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Sea Change: the Internet and Use in Canada Part 2

Fasken
Reading Time 4 minute read

The Trademarks Opposition Board (the “Board”) and the Courts have had to reconsider traditional concepts of trademark “use” through Internet activities by trademark owners.  This second of two articles on this subject looks at two other factors that support trademark use in Canada based on the Internet:  Relevancy and Location of Services. Click here to read the first article.

Relevancy

Internet evidence must always be relevant to the goods and services for which the trademark is registered.  This is supported in the following two cases.

In Trust v. Navsun Holdings Ltd., the Court found that evidence from “Google Analytics” regarding the number of visits by Canadians to an electronic version of a newspaper which featured the trademark was “irrelevant.”  The case fell upon the issue was distinctiveness of a trademark in association with printed publications and newspapers distributed in Canada[1].

Likewise, in Eclectic Edge Inc v. Gildan Apparel (Canada) LP[2], the Court considered searches of a domain name database.  It held the results to be predominately irrelevant since the websites were inaccessible, inactive, foreign or about subjects other than the mark.  Further, no evidence regarding Canadians accessing or using the websites or any online sales to Canadians was present[3].

Location of Services

In the case of services, the use of Internet evidence also depends upon the services being offered in Canada.  In Pain & Ceballos LLP v Crab Addison, Inc., the Board stated that the availability of a website to a Canadian consumer should not be conflated with providing services:  “Where a trade-mark owner performs services in another jurisdiction and wishes to obtain and maintain a registration in Canada in association with the same trade-mark and same services, it should generally mirror the performance of those services in Canada; merely casting the shadow of those services is insufficient[4].”  This reinforces that Internet evidence is likely not useful unless the foreign entity carries on a service or provides goods in Canada[5].

This was further illustrated in UNICAST SA v South Asian Broadcasting Corp.[6]  The Court stated that there “is an important distinction between services performed in Canada and services performed outside Canada, perhaps for Canadians.”  In UNICAST, a Swiss radio broadcaster applied to expunge a registration for the trademark RED FM.  The Swiss broadcaster claimed that it provided radio broadcasting services to Canadians through its website with an earlier and confusingly similar trademark.

The Court rejected the applicant’s argument that, based on the statement “a trade-mark which appears on a computer screen website in Canada, regardless where the information may have originated from or be stored, constitutes for Trade-Marks Act purposes, use and advertising in Canada[7],” an appearance of a trademark on a computer screen through the Internet is sufficient to prove use.  Instead, the Court affirmed that services must be offered to Canadians or performed in Canada to constitute “use,” and that merely displaying a trademark as a means of use only suffices when the services are actually offered to Canadians[8].

When rendering its decision, the Court focused on the use of the trademark, noting the Broadcasting Act requires the broadcasting be “carried on in whole or in part within Canada”[9].  The Court considered the applicant did not have: (a) servers that contained the content located in Canada, (b) a physical presence in Canada, such as an office, (c) advertisers in Canada, and (d) targeted programming for Canadian audiences[10].  Based on these factors as well as there being no evidence of services actually being performed in Canada or online listenership prior to the competing mark, the Court dismissed the application to expunge the application.

As noted above, the Swiss radio broadcaster relied on an earlier Court decision in which the Court found that a Delaware company, HomeAway.com, advertised and contracted with Canadians to display Canadian homes on its website, which also displayed its trademark. HomeAway.com was in the business of advertising and used its trademark by means of advertising on its website[11].  As Canadians contracted its services and displayed their homes on its website, the company was able to demonstrate its mark was being “used” in Canada for services.

 



[1] Trust v. Navsun Holdings Ltd., 2018 FC 42 at para 62.

[2] Eclectic Edge Inc v. Gildan Apparel (Canada) LP, 2015 fc 1332.

[3] Ibid, at paras 65, 71 and 87-88.

[4] Fethersonhaugh & Co v Supershuttle International Inc, 2014 TMOB 155, aff’d 2015 FC 1259.

[5] See also, AT&T Intellectual Property II, L.P. v. Lecours, Hebert Avocats Inc., 2017 FC 734 at paras 13 and 14 where the Court stated, “In the case of trademarks displayed on websites, “use” requires not only the display of the trademark in advertising services but also the ability to make those services available in Canada …However, the service available in Canada does not have to be the primary service, since the Trade-marks Act makes no distinction between primary, incidental, or ancillary services; therefore, “as long as some members of the public, consumers or purchasers, receive a benefit from the activity, it is a service” (TSA Stores, Inc v Canada (Registrar of Trade Marks), 2011 FC 273 (CanLII) at para 17 [TSA]).”

[6] UNICAST SA v South Asian Broadcasting Co., 2014 FC 295 at para 46 (“UNICAST”).

[7] HomeAway.com, Inc. v Hrdlicka, 2012 FC 1467 at para 22 (“HomeAway”) as cited in Ibid at para 45.

[8] Ibid, at paras 45 and 75.

[9] Ibid, at para 60.

[10] Ibid, at para 61-64.

[11] HomeAway, supra note 8 at paras 24-29