A Sign of the Globalizing of U.S. Trademark Law?

The U.S. Supreme Court is set to hear next year an appeal against a recent decision from Texas holding that American trademark law may sometimes be made to apply to foreign sales of trademarks merchandise. Yup, you read this right.

As one will remember, trademark law (as with most laws) may apply within a given country that adopted or applies this law but will not generally apply once you cross the border. Though there are plenty of exceptions to this, one can still rely on the fact that, in the normal course of things, rules that apply IN a country will not apply as to what goes on OUTSIDE of that country. For example, owning a Canadian trademark registration is nice, but it won’t allow you to stop a Brazilian company from selling goods in South America, even if they are stamped with that same specific trademark.

A recent American case (Abitron Austria v. Hetronic International) involves partly doing away with this, as the court at issue concluded that it could impose liability as to trademark infringement (to the sweet tune of $90M, no less) by basing the calculation of damages on worldwide sales by the infringer. According to the court in this case, demonstration by the plaintiff that it had lost sale IN the U.S. justifies granting it substantial damages because, well, you know, the bad guys caused an American company some lost sales, so they SHOULD be liable under American law, right? (This is a Texas case, need I say more?)

This is of course NOT how things work normally, which is why most businesses making sales abroad (including the likes of Amazon) can operate without getting constantly being sued in the U.S. because something they sold somewhere reflected a trademark that was protected in the U.S. Causing confusion in the U.S. that results in actual lost sales in the U.S. is one thing, but being on the hook just because you had the gull of making foreign sales is another altogether.

This may become really uncomfortable for a lot of business operating outside the U.S. if that specific case is allowed to stand and ends-up catching on. Were something like this to represent a shift in the way American trademark law handles U.S. trademark infringement claims when international sales by an “infringer” are involved, a lot of businesses (including Canadian ones) may end-up in trouble. Hmm, should I stop telling my clients that U.S. trademark registrations have an effect only in the U.S.?

The U.S. Supreme Court will hear this case next year and, hopefully for Canadian businesses, reconsider how damages were assessed in this particular case. We’ll see.

Your Typical Canadian Employees May Not Care All that Much About Cybersecurity or Privacy at Work, it Seems

The media reported recently disconcerting results from a recent survey of Canadian employees about the protection of personal information and cybersecurity.

The report at issue indicates about 1/3 of Canadian employees do not think data theft is really in an issue they should be concerned with, or that they are likely to be targeted by cybercriminals when at work. Even with everything happening in the past couple of years, including almost daily announcements of computer intrusions and ransomware attacks (including in Canada), your typical employee does not seem all that worried.

In Québec, 3/4 of employees who answered the survey indicated they did not think the protection of personal information had anything to do with them, rather thinking this is an issue that IT is responsible for. Heck, the same proportion of respondents even admitted they had received NO training whatsoever at work about cybersecurity. None. Yikes.

Yeah, it seems, even today, with everything being published and privacy laws being adopted, your typical Canadian business may not be all that concerned about protecting data, whether it be personal or otherwise. Given that even some SME officers and business owners often still basically choose to ignore the issue, it is not all that surprising that a lot of employees do too. The Vietnamese have a good saying that may apply here: A house leaks from the roof on down.

Our job educating businesses and employees about this may not be quite done, it seems.

Québec Businesses Beware: No, You May (Still) Not Tack on Fees to Pay with a Credit Card

Major credit card companies recently changed the rules they impose on businesses using their credit facilities to allow customers to pay them. Further to a (relatively) recent court decision, credit card companies in Canada may no longer prohibit their business customers from adding extra fees whenever a customer elects to pay for products/services with a credit card.

Until now, both Visa and MasterCard prohibited this practice in Canada, perhaps because it may tend to discourage customers from using their credit cards to pay and, thus, lead to a reduction of credit card transactions over time.

With the recent change to their policies as to this, Visa and MasterCard both now allow businesses to do this, at least up to the percentage of service charges that each card may carry (e.g., 1% to 3%), without going over, so as to avoid businesses starting to make profit with such extra fees. In the province of Québec, however, businesses should make a note that, notwithstanding this recent change, the law still prohibits such additional fees. This prohibition stems from the provincial requirement that prices actually charged be no higher than the prices that are displayed, shown or advertised.

As such, it is (and remains) illegal for a business operating in Québec to jack up the price once a customer gets to the cash, whether it be because he has red hair, because he’s wearing a blue jacket, because he wants to pay in dimes or, yup, wants to pay using a credit card.