• Best Practices for Display of a Trademark on Software
  • April 28, 2017 | Author: Richard Stobbe
  • Law Firm: Field Law - Calgary Office
  • Xylem Water Solutions Manufacturing Alberta (“Xylem”) was the owner of the registered Canadian trademark AQUAVIEW in association with software for water treatment plants and pump stations.  

    Xylem received a section 45 challenge under the Trade-marks Act (the “Act”). A section 45 notice requires the owner of a registered trademark to prove that the mark has been used in Canada during the three-year period immediately before the notice date. The term “use” has a special meaning in trademark law. In this case, Xylem was put to the task of showing “use” of the mark AQUAVIEW in association with software in Canada during the relevant period.

    How does a software vendor show “use” of a trademark on software in Canada?
    The Act tells us that
    “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...” [Emphasis added]
    The general rule is that a trademark should be displayed at the point of sale. In Scott Paper Limited v. Georgia Pacific Consumer Products LP, a case involving a toilet paper trademark, the Federal Court confirmed the Opposition Board’s view that Georgia-Pacific’s mark had not developed any reputation since it was not visible until after the packaging was opened.  Arguably, if a mark is not visible at the point of purchase, it cannot function as a trademark; regardless of how many times consumers see the mark after they open the packaging to use the product.

    In some ways, Xylem faced a similar problem to the one which faced Georgia-Pacific. In Ashenmil v Xylem Water Solutions AB, the Opposition Board tackled this problem as it relates to software sale.  The evidence showed that the AQUAVIEW mark was displayed on website screenshots, technical specifications, and screenshots from the software.

    The decision in Ashenmil frames the problem this way:
    “...even if the mark did appear onscreen during operation of the software, it would have been seen by the user only after the purchaser had acquired the software.  ... seeing a mark displayed, when the software is operating without proof of the mark having been used at the time of the transfer of possession of the ware, is not use of the mark” as required by the Act.
    Regardless, in the section 45 proceeding re: AQUAVIEW the Registrar ultimately accepted Xylem’s evidence of use within the relevant period, and upheld the registration of the AQUAVIEW mark. Some important comments that emerge from this case are listed below:
    • Software Screenshots: The display of a mark within the actual software would be viewed by customers only after transfer of the software. This kind of display might constitute use of the mark in cases where a customer renews its license, but is unlikely to suffice as evidence of use for new customers.
    • Technical Documentation: In this case, the software was “complicated” software for water treatment plants. The owner sold only four licenses in Canada within a three-year period. In light of this, it was reasonable to infer that purchasers would take their time in making a decision and would have reviewed the technical documentation prior to purchase. Thus, the display of the mark on technical documentation was accepted as “use” prior to the purchase. This would not be the case for, say, a 99¢ mobile app or off-the-shelf consumer software where technical documentation is unlikely to be reviewed prior to purchase.
    • Website screenshots: Website screenshots and digital marketing brochures that clearly display the mark can bolster the evidence of use. Again, depending on the nature of the software, purchasers can be expected to review such materials prior to purchase.
    • Downloadable Software: Software companies are well advised to ensure that their marks are clearly displayed on materials that the purchaser sees prior to purchase, which will differ depending on the type of software. The display of a mark on software screenshots is not discouraged; but it should not be the only evidence of use. If software is downloadable, then the mark should be clearly displayed to the purchaser at the point of checkout.
    • An Ounce of Prevention: The cases have shown some “flexibility” to determine each case on its facts, but do not rely on the mercy of the Court: software vendors should ensure that they have strong evidence of clear display of the mark before the point the consumer actually purchases the software. Clear evidence may even prevent a section 45 challenge in the first place.