services,
in respect of which the Registrar has, at the request of Her Majesty or of the university or public authority, as the case may be, given public notice of its adoption and use;
à l’égard duquel le registraire, sur la demande de Sa Majesté ou de l’université ou autorité publique, selon le cas, a donné un avis public d’adoption et emploi;
[18] I agree with the position of QPS that the interpretation of s 9(1)(n)(iii) advanced by Ontario is not supported by the express wording of this provision. Section 9(1)(n)(iii) reads as a prohibition against any person adopting a mark consisting of, or so nearly resembling as to be likely to be mistaken for, an official mark. It does not read as conferring upon the public authority any particular protection against claims for trade-mark infringement or other claims under the Act.
[19] I note that the prohibition contained in s 9(1)(n)(iii) is against adoption, and this Court held in Cable Control Systems Inc. v Electrical Safety Authority, 2012 FC 1272 [Cable Control Systems] at para 6 that parties having prior use of an official mark covered by s 9(1)(n)(iii) may continue to use their mark, although only in association with the wares and services used at the time that the official mark is given public notice. In other words, while this is not in dispute in the present case, it appears clear as a matter of law that the official mark status of Ontario’s mark does not preclude continued use by QPS of its registered “EMPOWER ME” mark in association with the services in connection with which it was registered. Indeed, Ontario does not take the position that QPS is prevented from expanding its use of that mark in association with such services into its intended new markets, Alberta and Ontario, although Ontario submits that this is an open point of law which has not yet been addressed in applicable jurisprudence.
[20] However, Ontario does take the position that s 9(1)(n)(iii) affords it an absolute protection against QPS’s claims. In support of this position, it relies upon the jurisprudence of this Court and others which have interpreted s 9(1)(n)(iii). For instance, in Insurance Corp. of British Columbia v Stainton Ventures Ltd., 2014 BCCA 296 [Stainton] at paras 21-22, the British Columbia Court of Appeal describes the nature of an official mark as follows:
[21] To my knowledge, Canada is the only jurisdiction in the world with legislation that grants such a broad power to “public authorities” and others to create official marks. While bearing some similarity to trade-marks, official marks are not governed by the same rules as trade-marks. Indeed, they are not “registered” as are trade-marks. However, they are recorded by the Registrar of Trade-marks and are included in the Trademarks Database found on the website of the Canadian Intellectual Property Office, an agency of Industry Canada.
[22] In her text, Canadian Trademark Law (Markham: LexisNexis Canada, 2010), Professor Teresa Scassa says the following about the nature of official marks and the process by which they are created:
At 81:
Any entity which qualifies as a “public authority” may request that the Registrar give public notice of the adoption and use of any badge, crest, emblem or mark adopted by that public authority. Public notice is not the same as registration; there is no examination process, and indeed, there is no requirement that official marks conform to any particular standards. There is thus no requirement of distinctiveness, nor is there any requirement that the official mark not be confusing with registered trademarks or marks already used or made known in Canada. They do not need to be renewed, and can only be challenged through an application for judicial review of the decision of the Registrar of Trademarks to give public notice of the mark as an official mark. [Footnotes omitted.]
At 159:
There is no public notice or opposition period for official marks. There is also no examination requirement for the mark — it may be identical to or confusing with existing registered trademarks. It is not necessary for wares or services to be identified with respect to official marks, although some public notices do provide this information. Even if wares or services are specified, these do not limit the scope of the mark. An official mark can be descriptive and is not required to be distinctive. It may also be confusingly similar to an already existing mark. Once public notice is given, no one may adopt the mark, or a mark “so nearly resembling as to be likely to be mistaken for” the official mark. Official marks do not expire. They are not registered trademarks, and are not subject to the same proceedings for examination, opposition, challenge or expungement. As noted by one court, “[o]nce public notice has been given with respect to the adoption and use of an official mark, the mark is ‘hardy and virtually unexpungeable’”. Any challenge to the validity of the mark must be made through the vehicle of an application for judicial review of the Registrar’s decision to give public notice of the adoption and use of the mark. [Footnotes omitted.]
[21] As noted in these passages, public notice can be given so as to confer official mark status, notwithstanding that the official mark may be identical to or confusing with existing registered trade-marks, and there is no requirement for advance notice or any opposition process (see also Canadian Jewish Congress v Chosen People Ministries, Inc., 2002 FCT 613 at para 22). Ontario points out that the courts have affirmed the entitlement of public authorities to adopt prior registered trade-marks as official marks. For instance, in Ontario Association of Architects v Association of Architectural Technologists of Ontario, 2002 FCA 218 at para 34, the Federal Court of Appeal held as follows:
[34] An important effect of the giving of public notice under paragraph 9(1)(n)(iii) is that, from that date, other persons are prevented from using any mark "as a trade mark or otherwise" that is likely to be mistaken for the official mark (section 11), except in connection with goods or services with which the mark was used before public notice was given of the official mark: Canadian Olympic Association v. Konica Canada Inc., [1992] 1 F.C. 797 at paras. 21-23 (C.A.). Moreover, the Registrar may not refuse to give public notice of the adoption and use of a mark as an official mark for wares or services on the ground that it is merely descriptive, is not distinctive of the public authority's wares or services, or is liable to be confused with another's mark. Indeed, the Registrar has virtually no discretion to refuse to give notice of the adoption and use of a mark as an official mark, once the body making the request establishes that the statutory criteria have been met: Mihaljevic v. British Columbia (1988), 22 F.T.R. 59 at 88-89, aff'd (1990), 34 C.P.R. (3d) 54 (F.C.A.). [Emphasis added]
[22] Similarly, in Cable Control Systems at para 18, this Court explained the following:
[18] In my opinion, the greater context of the use of the Official Mark brought forward by Cable Control does not make the Registrar’s decision unreasonable. I am satisfied that the additional evidence would not have had a material effect on the Registrar’s decision to give public notice of the Official Mark. As pointed out by Counsel for ESA, the Registrar was not required to inquire into other parties’ registrations or uses of the same mark because any such use would have been irrelevant to the decision to give public notice of the Official Mark. All that ESA was required to do was satisfy the Registrar that it was a public authority and that it had adopted and used the mark in question (FileNET Corp., [2002] FCA 418 at para 7 (FCA)). [Emphasis added]
[23] I accept that the jurisprudence is clear that the fact a public authority’s mark may be confusing with another party’s mark is not a basis for the Registrar to decline to give public notice and thereby confer official mark status upon the authority’s mark, nor does such confusion present a basis to challenge the Registrar’s decision to give public notice. However, I agree with the position of QPS that this principle is conceptually distinct from the question whether a public authority’s adoption and use of an official mark which is confusing with a prior registered trade-mark may nonetheless constitute infringement under s 19 or 20 of the Act or support a claim for passing off or depreciation of goodwill under the Act. None of the authorities relied upon by Ontario addresses this question.
[24] For the most part, the authorities cited by Ontario involve applications for judicial review, seeking to challenge a decision by the Registrar to give public notice under s 9(1)(n)(iii) of the Act. Such applications, based on an argument that that an official mark is confusing with a prior registered trade-mark, have been uniformly unsuccessful. Stainton is one case that involved a civil action, but not an action for trade-mark infringement brought by the owner of a prior registered mark. Rather, the action in Stainton was brought by the public authority, the Insurance Corporation of British Colombia, alleging that the defendant was using the plaintiff’s official mark ICBC in internet domain names without authorization. While the Court in Stainton employed the broad language quoted above in explaining the nature of an official mark, that explanation was not given in the context of a civil claim against a public authority for trade-mark infringement.
[25] The official mark ICBC was also the subject of this Court’s decision in ICBC v Canada (Registrar of Trade Marks), [1980] 1 FC 669 [ICBC] at paras 73-75, in which Justice Cattanach provided the following explanation of the effect of s 9(1)(n)(iii):
[73] Clearly section 9(1)(n)(iii) contemplates the use of an official mark which a public authority has seen fit to adopt to be a use exclusive to that authority. The purpose of the Registrar giving public notice of the adoption and use of an official mark is to alert the public to that adoption as an official mark by the public authority to prevent infringement of that official mark. It does not, in my view, for the reasons previously expressed bestow upon the Registrar any supervisory functions.
[74] I fully realize the consequences. A public authority may embark upon a venture of supplying wares and services to the public and in doing so adopt an official mark. Having done so then all other persons are precluded from using that mark and, as a result of doing so, on its own initiative, the public authority can appropriate unto itself the mark so adopted and used by it without restriction or control other than its own conscience and the ultimate will of the electorate expressed by the method available to it.
[75] That, in my opinion, is the intention of Parliament which follows from the language of section 9 of the Act and that is the policy which Parliament, in its omnipotent wisdom, has seen fit to implement by legislation.
[26] Again, this language is very broad, but it is important to recognize the context in which the Court gave this explanation. ICBC involved an appeal under s 56 of the Act, challenging the decision of the Registrar refusing to give public notice of the plaintiff public authority’s use and adoption of an official mark. As such, Justice Cattanach’s explanation relates to the lack of discretion available to the Registrar in deciding whether to give public notice, including such discretion arising from conflict of the official mark with registered trade-marks, and cannot be regarded as authority for Ontario’s proposition that official mark status insulates it against QPS’s claims. Indeed, while paragraph 84 of ICBC expresses the view that the normal commercial trade-mark registered by a trader must defer to the official mark adopted and used by public authority, the decision provides no explanation of the details of what is meant by this, and such view is in any event clearly obiter, as Justice Cattanach expressly states that this particular issue was not before him.
[27] Ontario does identify one decision which considered the effect of official mark status as a defence to a civil claim. In W & H Ventures Ltd. (c.o.b. Michel’s Bakery Café) v Manitoba Lotteries Corp. (c.o.b. Michele’s Restaurant), 4 CPR (4th) 180 [W & H], the plaintiff, W & H, sought an injunction against the defendant, Manitoba Lotteries, to restrain it from carrying on business under the name Michele’s Restaurant. The plaintiff had previously registered the name Michel’s Bakery Café under the Business Names Registration Act of Manitoba and brought an action in passing off, including a request for injunctive relief. In rejecting that request, the Manitoba Court of Queen’s Bench found that the plaintiff had failed to satisfy the test for an injunction. However, the Court also expressed at paragraph 17 its views on an additional argument raised by the defendant, that it could have defended the claim by obtaining official mark status for Michele’s Restaurant:
[17] As was stated by Twaddle J.A. in Reference re Sections 91 & 92 of Constitution Act, 1867, [1991] 4 W.W.R. 193 at p. 209:
… the province cannot regulate the use of a trademark because it has a similarity to an existing business name in the province. So long as the trademark is used in association with the product or the service which it identifies, the trademark owner may use it notwithstanding that it may cause confusion between the business of the trademark owner and that of a local business using a similar name. A dispute over such confusion must be resolved under the federal laws.
In short, as a matter of law, it appears that the defendant can exercise its rights under s. 9 of the Trademarks Act and upon unilaterally appropriating the mark which includes a business name, can thereafter proceed to use that name despite the registration of what might be described as a similar name under the Act. [Emphasis added]
[28] Although this statement is obiter, at first blush it appears to support Ontario’s position, as the statement was made in the context of an argument by the defendant that s 9 of the Act can provide a defence against a civil claim. However, as submitted by QPS, a careful examination of W & H reveals that the Manitoba Court of Queen’s Bench was not expressing a view, even in obiter, on the issue before the Court in the case at hand. Rather, the analysis in paragraph 17 of W & H turned on a constitutional point, that provincial business name legislation cannot regulate the use of a trade-mark. The reference at the end of paragraph 17 to the “Act”, a term which is defined in the decision, relates to the Business Names Registration Act of Manitoba. W & H does not express a conclusion on the extent of a public authority’s rights under s 9 of the Trade-Marks Act, in the context of a pre-existing registration of a similar trade-mark under that same federal legislation.
[29] Having considered the authorities relied upon by Ontario on this issue, I agree with the position expressed by QPS that none of these cases has addressed directly the issue presently before the Court, i.e. whether s 9(1)(n)(iii) serves to protect the public authority against claims of the sort asserted by QPS in this case. I also agree with QPS’s argument that, in the absence of case law interpreting this section as Ontario advocates, the Court should not adopt an interpretation that confers a statutory immunity upon public authorities without clear legislative language supporting this interpretation. As previous noted, the language of s 9(1)(n)(iii) prohibits certain activities by others, once public notice of use the official mark has been given. However, it does not expressly confer upon public authorities the right to use an official mark in a manner which contravenes other provisions of the Act. There is nothing in the language of the section which eliminates rights already conferred upon the owner of a registered trade-mark. Indeed, as noted above, Cable Control Systems has determined that a party having prior use of an official mark covered by s 9(1)(n)(iii) may continue to use its mark in association with the wares and services used at the time of public notice.
[30] I also find that the consideration of other provisions of the Act supports QPS’s position. It notes that s 20(1), which identifies activities constituting trade-make infringement, applies to any “person” who carries out such activities. Similarly, s 7(b), which codifies the common law tort of passing off, states that no “person” shall carry out the activities comprising that tort, and s 22 states that no “person” shall use a trade-mark registered by another person in a manner that is likely to have the effect of depreciating the value of the goodwill attaching thereto. QPS emphasizes that “person” is defined in s 2 of the Act as including the administrative authority of any country, state, province, municipality or other organized administrative area.
[31] While the parties’ arguments did not extend to any relevant distinction to be drawn between the meanings of the terms “administrative authority” and “public authority”, the breadth of these terms supports the conclusion that at least some public authorities fall within the definition of “person”. QPS argues that it would therefore be an unusual result if public authorities, which are subject to the same liabilities as any other person under ss 7(b), 20(1) or 22 of the Act, could insulate themselves from liability simply by requesting public notice under s 9(1)(n)(iii). QPS notes that it is not unusual for government to be active in an industry in a manner which competes with the private sector, and the interpretation of s 9(1)(n)(iii) for which Ontario advocates would allow a government actor of that sort to adopt with impunity a mark which duplicates the intellectual property of its private sector competitor. QPS argues that, without language expressly so providing, this cannot be the effect of s 9(1)(n)(iii) that was intended by Parliament.
[32] Ontario spoke to this argument at the hearing of this matter and submitted that the response lies in the nature of a public authority and the responsibilities associated with such a role. In other words, Ontario argues that a public authority can be expected to act responsibly and would not exercise its entitlements under s 9(1)(n)(iii) in a manner which abuses such entitlements and intentionally infringes the trade-mark rights of commercial parties. I do not find this response particularly compelling. I accept that it would be the expectation that a public authority would act responsibly and avoid any abuse of its entitlements. However, I have difficulty relying on such an expectation to conclude that Parliament intended to confer upon public authorities the right to infringe others’ pre-existing intellectual property rights, particularly when one considers the broad range of bodies constituting public authorities to which s 9(1)(n)(iii) potentially applies.
[33] Finally, I have considered an argument by Ontario that it was a prerequisite to the Registrar giving public notice under s 9 that Ontario already have adopted and used its mark prior to requesting such notice. I agree that this is the applicable law (see Ontario Association of Architects v Association of Architectural Technologists of Ontario, [2001] 1 FC 577 at para 23). However, in my view, the existence of this prerequisite does not logically support a conclusion that Parliament intended that the public authority be immune from any claims under the Act arising from the required adoption and use.
[34] Having concluded that s 9(1)(n)(iii) of the Act does not represent a defence to QPS’s claims, I will proceed to consider whether QPS has established those claims.
C. Did the Defendant infringe the Plaintiff’s trade-mark, contrary to ss 19 and 20 of the Act?
[35] QPS asserts its claim for trademark infringement under both ss 19 and 20 of the Act. At the hearing of its summary trial motion, I asked QPS’s counsel to explain its claim under s 19, which applies where a defendant has used a plaintiff’s trade-mark, as opposed to using a mark which is confusing with the plaintiff’s trademark, the situation addressed by s 20. Counsel responded that the only differences between QPS’s mark and that of Ontario are spacing and capitalization. QPS registered its mark as “EMPOWER ME” and typically displays its mark employing a combination of capital and lower case letters as “EmPower Me”. Ontario displays its mark as “emPOWERme”. As QPS notes, while the letters are the same, the spacing and capitalization differ between the two marks. They are not identical, and my conclusion is that s 19 of the Act is not engaged (see Cie générale des établissements Michelin – Michelin & Cie v National Automobile, Aerospace, Transportation and General Workers Union of Canada (CAW - Canada) (1996), 124 FTR 192 [Michelin] at para 19).
[36] Turning to s 20, QPS relies on subsection 20(1)(a), which provides as follows:
Infringement
Violation
20 (1) The right of the owner of a registered trade-mark to its exclusive use is deemed to be infringed by any person who is not entitled to its use under this Act and who
20 (1) Le droit du propriétaire d’une marque de commerce déposée à l’emploi exclusif de cette dernière est réputé être violé par une personne qui est non admise à l’employer selon la présente loi et qui :
(a) sells, distributes or advertises any goods or services in association with a confusing trade-mark or trade-name;
a) soit vend, distribue ou annonce des produits ou services en liaison avec une marque de commerce ou un nom commercial créant de la confusion;
[37] The question for the Court’s determination, in connection with the s 20 claim, is whether Ontario’s operation of its “emPOWERme” website represents distribution or advertisement of services in association with a trade-mark that is confusing with QPS’s registered mark. The test for confusion is prescribed by s 6 of the Act. However, before considering the issue of confusion, I wish to address whether Ontario’s operation of its website represents distribution or advertisement of services as required by s 20(1)(a).
[38] The Statement of Defence filed by Ontario in this action takes the position that Ontario does not use its “emPOWERme” mark to provide any kind of service and that it does not use the mark for any commercial purpose. In its Memorandum of Fact and Law and at the hearing of the summary trial motion, Ontario did not particularly advance the argument that its website does not provide a service. Ontario also clarified at the hearing that its position is that whether or not it used its mark for any commercial purpose is relevant to QPS’s claim for depreciation of goodwill under s 22 of the Act but is not relevant to the infringement claim under s 20.
[39] I have no difficulty concluding that Ontario’s operation of its website constitutes a service. As explained by this Court in TSA Stores, Inc. v Canada (Registrar of Trade-Marks), 2011 FC 273 at paras 16-17, while the word “services” is not defined in the Act, it has been held that this term should be given a liberal interpretation and that, as long as some members of the public, consumers or purchasers, receive a benefit from the activity, it is a service. As explained in Mr. Whytock’s affidavit, the purpose of the “emPOWERme” website is to educate Ontarians about the province’s electricity system, namely its generation, distribution, measurement and conservation aspects. While consumers in the province of Ontario obtain electricity from a local distribution company, not from the Ministry of Energy, the Ministry has a responsibility to stimulate energy conservation and encourage prudence in the use of energy in Ontario. I find that the provision of the website, with a view to educating electricity consumers and assisting them to conserve electricity, represents a service for purposes of the Act. Indeed, this conclusion is inescapable, given the fact that Ontario has obtained for its “emPOWERme” mark official mark status which, under the language of s 9(1)(n)(iii), applies only to marks used for goods or services.
[40] As to whether that service is commercial in nature, I note that, in support of its position on this point under s 22, Ontario relies upon the decision of the British Columbia Supreme Court in British Columbia Automobile Assn. v Office and Professional Employees’ International Union, Local 378, 2001 BCSC 156 [British Columbia Automobile Assn.], which held at para 153 that the apparent non-commercial status of the defendant’s website in that case resulted in a conclusion that the trade-marks at issue were not used in association with wares or services and took the defendant’s use of the plaintiff’s trade-marks outside of the scope of s 22 of the Act.
[41] As Ontario is not taking the position that a commercial purpose is required to constitute infringement under s 20, that question is not before me in considering the s 20 claim. However, I note in any event that I find compelling the arguments by QPS that a defendant’s activities need not necessarily be commercial in nature in order to a support a s 20 claim, at least where a trade-mark is used in connection with services. I am conscious that British Columbia Automobile Assn. relied in part on Michelin in concluding that an element of commercial use is required to support a s 22 claim, and that this Court’s decision in Michelin addressed claims under both s 20 and s 22. At paragraph 41 of Michelin, Justice Teitelbaum explained that the resolution of that case, which involved the defendant union’s distribution of leaflets displaying the plaintiff Michelin’s trade-marks, turned on whether the plaintiff’s trade-marks were used in association with the defendant’s wares or services. In concluding that they were not so used, the Court relied on ss 4(1) and (2) of the Act, which provide as follows:
When deemed to be used
Quand une marque de commerce est réputée employée
4 (1) A trade-mark is deemed to be used in association with goods if, at the time of the transfer of the property in or possession of the goods, in the normal course of trade, it is marked on the goods themselves or on the packages in which they are distributed or it is in any other manner so associated with the goods that notice of the association is then given to the person to whom the property or possession is transferred.
4 (1) Une marque de commerce est réputée employée en liaison avec des produits si, lors du transfert de la propriété ou de la possession de ces produits, dans la pratique normale du commerce, elle est apposée sur les produits mêmes ou sur les emballages dans lesquels ces produits sont distribués, ou si elle est, de toute autre manière, liée aux produits à tel point qu’avis de liaison est alors donné à la personne à qui la propriété ou possession est transférée.
Idem
Idem
(2) A trade-mark is deemed to be used in association with services if it is used or displayed in the performance or advertising of those services.
(2) Une marque de commerce est réputée employée en liaison avec des services si elle est employée ou montrée dans l’exécution ou l’annonce de ces services.
[42] The Court in Michelin noted that s 4(1), related to use of a trade-mark in association with goods, required that association to be in the normal course of trade, and concluded that the union’s distribution of leaflets to recruit members did not qualify as the sort of commercial activity necessary to meet that requirement. Similarly, the Court considered whether the distribution of leaflets could constitute advertising of the union’s services under s 4(2) but concluded that it did not, as advertising also carried a commercial connotation that was not borne out in that case.
[43] However, QPS points out that s 4(2) deems a trademark to be used in association with services if it is used or displayed either in the advertising of those services or in the