Freedome of Expression Rights vs. The Trademark Act

The freedom of expression is an important right enshrined in S. 2(b) of the Canadian Charter of Rights and Freedoms. The Trade-marks Act protects the right to protect your registered trademark against depreciation from others making use of that mark. There can be friction and tension when these two rights conflict.

Canadian courts have had to deal with these conflicts several times to determine whether free speech trumps the rights of a trademark holder. For example in Source Perrier SA v Fira-Less Marketing Co, (1983) 70 CPR 2d 61, Fira-Less sold Pierre Eh! carbonated bottled water, and claimed that it was a parody of then-Prime Minister Pierre Trudeau. Source Perrier successfully obtained an injunction against Fira-Less. The court in this case said: “[t]he most liberal interpretation of ‘freedom of expression’ does not embrace the freedom to depreciate the goodwill of registered trademarks, nor does it afford a licence to impair the business integrity of the owner of the marks merely to accommodate the creation of a spoof.”

In the later case Michelin v CAW Canada, (1996) 71 CPR (3d) 348, the court drew a distinction between commercial and non-commercial use when in dismissed the trademark claim. Here, the Canadian Auto Workers had an illustration of Bibendum, or the ‘Michelin Man’ stepping on an auto worker and crushing him on a pamphlet. The pamphlet was not considered to be commercial use.

The commercial/non-commercial distinction has not been without criticism, as in British Columbia Automobile Association v Office and Professional Employees’ International Union (2001), 10 CPR (4th) 423, where the union created a website that looked very similar to the BCAA website encouraging a boycott on purchase of their products. In both this case and the Perrier case, disclaimers about similarities between the marks were not relevant to the analysis and should not be relied upon.

If the owner of a registered trademark wants to stop the use of the offending mark, they will have to prove that their rights were violated. In most cases involving freedom of expression, confusion (S. 6) will most likely not be a source of statutory protection because cases involving parody, political criticism and comparative advertising are specifically based on emphasizing subtle differences.

Another possibility is depreciation of the goodwill of the mark under S. 22 of the Trade-marks Act. There has to be offending use of the mark in order for there to be a violation of this section of the Act. Use is a defined term under the Trade-marks Act, which requires that the use be in connection with wares or services. In some cases involving the freedom of expression, there may be no wares or services for sale, and therefore it would not be possible to use the protection of S. 22.

As a final note, trademark owners who are unable to stop the offending use with the protection of the Trade-marks Act should not forget about possible protections they may have under copyright law. In the Michelin v CAW case, although the court rejected the trademark arguments, Michelin actually succeeded under Canadian copyright law.