Equip IP Litigation Blog

AT&T's GO PHONE Trademark Registration Saved by Roaming Services Offered in Canada

August 11, 2017 | Dominique T. Hussey, L.E. Trent Horne and Jeilah Y. Chan

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.

Case

AT&T Intellectual Property II, LP v. Lecours, Hebert Advocats Inc., 2017 FC 734

IP Type

Trademarks

Summary

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.


For further information on how to protect and enforce your intellectual property rights, contact Dominique Hussey, Trent Horne, Jeilah Chan, or another member of the Intellectual Property Litigation team.

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Hussey Dominique High Resolution Image

Dominique T. Hussey
Partner, Trademark Agent, Head of IP Litigation
Intellectual Property Litigator, Pharma/Biotech and Trademark Lawyer at Bennett Jones Toronto

Dominique Hussey is the Intellectual Property Litigation Practice Group leader with a broad range of IP, regulatory and branding experience, including extensive experience litigating under the Patented Medicines (NOC) Regulations. Her practice involves trade-mark prosecution, brand portfolio management, and all aspects of IP litigation, with particular emphasis on litigation involving pharmaceutical patents, and trademarks. In addition to counseling on a range of trademark, patent and copyright issues, Dominique advises on advertising, marketing, packaging, labelling, and regulatory matters, [...]

Horne L.E. High Resolution Image

L.E. Trent Horne
Partner, Trademark Agent
Intellectual Property Law Specialist and Patent, Trademark and Copyright Lawyer at Bennett Jones Toronto

Trent Horne practises in all areas of intellectual property. He has been certified by the Law Society of Upper Canada as a specialist in intellectual property law: patent/trademark/copyright and has appeared as counsel in numerous trials and appeals. [...]

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Jeilah Y. Chan
Partner, Trademark Agent
Intellectual Property Lawyer at Bennett Jones Toronto

Jeilah Chan's practice focuses on all aspects of intellectual property, including patent, trademark and copyright litigation and advisory matters. She appears before the Federal Court of Appeal, the Federal Court, the Ontario Superior Court, and the Trade-marks Opposition Board in summary cancellation and opposition proceedings. [...]