UNICAST SA v. South Asian Broadcasting Corporation Inc.

UNICAST SA v. South Asian Broadcasting Corporation Inc.
Court (s) Database
Federal Court Decisions
Date
2014-03-27
Neutral citation
2014 FC 295
File numbers
T-1766-12
Decision Content
Federal Court
Cour fédérale
Date: 20140327
Docket: T-1766-12
Citation: 2014 FC 295
Ottawa, Ontario, March 27, 2014
PRESENT: The Honourable Mr. Justice Simon Noël
BETWEEN:
UNICAST SA
Applicant
and
SOUTH ASIAN BROADCASTING CORPORATION INC.
Respondent
REASONS FOR JUDGMENT AND JUDGMENT
I. Introduction
[1] This is an application brought by Unicast SA [the “Applicant”] under section 57 of the Trade-marks Act, RSC, 1985, c T-13 [the “Act”] calling for the invalidation of Canadian Trade-Mark Registration No. TMA715146, held by South Asian Broadcasting Corporation Inc. [the “Respondent”] and the expungement of said trade-mark from the Canadian Trade-Mark Register.
[2] For the following reasons, this Court has decided to dismiss this application for expungement.
II. The registration at issue
[3] The particulars of the registered trade-mark at issue in the present matter are as follows:
Registration Number: TMA715146
Date of advertisement: September 9, 2007
Date of Registration: May 26, 2008
Registered Owner: South Asian Broadcasting Corporation Inc.
Trade-Mark: RED FM
Services for which the
mark is registered: (1) Operation of a radio station, radio broadcasting, and
radio broadcast programming reflecting ethnic diversity.
III. The parties
A. The Applicant
[4] The Applicant, Unicast SA, is a radio broadcaster based in Switzerland that operates an FM radio station in association with the trade-mark “ROUGE FM”. This radio station also broadcasts its programming to surrounding French-speaking countries via the FM radio band and across the world, including in Canada, through its website. The Applicant owns two radio stations (including the ROUGE FM station), a television station, an advertising agency, and several websites, mobile applications, webradios and webtvs.
[5] The ROUGE FM radio station was previously known as Radio Framboise S.A. until a change in the ownership of the company resulted in the transition to ROUGE FM between March and June 2005. The newly-branded radio station was officially launched on July 1, 2005. As part of the transition from Radio Framboise S.A. to ROUGE FM, the Applicant wanted to make use of more than simple FM broadcasting in order to reach French-speaking areas out of Switzerland, including Canada. As such, the ROUGE FM website was launched on the same day as the radio station. It is available throughout the world, and it offers a live streaming of the radio broadcast programming. The radio station’s programming is also available through an application for smart phones launched in 2010.
[6] The rights in the ROUGE FM trade-mark in Switzerland were transferred to the Applicant on December 18, 2009, who has been a majority shareholder of ROUGE FM since August 2011.
[7] Ever since its launch, an increasing number of Canadians have visited the website – so much so that Canada has become ROUGE FM’s third largest audience after Switzerland and France. The radio station has also been active on social media networks, interacting with listeners, including Canadians.
B. The Respondent
[8] The Respondent, South Asian Broadcasting Corporation Inc., a radio broadcaster based in Surrey, British-Columbia (Canada), was founded in September 2004 to offer radio programming aimed at the local South Asian audiences. On December 22, 2005, the Respondent filed a trade-mark application to register “RED FM” based on previous use.
[9] The trade-mark was duly registered on May 26, 2008. The Respondent is present in Canada and holds all the required licences from the Canadian Radio-Television and Telecommunications Commission [the “CRTC”] and from Industry Canada in order to operate its radio station.
IV. Factual background
[10] The Applicant filed a trade-mark application in Canada on September 8, 2011 in view of registering the ROUGE FM trade-mark in relation to services related to the following (the application was prepared in French):
Communications radiophoniques;
[translation] Radio communications;
Diffusions d’émissions radiophoniques;
[translation] Broadcasting of radio programming;
Transmission de son, de messages par terminaux d’ordinateurs, nommément diffusion de programmes de musique, de radio par ordinateurs.
[translation] Transmission of sound, information and messages by computer terminals, namely the broadcast of music and radio programming by computer.
In its application, the Applicant claimed to have used the ROUGE FM trade-mark beginning in July 2005.
[11] A Canadian Intellectual Property Office Examiner raised an objection with respect to the Applicant’s application for registration on February 29, 2012 on the ground that the requested trade-mark registration, ROUGE FM, could be considered confusing with an existing registered trade-mark under paragraph 12(1)(d) of the Act, i.e. Canadian Trade-mark Registration No. TMA715146, RED FM, owned by the Respondent. As stated above, this trade-mark was registered on May 26, 2008 on the basis of previous use since December 21, 2005.
V. The alleged grounds for expungement
[12] The Applicant claims that the Canadian Trade-Mark Registration No. TMA715146, RED FM, should be held invalid and expunged by this Court:
1. because the Respondent made a fraudulent misrepresentation with respect to the date of first use in Canada [the “misrepresentation ground”], or
2. alternatively, because the Respondent was not the person entitled to secure a registration at the date of first use, pursuant to section 18 in fine of the Act, given that the Applicant was already using, at that time, its ROUGE FM trade-mark in Canada with respect to similar services [the “non-entitlement ground”].
VI. The Applicant’s evidence and submissions
A. The Applicant’s submissions
[13] As noted above, the Applicant claims that the Respondent’s RED FM trade-mark should be held invalid and expunged by this Court because the Respondent made a fraudulent misrepresentation and because the Respondent was not the person entitled to secure a registration at the date of first use, as the Applicant was already using ROUGE FM at that time with respect to similar services.
1. Misrepresentation ground
[14] The Applicant argues that the registration at issue was fraudulently obtained because, although the Respondent claimed in its trade-mark registration application to have already been using RED FM for the operation of a radio station and for radio broadcasting services, there is contradictory evidence as to whether the radio station started broadcasting on December 21, 2005, January 20, 2006 or January 23, 2006. In fact, the Respondent has been unable to provide tangible evidence – press release, news article, etc. – confirming that the trade-mark was effectively used on December 21, 2005. The Respondent even refused to produce the financial statements related to its first two years of operation. What is more, a document submitted by the Respondent to the CRTC clearly shows that the Respondent started broadcasting on January 23, 2006. There are also inconsistencies regarding the hiring of radio hosts and the alleged date on which the radio went into operation.
[15] Consequently, as the Respondent was not able to prove it was actively broadcasting programming on December 21, 2005, it can be assumed that it knowingly made a fraudulent misrepresentation in applying for its trade-mark on December 22, 2005 based on previous use. This ground is of particular importance considering that if this Court assents the Respondent’s trade-mark despite the fact that it is clearly based on a misrepresentation, this would preclude other rightful trade-mark owners, including the Applicant, from presenting their own application in order to have their trade-mark duly recognized and registered.
2. Non-entitlement ground
[16] Alternatively, the Applicant submits that the trade-mark registration for RED FM is invalid under section 18 in fine of the Act because the Respondent was not the entitled person to apply for the registration as contemplated by paragraph 16(1)(a) of the Act. For the following reasons, the Applicant is of the opinion that it, and not the Respondent, was the entitled person to do so.
[17] Confusion (subsection 17(1) of the Act) – The ROUGE FM and RED FM trade-marks are, for all intents and purposes, identical as they are the direct equivalents of one another in French and English. Further, the trade-marks must be considered from the point of view of the average Canadian consumer who, it can be assumed, is bilingual because ROUGE FM broadcasts its content across Canada, including in the French-speaking province of Quebec.
[18] Previous use (subsection 17(1) of the Act) – Regarding the previous use of the confusing trade-mark, the Applicant claims that it has used ROUGE FM in Canada with respect to similar services as the Respondent’s RED FM despite the fact that it offers its programming from outside Canada and via the Internet rather than on traditional airwaves and that it does not hold a licence from the CRTC.
[19] The Applicant submits that its radio station actually uses the ROUGE FM trade-mark with respect to “radio broadcasting” services because the CRTC has interpreted the notion of “broadcasting” as being technology neutral, meaning that broadcasting through the Internet nonetheless constitutes “broadcasting” for the purposes of Canadian legislation. A distinction between the two types of transmission would be inconsequential. This also explains why the Applicant is not required to hold a CRTC licence. In addition, the Applicant is of the view that the use of a trade-mark in Canada in association with a service originating from outside the country – e.g. Switzerland – and that is available in Canada still constitutes use of the trade-mark pursuant to paragraph 16(1)(a) of the Act. Indeed, subsection 4(2) of the Act states that “[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” and, in this regard, this Court has stated on a number of occasions that the location from where the information originates is of no importance, as long as the trade-mark appears on a Canadian computer screen. Thus the Applicant argues that the ROUGE FM trade-mark has been constantly used and displayed on its website since July 2005 with respect to “radio broadcasting services.”
[20] Also, building on the submissions related to the misrepresentation ground, above, considering that the Respondent failed to establish that its radio station was in operation as of December 21, 2005, it most certainly failed to establish its use of the RED FM trade-mark on that date, and much less that it had used the RED FM trade-mark before July 2005.
[21] Lastly, regarding the question of whether this previous use of the trade-mark is sufficient, the Applicant adds that although it was not required to do so, it nonetheless produced evidence of hits on its website originating from Canada for the period between July and December 2005. The Applicant reminds this Court that evidence required under paragraph 16(1)(a) of the Act is minimal and that it is not necessary to prove that a Canadian actually listened to the radio programming so long as the services were offered to Canada and could have been performed in Canada.
[22] Non-abandonment (subsection 17(1) of the Act) – The Applicant claims to have submitted evidence which establishes that the trade-mark ROUGE FM has been constantly used on its website since July 2005. Therefore, the Applicant had not abandoned the trade-mark at the date of the advertisement of the Respondent’s trade-mark registration application.
[23] Consequently, the Applicant having proved its previous use and non-abandonment of the confusing ROUGE FM trade-mark for the purposes of subsection 17(1) and paragraph 16(1)(a) of the Act, the Respondent most certainly could not have been the person entitled to seek registration for the confusing Canada Trade-mark Registration No. TMA715146 and, as such, this trade-mark is to be held invalid and expunged pursuant to paragraph 18(1)(a) in fine of the Act.
B. The Applicant’s evidence
[24] The Applicant submitted evidence in support of its claims. In addition to what has been mentioned in the Applicant’s submissions above and to an affidavit produced by Frédéric Piancastelli, the Applicant’s CEO, the Applicant provided this Court, amongst other evidence, with numerous screen captures. It is submitted that these screen captures establish the display of the ROUGE FM trade-mark on its website, starting July 1, 2005 and going through 2012. Statistical data is also submitted concerning the number of people around the world who have visited the Applicant’s website starting in 2005 as well as actual listenership statistics starting in 2009. The Applicant has also submitted messages the radio station received via Facebook from Canadian listeners.
VII. The Respondent’s submissions
[25] The Respondent argues that the Applicant, who bears the onus of proving its case, failed to establish, on a balance of probabilities, that the trade-mark registration of RED FM is invalid on any of alleged grounds. In support of its claim, the Respondent puts forward five main arguments, namely that the Applicant:
(1) failed to prove that the Respondent obtained its registration for RED FM fraudulently and that this registration is void ab initio;
(2) failed to prove that it used its trade-mark ROUGE FM in the period of July to December 2005, i.e. prior to the Respondent using RED FM in Canada;
(3) failed to establish the likelihood of confusion between the two trade-marks;
(4) would not be entitled to register its ROUGE FM trade-mark, as it would be misdescriptive because in Canada the Applicant uses the Internet and not actual FM airwaves; and
(5) would not have been authorized to register its ROUGE FM trade-mark in 2005 because it did not obtain the statutory and regulatory authorizations required to perform services in Canada which are similar to those for which the Respondent is registered.
A. RED FM trade-mark not void ab initio
[26] The Applicant claims that the Respondent fraudulently obtained its RED FM trade-mark registration mainly based on a document produced by the Respondent itself to the CRTC and that indicates that broadcast began in January 2006. However, the Respondent submitted material to the effect that this document merely refers to the commencement of the broadcast of actual radio programming. Prior to this, there was a test loop from December 2005 to January 2006, and this test loop qualifies as broadcasting to the general public for the purposes of Canadian legislation. What is more, contrary to the Applicant’s suggestion, the Respondent in fact provided a large number of documents, including financial documents, which relate to the commencement of broadcast operations in 2005.
B. No proof of the use of the ROUGE FM trade-mark in Canada
[27] The Applicant also failed to establish having used its trade-mark in Canada between July and December 2005. The jurisprudence on which the Applicant relies must be interpreted in context. More particularly, although it was determined that a trade-mark appearing on a computer screen website in Canada constitutes use under subsection 4(2) of the Act independently of the origin of the information, this was not to be interpreted as a general statement. Indeed, the Courts have further specified that mere display of a trade-mark could only be considered “use” with respect to information services relating to and provided to Canada over the web. The distinction lies between services performed in Canada and services performed outside Canada; case law has interpreted that when advertising (display) is the only mode of use under subsection 4(2) of the Act, the services advertised must be available in Canada. In the present case, the Applicant does not offer services in Canada but in Switzerland.
[28] More importantly, the Applicant’s interpretation of the case law – that a mere display of a trade-mark constitutes an advertising of services under subsection 4(2) of the Act – would render useless the Act’s distinction between “use” (under section 4) and “making known” (under section 5) in Canada.
[29] In addition, the Respondent raises serious doubts with respect to the Applicant’s evidence concerning user statistics and alleged hits on the Applicant’s website, in particular the fact that the Applicant’s affiant acknowledged, during cross-examinations on affidavit, that there was no way of knowing how many hits for the month of July 2005 actually came from Canada, that there were no statistics on listenership activity prior to 2009 and that there was no way of knowing whether a user who hits on the Applicant’s website really listened to the audio stream. Therefore, there is no solid proof that live Canadians have accessed the Applicant’s website between July and December 2005.
[30] The Respondent claims to have commenced broadcasting of its radio station on December 21, 2005 and used the trade-mark RED FM as of that date. As noted above, the Respondent applied for the registration of the trade-mark the following day, and registration occurred on May 26, 2008. To the contrary of the Applicant, the Respondent is based in Canada. The trade-mark was used starting December 21, 2005 both on-air during programming as well as through the Radio Broadcast Data System [RBDS] signal, which sent out “RED FM” as a message to appear on the screen of so equipped radio receivers.
[31] Moreover, the Respondent’s trade-mark registration relates to the “Operation of a radio station, radio broadcasting, and radio broadcast programming reflecting ethnic diversity”, services which are not offered by the Applicant. In fact, the Applicant offers radio broadcasting services in Switzerland and only offers a link to the audio stream in Canada. As stated above, the Applicant’s 2011 trade-mark application was for “radio communications, the broadcasting of radio programming, the transmission of sound, information and messages by computer terminals, namely the broadcast of music and radio programming by computer. [My emphasis.]” As such, the Respondent submits that the Applicant could only argue that it has offered, in Canada, the second portion of the listed services (the underlined portion, above) [the “second set of services”]. However, the Applicant has failed to establish even that, given the unconvincing evidence submitted in this regard, especially the lack of statistics on listenership prior to 2009.
1. Lack of confusion
[32] The Applicant failed to establish that given the circumstances of the case at bar, the trade-marks ROUGE FM and RED FM are indeed confusing pursuant to the test prescribed by subsection 6(5) of the Act. The Respondent claims that the first four considerations of the test – paragraphs 6(5)(a) through (d) – actually favour its position and not the Applicant’s.
2. Misdescriptiveness
[33] The Respondent reminds this Court that, pursuant to paragraph 12(1)(b) of the Act, a trade-mark cannot be registered if it is “[…] clearly descriptive or deceptively misdescriptive in the English or French language of the character or quality of the wares or services in association with which it is used or proposed to be used […].” In the case at hand, the second component of the ROUGE FM trade-mark – FM – explicitly refers to services of radio transmission through the airwaves, and it would thus be misdescriptive for a corporation to register ROUGE FM in relation to services offered in Canada via the web only. Consequently, the Applicant could not even contemplate having this trade-mark registered.
3. Lack of statutory authorization
[34] As noted above, of all the services the Applicant alleges to have performed, the only ones that are comparable to those offered by the Respondent are the ones concerning “radio communications, the broadcasting of radio programming” services. Not only did the Applicant not perform these services, but it could not have done so as it did not hold the required CRTC and Industry Canada licences, pursuant to the terms of the Broadcasting Act, SC 1991, c 11 [the “Broadcasting Act”], and the Radio Communication Act, RSC, 1985, c R-2. Therefore, the Applicant would never have been successful had it tried to register its trade-mark in 2005.
VIII. The issues raised
[35] In order to determine whether Canadian Trade-mark Registration No. TMA715146 is to be held invalid and expunged, this Court must address the following questions:
1. Is Canadian Trade-mark Registration No. TMA715146, RED FM, void ab initio because the Respondent made a fraudulent misrepresentation with respect to the date of first use in Canada?
2. Alternatively, is Canadian Trade-mark Registration No. TMA715146, RED FM, invalid pursuant to subsection 18(1) in fine of the Act because the applicant for registration, the Respondent, was not the person entitled to secure registration considering that, at the date on which it first used it, it caused confusion with the ROUGE FM trade-mark used in Canada by the Applicant (under paragraph 16(1)(a) of the Act)?
This particular issue encompasses two sub-questions:
2.1 Did the Applicant establish having used its ROUGE FM trade-mark prior to December 2005, i.e. prior to the Respondent using RED FM, with respect to radio broadcast services and, if so, does this warrant the expungement of the Respondent’s trade-mark under section 17 of the Act?
2.2 Did the Applicant establish having used its ROUGE FM trade-mark prior to December 2005, i.e. to the Respondent using RED FM, with respect to the second set of services of its trade-mark application and, if so, does this warrant the expungement of the Respondent’s trade-mark under section 17 of the Act?
IX. Analysis
A. Jurisdiction and Standing
[36] It must first be determined whether this Court has jurisdiction to hear the present application and whether the Applicant has proper standing to bring this application forward. Under subsection 57(1) of the Act, this Court has exclusive jurisdiction to order the expungement of a registered trade-mark. Also, this disposition gives standing to the Applicant to submit its application as a “person interested” in the matter:
Trade-marks Act, RSC, 1985,
c T-13
LEGAL PROCEEDINGS
Exclusive jurisdiction of Federal Court
57. (1) The Federal Court has exclusive original jurisdiction, on the application of the Registrar or of any person interested, to order that any entry in the register be struck out or amended on the ground that at the date of the application the entry as it appears on the register does not accurately express or define the existing rights of the person appearing to be the registered owner of the mark.
[My emphasis.]
Loi sur les marques de commerce, LRC (1985),
ch T-13
PROCÉDURES JUDICIAIRES
Juridiction exclusive de la Cour fédérale
57. (1) La Cour fédérale a une compétence initiale exclusive, sur demande du registraire ou de toute personne intéressée, pour ordonner qu’une inscription dans le registre soit biffée ou modifiée, parce que, à la date de cette demande, l’inscription figurant au registre n’exprime ou ne définit pas exactement les droits existants de la personne paraissant être le propriétaire inscrit de la marque.
[Non souligné dans l’original.]
[37] In addition, section 17 of the Act provides as follows:
Trade-marks Act, RSC, 1985,
c T-13
VALIDITY AND EFFECT OF REGISTRATION
Effect of registration in relation to previous use, etc.
17. (1) No application for registration of a trade-mark that has been advertised in accordance with section 37 shall be refused and no registration of a trade-mark shall be expunged or amended or held invalid on the ground of any previous use or making known of a confusing trade-mark or trade-name by a person other than the applicant for that registration or his predecessor in title, except at the instance of that other person or his successor in title, and the burden lies on that other person or his successor to establish that he had not abandoned the confusing trade-mark or trade-name at the date of advertisement of the applicant’s application.
When registration incontestable
(2) In proceedings commenced after the expiration of five years from the date of registration of a trade-mark or from July 1, 1954, whichever is the later, no registration shall be expunged or amended or held invalid on the ground of the previous use or making known referred to in subsection (1), unless it is established that the person who adopted the registered trade-mark in Canada did so with knowledge of that previous use or making known.
[My emphasis.]
Loi sur les marques de commerce, LRC (1985),
ch T-13
VALIDITÉ ET EFFET DE L’ENREGISTREMENT
Effet de l’enregistrement relativement à l’emploi antérieur, etc.
17. (1) Aucune demande d’enregistrement d’une marque de commerce qui a été annoncée selon l’article 37 ne peut être refusée, et aucun enregistrement d’une marque de commerce ne peut être radié, modifié ou tenu pour invalide, du fait qu’une personne autre que l’auteur de la demande d’enregistrement ou son prédécesseur en titre a antérieurement employé ou révélé une marque de commerce ou un nom commercial créant de la confusion, sauf à la demande de cette autre personne ou de son successeur en titre, et il incombe à cette autre personne ou à son successeur d’établir qu’il n’avait pas abandonné cette marque de commerce ou ce nom commercial créant de la confusion, à la date de l’annonce de la demande du requérant.
Quand l’enregistrement est incontestable
(2) Dans des procédures ouvertes après l’expiration de cinq ans à compter de la date d’enregistrement d’une marque de commerce ou à compter du 1er juillet 1954, en prenant la date qui est postérieure à l’autre, aucun enregistrement ne peut être radié, modifié ou jugé invalide du fait de l’utilisation ou révélation antérieure mentionnée au paragraphe (1), à moins qu’il ne soit établi que la personne qui a adopté au Canada la marque de commerce déposée l’a fait alors qu’elle était au courant de cette utilisation ou révélation antérieure.
[Non souligné dans l’original.]
[38] Therefore, subsection 17(1) of the Act allows a person such as the Applicant to commence these proceedings. However, this subsection also places the burden on the Applicant to prove its claims. As for the issue of time limitation found in subsection 17(2) of the Act, given that the trade-mark RED FM was registered on May 26, 2008 and that the Notice of Application in the present proceedings was filed on October 4, 2012, the Applicant is well within the allotted time to proceed with action. Consequently, this Court finds that it has jurisdiction over the present matter and that the Applicant has standing to apply.
B. Legal scheme
[39] Section 17 of the Act, reproduced above, allows for the expungement of a trade-mark registration on the ground of previous use by a person other than the person who applied for the trade-mark registration in question. This is the provision relied upon by the Applicant. According to subsection 17(1) of the Act, the Applicant must prove the following: (1) it has used its own trade-mark (ROUGE FM) in Canada prior to the Respondent using its trade-mark (RED FM), (2) the trade-marks caused confusion (within the meaning of subsection 6(2) of the Act), and (3) the Applicant has not abandoned its trade-mark at the date of the advertisement of the Respondent’s trade-mark application. Only if these three criteria are met can the Respondent’s trade-mark be held invalid and expunged by this Court.
[40] In addition, subsection 18(1) of the Act sets out specific situations where the registration of a trade-mark is to be held invalid under the Act. More specifically, as it concerns the case at bar, subsection 18(1) in fine of the Act states that in cases where the applicant is not the “person entitled to secure the registration” at the time of the application, said registration is invalid. To determine who exactly this entitled person is, one must turn its attention to section 16 of the Act, particularly, again for the purposes of the present matter, to paragraph 16(1)(a), which provides as follows:
Trade-marks Act, RSC, 1985,
c T-13
PERSONS ENTITLED TO REGISTRATION OF TRADE-MARKS
Registration of marks used or made known in Canada
16. (1) Any applicant who has filed an application in accordance with section 30 for registration of a trade-mark that is registrable and that he or his predecessor in title has used in Canada or made known in Canada in association with wares or services is entitled, subject to section 38, to secure its registration in respect of those wares or services, unless at the date on which he or his predecessor in title first so used it or made it known it was confusing with
(a) a trade-mark that had been previously used in Canada or made known in Canada by any other person;
[…]
Loi sur les marques de commerce, LRC (1985),
ch T-13
PERSONNES ADMISES À L’ENREGISTREMENT DES MARQUES DE COMMERCE
Enregistrement des marques employées ou révélées au Canada
16. (1) Tout requérant qui a produit une demande selon l’article 30 en vue de l’enregistrement d’une marque de commerce qui est enregistrable et que le requérant ou son prédécesseur en titre a employée ou fait connaître au Canada en liaison avec des marchandises ou services, a droit, sous réserve de l’article 38, d’en obtenir l’enregistrement à l’égard de ces marchandises ou services, à moins que, à la date où le requérant ou son prédécesseur en titre l’a en premier lieu ainsi employée ou révélée, elle n’ait créé de la confusion :
a) soit avec une marque de commerce antérieurement employée ou révélée au Canada par une autre personne;
[…]
[41] In light of this legislative framework, if the Applicant wishes to be successful in these proceedings, it must satisfy this Court that it had used its trade-mark before the Respondent, that it has not abandoned its trade-mark and that the two trade-marks were confusing. Then, this Court would have no choice but to conclude that the Respondent was not the person entitled to present the trade-mark application for RED FM and, consequently, to invalidate and expunge this trade-mark registration.
[42] It is well established in law that a registered trade-mark enjoys a presumption as to its validity and that the onus is on the party seeking the expungement, here the Applicant, to satisfy this Court of its invalidity (see for example Andrés Wines Ltd v Vina Concha Y Toro SA, 2001 FCT 575 at para 8, [2001] FCJ No 893).
[43] What follows is a more detailed explanation of the three-fold criteria the Applicant must satisfy in order for this Court to grant its application for expungement.
1. Previous use
[44] Courts have addressed through case law the issue of whether the use of a trade-mark on a website constitutes use in Canada for the purposes of the Act, specifically of subsection 4(2) of the Act. In its factum, the Applicant relies on jurisprudence from this Court which needs to be put back into context because, as noted by the Respondent, the Applicant seeks from this Court an interpretation that is way too broad.
[45] Indeed, with regard to concept of use, the Applicant mainly relies on HomeAway.com, Inc. v Hrdlicka, 2012 FC 1467, [2012] FCJ No 1665 [HomeAway] and the following passage at para 22:
[22] I find, therefore, that a trade-mark which appears on a computer screen website in Canada, regardless where the information may have originated from or be stored, constitutes for Trade-Marks Act purposes, use and advertising in Canada.
[46] Building on this decision, the Applicant claims that the simple fact for a trade-mark to appear on a computer screen through the Internet, notwithstanding the origin of the trade-mark, suffices to prove that it was “used” within the meaning of the Act. However, this Court must side with the Respondent’s interpretation of the decision and put this finding into context. In HomeAway, above, the trade-mark was used in association with services that were actually offered to Canadians over the web. As rightly put by the Respondent in its factum, there is “an important distinction between services performed in Canada and services performed outside Canada, perhaps for Canadians.” Although it is true that subsection 4(2) provides that a “trade-mark is deemed to be used in association with services if it is used or displayed in the performance […] of those services”, the Courts and tribunals, including the Trade-marks Opposition Board, have nonetheless added that such services must be effectively offered to Canadians or performed in Canada (see for example Express File Inc. v HRB Royalty Inc., 2005 FC 542 at para 20, [2005] FCJ No 667).
[47] To go against this logical interpretation of the law would lead to some twisted and unfortunate consequences none of which could have been Parliament’s intent in drafting the Act. For example, should we follow the Applicant’s point of view, any foreign trade-mark holder could request and obtain the expungement of a bona fide Canadian trade-mark based on previous use through the Web even if this foreign trade-mark owner had basically nothing to do with Canada and no physical presence in the country. How could it be logical to interpret the applicable legal scheme as putting every single Canadian trade-mark owner at risk of having its trade-mark taken away by another trade-mark that has no nexus to Canada? Should Canadian companies be expected to protect themselves from every company around the world which has a website that is accessible in Canada? Could this even be possible to achieve? It would be illogical and impossible to take this approach.
[48] What is more, the Respondent quite rightly submits that this situation would be unthinkable should the roles in these proceedings be reversed. Would a Canadian trade-mark owner have the right to request from a foreign trade-mark owner that they stop using their trade-mark if this foreign owner’s presence in Canada is limited to the Internet? In particular, should this Court uphold the RED FM trade-mark as valid, could the Respondent then request from the Applicant that it stops streaming its programming online because one of the listeners could potentially be Canadian? Again, this suggestion is preposterous. The notion of performing the services is essential.
[49] Therefore, the Applicant shall have to prove having used its trade-mark with respect to services actually provided to Canadians or performed in Canada.
[50] As for the notion of previous use, it goes without saying that the Applicant must satisfy this Court that it used ROUGE FM according to applicable legislation and case law before the Respondent used RED FM.
2. Conclusion
[51] In order to determine whether a trade-mark causes confusion with respect to another trade-mark under subsection 6(2) of the Act – the applicable provision in the present matter –, this Court must consider all the “surrounding circumstances” including the factors listed in subsection 6(5) of the Act:
Trade-marks Act, RSC, 1985,
c T-13
INTERPRETATION
When mark or name confusing
6. (1) […]
What to be considered
(5) In determining whether trade-marks or trade-names are confusing, the court or the Registrar, as the case may be, shall have regard to all the surrounding circumstances including
(a) the inherent distinctiveness of the trade-marks or trade-names and the extent to which they have become known;
(b) the length of time the trade-marks or trade-names have been in use;
(c) the nature of the wares, services or business;
(d) the nature of the trade; and
(e) the degree of resemblance between the trade-marks or trade-names in appearance or sound or in the ideas suggested by them.
Loi sur les marques de commerce, LRC (1985),
ch T-13
DÉFINITIONS ET INTERPRÉTATION
Quand une marque ou un nom crée de la confusion
6. (1) […]
Éléments d’appréciation
(5) En décidant si des marques de commerce ou des noms commerciaux créent de la confusion, le tribunal ou le registraire, selon le cas, tient compte de toutes les circonstances de l’espèce, y compris :
a) le caractère distinctif inhérent des marques de commerce ou noms commerciaux, et la mesure dans laquelle ils sont devenus connus;
b) la période pendant laquelle les marques de commerce ou noms commerciaux ont été en usage;
c) le genre de marchandises, services ou entreprises;
d) la nature du commerce;
e) le degré de ressemblance entre les marques de commerce ou les noms commerciaux dans la présentation ou le son, ou dans les idées qu’ils suggèrent.
3. Non-abandonment
[52] This element is pretty self-explanatory: the Applicant will have to prove that it has continuously used its ROUGE FM trade-mark from the date on which it claims to have started using this trade-mark up to the date of advertisement of the Respondent’s trade-mark application for RED FM.
C. Analysis
1. Is Canada Trade-mark Registration No. TMA715146, RED FM, void ab initio because the Respondent made a fraudulent misrepresentation with respect to the date of first use in Canada?
[53] At the hearing, both parties downplayed the importance of this issue, placing more emphasis on the second one. These reasons were developed accordingly.
[54] As for the answer to this question, it is clearly no. This Court is satisfied that the Respondent indeed undertook a test loop period starting December 21, 2005 prior to the commencement of its regular broadcasting programming on January 23, 2006, and I find that there is no contradiction between the Respondent’s trade-mark application for RED FM and the beginning of its radio station’s activities. This conclusion is further supported by two affidavits. First, the affidavit of Mark Lewis, the Respondent’s media-regulatory lawyer who is responsible for the disputed document and who claims to have arranged the technical examination which resulted in RED FM starting its test loop broadcasting on December 21, 2005 (see the Applicant’s Motion Record [AMR], Volume 4, Tab 5, at para 29). Second, the affidavit of Dave Glasstetter who claims to have been present on December 21, 2005 for the initial broadcast and to have witnessed, on several occasions during the day, the “RED FM” trade-mark appearing on RBDS-enabled radio receivers (see the AMR, Volume 5, Tab E-1, at paras 2 and 3).
[55] Simply put, the Applicant, who relied on misrepresentation as a ground of invalidity, had the onus of proving its claims, and given that this Court is not satisfied by the Applicant’s insufficient evidence, the presumption of validity must stand. There was evidently no fraudulent misrepresentation.
2. Alternatively, is Canada Trade-mark Registration No. TMA715146, RED FM, invalid pursuant to subsection 18(1) in fine of the Act because the applicant for registration, the Respondent, was not the person entitled to secure registration considering that, at the date on which it first used it, it caused confusion with the ROUGE FM trade-mark used in Canada by the Applicant (under paragraph 16(1)(a) of the Act)?
[56] As stated above, the Applicant must establish its previous use of the ROUGE FM trade-mark with respect to services provided to Canadians or performed in Canada, that it has not abandoned its ROUGE FM trade-mark since then, and that RED FM caused confusion with ROUGE FM. Prior to embarking in the analysis, it should be noted that the Applicant’s application called for the registration of ROUGE FM as a trade-mark for services related with “[translation] radio communication, the broadcasting of radio programming, the transmission of sound, information and messages by computer terminals, namely the broadcast of music and radio programming by computer [emphasis added]”, whereas the Respondent registered its R