Canada is in the midst of a federal election, and the leaders of the major political parties have taken the stage in a number of televised debates, two in French and the most recent one in English. These debates featured a few memorable bouts of verbal jousting, and the English-language session included an exchange which brought to mind a trademark issue.
Predictably, the Liberal leader, Justin Trudeau, sparred directly on a few occasions with his main rival, Conservative leader Erin O’Toole. At one point, the leader of the New Democratic Party (which usually forms the “third party” in the House of Commons) jumped in. Jagmeet Singh told viewers that they did not have to only choose between Messrs Trudeau and O’Toole, but that he represented another viable option. Mr. Singh then said, “Better is possible”.
Afficionados of Canadian politics might recall that during the 2015 federal election campaign, the Liberal Party was fighting for its existence. It was Justin Trudeau’s first campaign as Liberal leader. His strategy was articulated through a number of taglines, such as “Hope and Hard Work”. Another tagline frequently repeated by Mr. Trudeau was “Better is Always Possible”.
So, did Mr. Singh’s use of “Better is Possible” infringe the Liberal Party’s previous tagline of “Better is Always Possible”?
The short answer is “no”. However, under different circumstances, the answer could be “yes”.
In order for infringement to occur, a phrase must be used as a trademark. Simply saying “better is possible” in a non-commercial context such as a political debate does not constitute trademark use. A trademark is a sign, such as a word or words, with or without design elements, which appears directly on products, on their packaging, or is otherwise associated with the products at the time of sale (such as on a point-of-sale display). A trademark can also be displayed in association with services (such as on an e-commerce website). Thus, without a sale of some type of product or the provision of certain services in association with a mark, there is no “use” of that trademark.
Of course, the other part of the infringement equation is that there must be a trademark to be infringed. In the 2015 campaign, whenever Mr. Trudeau trotted out the phrase “Better is always possible”, that would not have constituted use of that phrase as a trademark. However, the Liberal Party did sell merchandise such as T-shirts branded with that phrase. In that case, “Better is Always Possible” would be considered a trademark used in association with that merchandise. Hence, if the NDP (or anyone else) had sold T-shirts or similar items emblazoned with “Better is Possible”, that would likely constitute infringement of the trademark “Better is Always Possible” as used by the Liberal Party on T-shirts.
Note that the Liberal Party did not file an application to register “Better is Always Possible” as a trademark. Thus, in the hypothetical situation where the NDP sold T-shirts bearing the phrase “Better is Possible”, the Liberal Party would have to enforce its rights through passing off. This would require them to have to prove that the trademark “Better is Always Possible” in association with T-shirts had acquired a reputation among Canadians (i.e. that the phrase had become known through sufficient sales across Canada), that confusion was likely to result, and that damages had been suffered. However, once a trademark is registered, it is not necessary to prove that it has acquired a reputation; rather, the analysis proceeds directly to whether there is a likelihood of confusion. This is one of the advantages of registering a trademark. Another advantage is that once registered, the trademark is presumed to be valid, and has effect across Canada, rather than only in the geographic areas in which a reputation through sufficient sales can be shown.
One more consideration is that in order to remain valid, a registered trademark must be used on a continuous basis. If the Liberal Party had registered “Better is Always Possible” as a trademark in 2015, but had not sold any merchandise bearing this phrase since the 2015 campaign, the trademark registration would be susceptible to being struck for non-use. In Canada, a trademark registration can be expunged (removed from the register) if it has not been used for a period of 3 years from the date of the registration. This can be done through a summary procedure under Section 45 of the Trademarks Act. It is thus incumbent on trademark owners to ensure that their registered marks are being continuously used in their businesses, to avoid rendering the marks susceptible to being struck for non-use.
Thus, the steps to maintain optimal trademark protection are:
- Determine which taglines or phrases are being used as trademarks
- Seek registration of those trademarks
- Ensure the registration covers all goods/services of interest
- Monitor the use of your trademark for potential infringements (one way in which this can be done is to subscribe to third party services with the assistance of a professional trademark agent or trademark lawyer)
- Ensure that the trademark is used on a regular basis through sales of goods or the provision of services in association with that trademark
Although there are no more formal leaders’ debates during this election campaign, it remains to be seen who will emerge victorious at the polls on September 20th. In the meantime, we are happy to advise on any trademark-related matters which you or your clients may need assistance with.