A recent decision involving an AT&T trademark demonstrates how the global reach of technology businesses can sometimes result in a blurring of markets and make documentation of trademark use in Canada difficult to retrieve and segregate. To protect your key brands in Canada, it is therefore important to audit and maintain documents showing trademark use in Canada. If a trademark is properly used, its registration can be kept alive forever. But a trademark can be cancelled for non-use in a proceeding typically initiated by a competitor interested in a similar brand. The only way for a trademark to survive these proceedings is to have and to show sufficient evidence of past use in association with all registered goods and services. The AT&T decision is a good reminder of this critical point.
AT&T Intellectual Property II, LP v. Lecours, Hebert Advocats Inc., 2017 FC 734
AT&T owns a trademark registration for GO PHONE covering prepaid telecommunications services (including electronic transmission of voice, data, images, audio, video). Customers can purchase pay-as-you-go time online and no annual contracts are required. The plans also include long distance packages, and allow roaming.
The GO PHONE registration was canceled for non-use by the Registrar of Trademarks. The Board found that it was not clear, based on AT&T's evidence, that Canadian customers were able to purchase and obtain the GO PHONE services without having to leave Canada. The Board also found that roaming services were targeted to customers in the U.S.; to the extent these services were delivered in Canada, they were for roaming services when US customers were in Canada.
AT&T appealed the cancelation to the Federal Court, and, as is permitted, filed new evidence, which allowed AT&T to save its registration.
On appeal, the Federal Court was satisfied the mark was used in Canada, finding that the GO PHONE services were provided, via roaming arrangements, to Canadians in Canada. The court recognized the global nature of telecommunication services and the practice of roaming arrangements used by telcos to provide network services to its customers using other company’s networks. Although AT&T did not have evidence on the number of Canadian subscribers, it marshaled Canada-specific evidence that established that:
- while AT&T itself did not sell the phone devices or the GO PHONE sim card products in Canada, they were available for sale in the US and in Canada through Amazon.com
- once consumers purchased a GO PHONE sim card, they could activate it in Canada and use the roaming network
- consumers who had the phone device or GO PHONE sim card could refill their minutes online
- three to four thousand unique Canadian visitors viewed the GO PHONE services section of the AT&T website per month
- more than 4,600 prepaid active or suspended subscribers had a Canadian email address
- 99,451 orders were processed using Canadian issued credit cards.
The lesson? To ensure marks can be preserved, ongoing monitoring and documentation of trademark use is critical. Country-specific audits should be regularly performed to ensure that trademarks have been properly used in association with all of the registered goods and services.