In this recent decision, the impugned trade-mark registrations
were registered solely for retail store services. The registered
owner had previously used the impugned marks in association with
bricks and mortar retail stores in Canada; however, it had closed
its Canadian stores long before the hearing. The registered owner
continued to have retail outlets in the United States and
maintained a comprehensive retail website, which offered "help
me choose gear" and "shoe finder" services in
addition to online sales. The evidence showed that over 360,000
Canadians a year visited the website, but Canadians could not
purchase goods online and there were no retail stores in
Nonetheless, the Federal Court overruled the decision of the
Registrar and refused to cancel the trade-mark registrations for
non-use. The Federal Court noted that "services" should
be given a broad interpretation - and therefore concluded that
"as long as some members of the public, consumers or
purchasers, receive a benefit from the activity, it is a
service." In other words, use of a mark in association with
"services" does not necessarily require
sales or advertising in Canada, and could be established by any
incidental or ancillary activity by which some members of the
Canadian consuming public receive a benefit.
In this case, the Court was persuaded that the Canadian
consuming public received a benefit from the website as the extent
of the advice offered through the "help me choose gear"
and "shoe finder" services was found to be "akin to
visiting a bricks and mortar store and benefiting from a discussion
with a knowledgeable salesperson" and the "store
locator" service allowed a Canadian to enter her postal code
to find the location of the closest U.S. retail store. The Court
was also, no doubt, persuaded by the large number of Canadians that
used the website each year.
Importantly, this case only considered "use" in the
context of services: the Trade-marks Act very narrowly
defines "use" of a mark in association
with wares. It also may be important that the above case
considered "use" in the context of a s. 45 proceeding (a
summary proceeding to cancel registered marks that are no longer in
use in Canada), and the Registrar and the courts may be more
inclined to find use of a trade-mark in "close cases"
where a finding of non-use will result in summary cancellation of
the trade-mark registration.
Regardless, although this decision is good news for owners of
registered marks that have been served with a s.45 notice, it
raises challenges for those assessing the registrability and
distinctiveness of a trade-mark in the face of other potentially
confusing trade-marks that are displayed in Canada solely on a
corporate website that is accessible to Canadians.
The content of this article is intended to provide a general
guide to the subject matter. Specialist advice should be sought
about your specific circumstances.
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