Liberal Party of Canada and Green Shift Inc.: Principles Take a Back Seat to the Almighty Dollar

Update July 7, 2009: Barry Stork’s post “Liberal Party of Canada and Green Shift Inc.: Principles Take a Back Seat to the Almighty Dollar” won the Gowlings LLP Best Blog in IP Law and Technology Prize Fall 2008 in Professor D’Agostino’s IP class

Even before Parliament’s dissolution on September 7, 2008, Jennifer Wright took issue with the Liberal Party of Canada (LPC). While many disagree with a party’s environmental policy, Ms. Wright’s primary concern was the LPC’s policy name – the Green Shift. As CEO of Green Shift Inc. (GSI), a company involved in environmental consulting and product brokering and distribution, she claimed trade-mark infringement. When talks with the LPC went nowhere, GSI sued, seeking an injunction to prevent the LPC from using its trade-mark and seeking $8.5 million in damages. [1]

There are two sources of law concerning trade-mark infringement that GSI could base its claim on. First is the common law tort of passing-off, which is grounded in averting a disruption of economic relations by misrepresentation.[2] Key to GSI’s success here would be to show the LPC made a misrepresentation that caused confusion between GSI and the LPC plan, resulting in financial harm to GSI.

As with tort actions, Ms. Wright had the legal and evidentiary burden of proof regarding the affirmative elements of the cause of action. Some confusion occurred between the LPC’s and GSI’s websites, the former located at thegreenshift.ca, the latter at greenshift.ca. Ottawa MP David McGuinty erroneously gave the wrong website in the House of Commons, while other MP’s have provided erroneous links on their websites. [3]

However, once beyond the “website debate,” GSI’s claim becomes tenuous. While the LPC’s website caused some confusion, it was not misrepresenting their “product.” It was not pretending to be an incorporated company involved in environmental consulting and product distribution. It is difficult to believe that a reasonable person would confuse a political party’s plan with a company selling toilet paper and organic coffee. It is also difficult to see how the LPC caused any damage to GSI. If anything, this incident probably led to increased internet traffic to GSI’s website, though, admittedly, perhaps to unwanted traffic too. Regardless, the lack of the LPC’s misrepresentation makes GSI’s claim of passing-off unlikely to succeed.

Secondly, GSI can claim the LPC infringed upon its statutory protection under section 7(b) of the Trade-marks Act, which states “[n]o person shall direct public attention to his wares…as to cause or be likely to cause confusion in Canada…”[4] Such a claim would also fail, as GSI would need to prove that the LPC brought attention to its plan in a way that caused confusion with GSI. For the reasons discussed previously, this would be a difficult burden to meet.

Despite a seemingly convincing LPC legal argument, on September 9, 2008 an agreement was announced, whereby the LPC could continue using the term “Green Shift” by purchasing a licence from GSI.[5] This agreement appears to reinforce my belief that GSI did not really believe the LPC was misrepresenting its wares, but rather was interested in a cash grab. However, to get publicity off this issue and return to campaign issues, one cannot condemn the LPC’s agreement. Given recent poll numbers, this may not have been a bad agreement.