This is a story of what "use" really means. In the
internet context, a trademark can be displayed on a website by a
Canadian company, and that website can be accessed anywhere in the
world. Similarly, a foreign company can display its mark on a
website which can be accessed by Canadian consumers. Is the
foreign company's mark being "used" in Canada for
trademark purposes, merely by being displayed online to Canadian
If you follow this kind of thing... and who doesn't?... you
would say that this issue was settled in the 2012
case HomeAway.com, Inc. v
Hrdlicka,  FCJ No 1665 where Justice
Hughes said clearly: "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."
Not so fast.
In Supershuttle International, Inc. v. Fetherstonhaugh
& Co., 2015 FC 1259 (CanLII), the court
reviewed a challenge to the SUPERSHUTTLE trademark,
which was registered in connection with "airport
passenger ground transportation services". The
SUPERSHUTTLE mark was displayed to Canadian consumers who could
reserve airport shuttle transportation in the United
States. The mark was registered in Canada and displayed in
Canada, but no shuttle services were actually performed in
Canada. The court concluded that: "While the observation of a
trademark by individuals on computers in Canada may demonstrate use of a
mark, the registered
services must still be offered in Canada." (Emphasis
Non-Canadian trademark owners should take note: merely
displaying a mark in Canada via the internet may not be enough for
"use" of that mark in Canada. The services or
products which are listed in the registration must be available in
Canada. Make sure you get experienced advice regarding registration
of marks in Canada.
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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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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