The U.S. Court of Appeals for the Federal Circuit recently
delivered a decision that helps to highlight some noteworthy
differences between U.S. and Canadian trademark law. In David
Couture v Playdom Inc ("Playdom"), 113
USPQ2d 2042 (TTAB 2015), the Court was asked to consider whether
the U.S. Trademark Trial and Appeal Board (TTAB) had erred in its
decision to cancel a U.S. trademark registration because the
applicant had not "used" the trademark in commerce as of
the date of his application. At issue was whether the offering of a
service, without the actual provision of a service, is sufficient
to constitute use in commerce under U.S. trademark law.
In upholding the TTAB's decision to cancel the trademark,
the Court confirmed that advertising or publicizing a service that
an applicant intends to perform in the future will not support the
registration of a trademark, and found that "rendering
services requires actual provision of services". The Court
ruled that the TTAB was correct to cancel the trademark because the
appellant "had not rendered his services as of the filing date
of his application", but "merely posted a website
advertising his readiness, willingness and ability to render said
The strictness of the U.S. law concerning trademark
"use" in connection with services contrasts with a
somewhat more liberal view in Canada.
For instance, Canadian courts traditionally applied a strict
test similar to that in Playdom and required both
advertising and actual performance of the
services in Canada in order to find "use". However, in
many more recent decisions, Canadian courts have held it to be
sufficient if the brand owner is merely ready, willing and able to
provide the advertised services in Canada.
Consequently, in these decisions, Canadian courts have found
trademark "use" because the owner was in a position to
perform its advertised services in Canada, without requiring that
the services have, in fact, been performed in Canada.
Also, there have been many cases in which it has been held that
a mark is in "use" in Canada even though it has merely
been used in connection with "secondary",
"incidental" or "ancillary" services, rather
than the "primary" services set out in the relevant
trademark registration. For example, the trademark ORIENT-EXPRESS
was held to be in use in association with "travel services,
namely railway passenger service" in the absence of an
ORIENT-EXPRESS train service operating in Canada, because
"train reservations and ticketing services" were
nevertheless provided in Canada. Similarly, trademark registrations
relating to the operation of retail sporting goods stores under the
trademark THE SPORTS AUTHORITY were maintained, even though no such
stores were located in Canada, because the brand owner's
website provided information to Canadians.
The U.S. Court's decision in Playdom also
punctuates another notable difference between U.S. and Canadian
trademark law, one that will materialize in late 2016 or early
2017, when the amendments to Canada's TrademarksAct are now expected to come into force. At present, an
applicant in both Canada and the U.S. must either claim to have
used its trademark as of the date of its application or file its
application on the basis of "proposed use" (in Canada) or
"intent to use" (in the U.S.), in which case the
application will issue to registration only after the applicant has
subsequently filed with the relevant trademarks office a
"declaration of use" (in Canada) or a "statement of
use" (as well as a specimen of such use, in the U.S.).
However, as we have reported previously in our
January 16, 2015 IP Update, an applicant in Canada will soon no
longer need to provide, prior to registration, a date of first use
or a declaration of use in Canada in order to secure a trademark
registration. Thus, in Canada, an applicant will be able to
register a trademark without ever claiming or commencing use once
the amendments to the Act come into force.
The preceding is intended as a timely update on Canadian
intellectual property and technology law. The content is
informational only and does not constitute legal or professional
advice. To obtain such advice, please communicate with our offices
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A recent Saskatchewan Court of Queen's Bench decision allowed a court-appointed receiver to sell and transfer intellectual property rights free and clear of encumbrances, finding that a license to use improvements of an invention was a contractual interest and not a property interest.
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