At a time when
The complaint mechanism makes it possible for a complainant to submit an intellectual property infringement claim regarding content to which it has a good faith right in order to partially or fully remove the content in question from the pages of the alleged infringing party published on
Such a mechanism has its purpose, as it is an effective way of tracking down counterfeiters. As we will see in
The facts and the plaintiff's allegations
In this case, complaints were lodged by a competitor of the company that was the subject of the complaints, with both entities operating in the inflatable bed industry.
Both companies primarily sell their products on the
In
On or about
The complaints of 2017 were eventually withdrawn and the page featuring the Hiccapop Bed was restored.
In
The first of these two notices, sent on
Keezio asked for clarification of this alleged infringement but received no response from The Shrunks. Having received no details about the infringement from The Shrunks, Keezio ultimately changed its webpage to remove all mentions of "The Shrunks", replacing them with "Rhymes with Skunks".
Although
The second notice of infringement, dated
The Shrunks denied having filed the complaints of 2019. However, the Court did not hesitate to conclude that The Shrunks was also behind these complaints.
Issues at bar about the complaints
There were many issues in this case, and some claims were eventually withdrawn. We will focus on the two complaints made in 2019. Specifically, Keezio argued that the complaints that The Shrunks had lodged with
In particular, the Court analyzed section 7 of the Trademarks Act.3 To succeed in such a claim, the plaintiff must prove (i) that a false or misleading statement was made (ii) that tends to discredit the business, goods or services of a competitor, (iii) resulting in damages.
The Court held that the person making the statements need not know of their falsity in order to satisfy these criteria.
Findings of the Court
(i) The allegation of trademark infringement in the comparative chart
The trademark infringement complaint concerned a comparative chart featuring both Hiccapop Bed and The Shrunks products, with comparative data on the features of both products. The data itself was not challenged. The complaint related to the unauthorized use of The Shrunks' registered trademark in the chart.
Basing itself on the landmark decision in
The Court further concluded that the comparative chart was not contrary to section 22 of the Trademarks Act:5 The mere depiction of a competitor's trademark in comparative advertising does not in itself depreciate the value of the goodwill attached to a product.
(ii) The allegation of copyright infringement
The copyright infringement notice contained six
The Court ruled that the allegation of copyright infringement in question was unfounded, as it related to a bed, which is a useful article sold in a quantity of more than 50. The reproduction of the bed design was therefore not covered by subsection 64(2)6 of the Copyright Act.
The Court found The Shrunks liable for the two complaints made in
With regard to damages, the Court determined that Keezio's evidence regarding the calculation of damages was inadequate on several counts, but nonetheless awarded damages based on a decrease in Keezio's sales on the dates of delisting.
The Court did not hold The Shrunks' principal personally liable and did not grant a permanent injunction or punitive damages. It also dismissed The Shrunks' counterclaim for copyright infringement, and ordered The Shrunks to pay Keezio costs, excluding taxes and disbursements.
Comments
This decision highlights how crucial it is for complainants to be serious when filing complaints.
The complaints mechanism on platforms such as
Although such a mechanism is easy to use, the rights involved must absolutely be analyzed in advance, as an ill-founded complaint can result in harm—which can be considerable—especially when the platform has a global reach. In such a case, the removal of a webpage can result in significant damages. It is therefore essential to exercise due diligence, as a country-by-country analysis of rights can reveal different legal situations and rights holders from one country to another.
Not only must competitors carefully consider and weigh their actions, but e commerce website operators must also be vigilant and respond promptly to requests for removal and geographic restrictions.
A word to the wise!
Footnotes
1. See Bill C-63, the Online Harms Act, which establishes a regime to address such harm.
2.
3. Section 7 of the Trademarks Act:
Prohibitions
7. No person shall
- make a false or misleading statement tending to discredit the business, goods or services of a competitor;
- direct public attention to his goods, services or business in such a way as to cause or be likely to cause confusion in
- pass off other goods or services as and for those ordered or requested; or
- make use, in association with goods or services, of any description that is false in a material respect and likely to mislead the public as to
(i) the character, quality, quantity or composition,
(ii) the geographical origin, or
(iii) the mode of the manufacture, production or performance of the goods or services.
4.
5. Section 22 of the Trademarks Act:
22.Depreciation of goodwill
- 22 (1) No person shall use a trademark registered by another person in a manner that is likely to have the effect of depreciating the value of the goodwill attaching thereto.
6. Subsection 64 (2) of the Copyright Act:
64 (2) Non-infringement re certain designs
Where copyright subsists in a design applied to a useful article or in an artistic work from which the design is derived and, by or under the authority of any person who owns the copyright in
- the article is reproduced in a quantity of more than fifty, or
- where the article is a plate, engraving or cast, the article is used for producing more than fifty useful articles, it shall not thereafter be an infringement of the copyright or the moral rights for anyone,
- to reproduce the design of the article or a design not differing substantially from the design of the article by
(i) making the article, or
(ii) making a drawing or other reproduction in any material form of the article, or
- to do with an article, drawing or reproduction that is made as described in paragraph (c) anything that the owner of the copyright has the sole right to do with the design or artistic work in which the copyright subsists.
7.
[58] I agree with ThousandShores that the Respondent made false allegations and misstatements to Amazon.ca in the Takedown Requests, at least one of which was made after the Respondent's receipt of the
8. Lifestyle Equities CV and another v
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
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