Monthly Archives: September 2021

Federal Court Refuses to Consider Results of On-line Survey as to Trademark Confusion Analysis

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The Federal Court recently handed a decision on an appeal of a trademark opposition, in the context of which a party unsuccessfully sought to introduce into evidence the results of
an on-line survey, in Tokai of Canada Ltd. v. Kingsford Products Company, LLC (2021
FC 782).

Though surveys may sometimes be used in trademark cases, for example, to help judges reach conclusions as to the likelihood of confusion between marks (i.e. as to the initial
impressions of typical consumers), the court in this case rejected the survey altogether, for a number of reasons.

For example, the very content of the questions asked by that survey was an issue that warranted against accepting the results of the survey as valid, as were certain data manipulations upon analysis the results and producing the final report. The way the survey was held was also a problem for the court, as the survey allowed participants unlimited time to answer, something that was simply not conducive to obtaining “initial impressions” of those who responded. At the other end of the spectrum, the survey’s results were also tweaked by arbitrarily rejecting questionnaires filled too quickly by certain participants. In short, the court found the survey essentially asked the wrong question, in the wrong manner.

As to this last point and the format of the survey, the court objected to the holding of the survey on-line, by having participants simply fill a questionnaire on-screen, at their leisure, without sufficiently timing their responses to attempt at obtaining an idea of what their initial impressions were, when presented with certain trademarks. On that point, the court also held that the very format of such an online questionnaire was ill-suited to presenting participants with an adequate simulation of the kinds of circumstances where they might meet the trademarks at issue, for example on products, on store shelves, in actual stores.

All in all, the Federal Court held in Tokai that on-line surveys may be problematic when attempting to ascertain the likelihood of confusion between trademarks, especially when the goods or services at issue are provided or sold in brick-and-mortar establishments.

Modifications to Bill 64 as Adoption in 2021 Remains Likely

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The Québec bill proposing substantial amendments to an Act respecting the protection of personal information in the private sector (Bill 64) keeps making progress through the legislative process, as  the parliamentary committee recently published its report, including by proposing further changes to that piece of legislation.

The commission proposed several modifications to the initial version of the bill, including the following:

  1. Creating certain new rights for individuals as to their personal information;
  2. Requiring businesses to check, beforehand, that information exported outside Québec would be protected by laws (in the other jurisdiction at issue) that are “adequate”;
  3. Adding an obligation to inform individuals of the actual identity of third-party businesses and partners to which the organization may be disclosing information (as opposed to merely disclosing the types of third parties);
  4. Allowing business to delegate the roles of their Chief Privacy Officer (as required under the bill), to someone outside the company, if they so choose (for example, to allow outsourcing of that function if no one in the company has the requisite expertise);
  5. Forcing businesses that use information that has been depersonalized, to take reasonable precaution against eventual use of such information to “reidentify” the individuals at issue;
  6. Allowing use of personal information, even without consent, for purposes of delivering products or providing services to the individuals at issue;
  7. Allowing use of personal information, even without consent, in the context of purchase-type corporate transactions, but also other commercial operations such as mergers, financings, etc.;
  8. Expressly adding to the Québec statute the possibility of settling claims against businesses that violated the statute, by having them enter into undertakings with authorities, as is allowed under the Federal statute;
  9. Modifying the amount of certain penalties provided by Bill 64, being understood however that the maximum penalty of $25M (or 4% of annual turnover) remains untouched;
  10. Limiting what business must provide to individuals who ask to see “their” own data, by excluding therefrom data that was indirectly produced or induced from the initial data actually provided by each individual.

It is generally agreed Bill 64 is likely to complete the legislative process in 2021, as its formal adoption seems more than likely to follow before the end of the year, with fairly minimal modifications being made to it between now and then.