Federal Court Finds that Use of AT&T Services by Customers Roaming in Canada Constitutes “Use” Under the Trademarks Act

In AT&T Intellectual Property II, LP v LeCourts, Hébert Avocats Inc (2017 FC 734), the Federal Court of Canada (FC) allowed AT&T’s appeal from a decision of the Registrar which expunged its GO PHONE registration on the basis of non-use in Canada. The FC found that although the GO PHONE services largely targeted AT&T’s American customers and could only be provided in Canada through roaming agreements with other telecommunications companies, there was a reasonable inference that at least some of the services performed in Canada were performed for Canadians in association with the mark.

AT&T used its GO PHONE trademark in association with prepaid telecommunication services purchased through its website. In the underlying decision, the Registrar found that the evidence, at most, showed use and display of the mark in promotion and advertisement of the services, but showed no indication that AT&T was prepared to offer the services in Canada. In particular, AT&T’s website required purchasers to enter a US address to purchase a GO PHONE plan.

Before the FC, AT&T submitted additional evidence showing use of the mark. The evidence showed that AT&T could provide services to customers in Canada through roaming arrangements with other telecommunications companies. AT&T also adduced evidence of nearly 100,000 orders processed using Canadian issued credit cards during the relevant period. It also submitted evidence showing that Canadians could purchase and activate a GO PHONE sim card in Canada through its website, if the purchaser listed a US zip code and address, and that such devices and sim cards could be purchased through Amazon.com. The FC found that the additional evidence was sufficient to support an inference that the GO PHONE services had been performed to consumers in Canada in association with the mark.

This decision confirms that invoices are not necessary to show use of a trademark in Canada in an expungement proceeding. In this case, call data and transactions made using Canadian issued credit cards were found to be sufficient to support an inference of use of the mark in association with services during the relevant period.

Summary By: David Bowden