Appeal of registrar's expungement decision granted; GO PHONE Services not dependent on the network that hosts them
AT&T Intellectual Property II, L.P v. Lecours, Hebert Avocats Inc, 2017 FC 734
The Federal Court granted an appeal from the Registrar's decision finding that AT&T's registration for its GO PHONE trademark was to be expunged pursuant to section 45 of the Trademarks Act. In the decision below, the Hearing Officer found that the availability of the GO PHONE Services ("Services") in Canada, if any, would have been only through the roaming services, and that it was unclear whether and to what extent each and every one of the Services was performed or available to be performed in Canada through the roaming services. The Hearing Officer also found that AT&T had not demonstrated use of the trademark in association with the Services, even if she accepted that each of the Services had been performed through roaming.
On appeal, AT&T filed new evidence and the standard of review applied was correctness. The Court noted that the listed services are not dependent on the network that hosts them. The Court found that whether or not the Services were provided directly on AT&T's network or via a roaming arrangement whereby AT&T has arranged for its customers to use another company's network, was not determinative. Furthermore, the Court noted that whether or not Canadians had to purchase the hardware required to set up a GO PHONE account in the U.S. during the Relevant Period did not address the question of whether the GO PHONE Services were available for purchase in Canada. The evidence filed established that Canadian customers could make these subsequent purchases of the GO PHONE Services from Canada. In distinguishing other cases, the Court concluded that it was clear that AT&T made the GO PHONE Services available to anyone who had the proper hardware, including Canadians who had purchased AT&T phones in the U.S. or GO PHONE sim cards through third parties online.