Illico Communications Inc. v. Norton Rose s.e.n.c.r.l., 2015 CF 165 (J. Gagné)
February 9, 2015
Jean-Yves Côté, Lecours, Hébert Avocats Inc. for the Appellant
Xavier Beauchamp-Tremblay and Joanne Chriqui for the Respondent.
This is an appeal to the Federal Court from a decision expunging the trademark Illico Communication for non-use (section 45 proceedings). The trademark was registered by Illico Communication Inc. in association with: “editing graphic design, corporate graphic design, promotional graphic design and communications, namely advertising, magazine and storefront signs, internet websites design and photography and related services namely writing, translation and proofreading”.
The Appellant filed additional evidence on appeal. The Court concluded that the additional evidence could have had an impact on the conclusions of the Registrar and as such, accepted to consider the appeal on a de novo basis and to apply the standard of reasonableness.
With respect to some of the services covered by the registration, the Court concluded that the evidence submitted was irrelevant given that the services were not offered to a third party but were rendered for the benefit of the Appellant itself.
The Court noted that the Appellant used, on the landing page of its website and on its invoices, a logo comprised of an image of two doors surrounded by columns (which could represent the entry of a court house) next to which was the design of a computer mouse. Beneath this image, the following inscriptions appeared: Illico® Communication inc. In the vast majority of cases the address and phone number of the Appellant were shown next to the logo and inscriptions. The Court indicated that when a business name and a corporate name are identical to a trademark, there is a rebuttable presumption that the use of the name will be that of the business name, not of the trademark. The Appellant did not rebut the presumption.
Appeal dismissed with costs.
By: Cindy BĂ©langer, Legault, Joly, Thiffault LLP