Absolute Software Corporation has operated under the trade-name ABSOLUTE SOFTWARE since 1993 and used its name as a common law mark. Since that time, it registered the following trade-marks in association with its software and services, including ABSOLUTE, and ABSOLUTE SECURE DRIVE.
In November 2012, Valt.X, a start-up company that produces software that protects computers form viruses, began using the term ABSOLUTE SECURITY in association with its software. Two years later, Absolute Software brought this application seeking declarations that it was the owner of the Absolute marks and that Valt.X infringed the Absolute marks, particularly by Valt.X’s use of ABSOLUTE SECURITY. Absolute Software also sought an injunction preventing Valt.X from using the ABSOLUTE mark or any variation thereof
There was no evidence of infringement under s. 19 of the Trade-marks Act which requires the use of an identical mark. Nor was there evidence the Valt.X had passed off its services for those of Absolute Software. However, the Court did find that Valt.X’s use of ABOSLUTE SECURITY was confusing contrary to s. 6(5) of the Trade-marks Act because:
- Inherent distinctiveness: The word “Absolute” lacked inherent distinctiveness because it is a common English word. This favoured Valt.X.
- Evidence of use: The Absolute’s evidence of use and promotion was weak and did not establish how many customers the Applicant actually had in Canada. This favoured Valt.X.
- Length of use: Absolute’s web traffic data only provided evidence of use since 2012, and not since 1993 as the Absolute alleged. However there was sufficient evidence for this factor to favour Absolute.
- Nature of the goods and services: Absolute’s software served a wide range of related but distinct functions, some of which were different from the Valt.X’s software. However, both parties produced software directed to security against computer viruses, particularly for laptops. This favoured Absolute.
- Nature of the trade: Despite the majority of Absolute’s sales being made to large institutional clients unlikely to be confused by Valt.X’s marks, Absolute proved it did in fact make individual sales. Further, there was evidence that Valt.X’s customers were also Absolute’s customers. This favoured Absolute.
- Resemblance: The distinctive feature of the marks in question was the word ABSOLUTE as other words such as ‘security’ or ‘software’ were highly descriptive. This favoured Absolute.
On those grounds, the Court found Absolute proved its case for infringement under s. 20 and for passing off under s. 7(b) of the Trade-marks Act. There was no intentional deception on the part of Valt.X but based on the clear resemblance between the marks, the Valt.X was negligent in its use of the ABSOLUTE SECURITY mark. Further, it would have been easy and inexpensive for Valt.X to switch to a different mark, as it was just starting up as an operation.
On the question of damages, there was no evidence of depreciation of goodwill; damages were limited to only those sales of ABSOLUTE SECURITY-branded products by the Respondent and was set to $2,000.
A copy of this decision can be found here.