Trademarks and Competition Act

The Ontario Court has released a decision this week in The Commissioner of Competition v. Yellow Page Marketing, 2012 ONSC 927 which found that, contrary to the Competition Act, the respondents had made material false or misleading representations intending to deceive Canadians into believing they were dealing with the Yellow Pages Group, owner of the Yellow Pages trademark and walking fingers design.

The respondents had introduced survey evidence as to the distinctiveness of the “Yellow Pages” marks and had argued that the marks were generic of directories. A parallel and ongoing Federal Court proceeding, T-1791-10, seeks to expunge various YELLOW PAGES marks. According to the respondent, Yellow Pages Group has acknowledged that in the United States, “‘Yellow Pages’ is in the public domain and may be used by any directory publisher.” (para 29(b))

The court held that respondent’s unsolicited faxes to consumers “traded on the reputation of YPG and have falsely represented that they had a pre-existing relationship with the consumers to whom they sent the Unsolicited Faxes and who believed were merely updating information.” (para 44).

The court ordered a declaration, a prohibition against future conduct, a requirement that corrective notices be sent to consumers, that existing contracts are null and void, that payments received are to be returned and monetary penalties of $8 million.