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Clarity Around Use of a Trademark for Services on the Internet

Use is essential in Canadian trademark law. The Federal Court of Appeal has addressed the “use” of a trademark in association with services on the internet. in the context of a non-use cancellation action.

The Trademarks Act defines “use” in relation to services if the trademark “is used or displayed in the performance or advertising of those services”.[1] Courts have held that the mere advertising of services in Canada will not constitute use in Canada in association with a service. Some aspect of the services must be performed or delivered in Canada.[2] This is a fact based assessment where the services claimed are to be assessed according to their ordinary commercial meaning.

The Federal Court of Appeal noted prior jurisprudence holding an incidental or ancillary service to a claimed service can be considered performance of the claimed service itself so as long as some consumers, purchasers or members of the public in Canada receive a material benefit from the activity in issue, it will amount to the performance of the service.[3]

The Federal Court of Appeal noted that in order to show “use” in association with services in Canada mere assertions of use or mere display of the trademark on a website from outside of Canada will not suffice to establish use of the mark in Canada.[4]

In order to find “use” from display of a trademark on a website outside of Canada the Federal Court of Appeal noted that there must be, at minimum, sufficient interactivity between trademark owner and Canadian consumer to amount to use of a mark in Canada in conjunction with services over the internet.[5] Examples of evidence that a Court would find helpful in showing such use in relation to services from a website are:

(a) Evidence with respect to website metrics such as the number of times that a website displaying a mark has been accessed by people in Canada;[6]

(b) Evidence with respect to the number of Canadians who have availed themselves of the online services offered in conjunction with the mark, as well as sales figures with respect to value of the registered services that have been provided to Canadian consumers over the internet;[7]

(c) Evidence showing that the content offered by the website is stored on servers located in Canada may also be persuasive;[8]

(d) Evidence showing that consumers in Canada are targeted with advertising;[9]

(e) Evidence that prices are listed in Canadian dollars or other indicators demonstrating that the website is directed to Canadian customers;[10] and

(f) Depending on the industry or sector there may be other evidence to establish use of a mark in Canada in association with specific services, such as, for example compliance with Canadian regulations.[11]

The Guidance provided by the Federal Court of Appeal provides a good checklist of the criteria a court may seek in order to ascertain in internet display of a trademark constitutes “use” in Canada for the purpose of non-use cancellation proceedings under the Trademarks Act.[12]

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[1] See S. 4, Trademarks Act, R.S.C. 1985, c. T-13.

[2] See Miller Thomson LLP v. Hilton Worldwide Holding LLP, 2020 FCA 134 at para. 7 citing Porter v. Don the Beachcomber, [1966] Ex.C.R 982, 48 C.P.R. 280 at para. 17; Marineland Inc. v. Marine Wonderland and Animal Park Ltd., [1974] 2 FC 558.

[3] See Miller Thomson LLP v. Hilton Worldwide Holding LLP, 2020 FCA 134 at para. 108 citing Kraft Ltd. v. Registrar of Trade Marks (1984), 1 C.P.R. (3d) 457, [1984] 2 FC 874 at para. 9 (T.D.), and Société nationale des chemins de fer français v. Venice Simplon-Orient-Express Inc., 9 C.P.R. (4th) 443, [2000] F.C.J. No. 1897 at paras. 8–10.

[4] See Miller Thomson LLP v. Hilton Worldwide Holding LLP, 2020 FCA 134 at para. 147.

[5] See Miller Thomson LLP v. Hilton Worldwide Holding LLP, 2020 FCA 134 at para. 147.

[6] See Miller Thomson LLP v. Hilton Worldwide Holding LLP, 2020 FCA 134 at para. 148.

[7] See Miller Thomson LLP v. Hilton Worldwide Holding LLP, 2020 FCA 134 at para. 148.

[8] See Miller Thomson LLP v. Hilton Worldwide Holding LLP, 2020 FCA 134 at para. 150.

[9] See Miller Thomson LLP v. Hilton Worldwide Holding LLP, 2020 FCA 134 at para. 150.

[10] See Miller Thomson LLP v. Hilton Worldwide Holding LLP, 2020 FCA 134 at para. 150 citing Lapointe Rosenstein LLP v. West Seal Inc., 2012 TMOB 114, 103 C.P.R. (4th) 136, at para. 27; Dollar General Corporation v. 2900319 Canada Inc., 2018 FC 778, 157 C.P.R. (4th) 318 at para. 27.

[11] See Miller Thomson LLP v. Hilton Worldwide Holding LLP, 2020 FCA 134 at para. 151 citing that such evidence could have been relevant in Unicast SA v. South Asian Broadcasting Corporation, 2014 FC 295, 122 C.P.R. (4th) 409.

[12] See S. 45, Trademarks Act, supra.

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