In a recent Federal Court of Canada (the "FC")
decision, 2015 FC 1259, the FC dismissed an appeal by
Supershuttle International, Inc. ("Supershuttle") to
overturn a decision of the Registrar of Trade-marks (the
"Registrar"), expunging its Canadian trade-mark
registration for SUPERSHUTTLE (the "Mark") for
Supershuttle provides ground transportation services to and from
airports in cities that are all located outside of Canada.
Canadians wanting to utilize Supershuttle's services can and do
book tickets and make reservations through their website,
which is accessible to persons who are physically in Canada.
In December 2003, Supershuttle registered the Mark in Canada for
use with "airport passenger ground transportation
services" (the "Registered Services").
In February 2012, a summary cancellation proceeding was brought
against the Mark pursuant to section 45 of the Trade-marks
Act, requiring Supershuttle to provide evidence demonstrating
use of the Mark in Canada in the three preceding years.
Despite the evidence submitted by Supershuttle, the Registrar
concluded that Supershuttle had not used the Mark in association
with the Registered Services in Canada. The Registrar's
decision was based largely on the fact that Supershuttle did not
actually operate any shuttles or vans in Canada, and on the basis
that simply advertising the Registered Services in Canada through
its website, without those services actually being available for
performance in Canada, was not sufficient to demonstrate use.
Supershuttle subsequently appealed to the FC and raised the
Did the Registrar err in its interpretation of the statutory
meaning of "use"; and
Is a trade-mark "used" in Canada in connection with a
service if an essential step in the performance of that service
happens in Canada?
The FC ultimately denied Supershuttle's appeal on the basis
that, while the observation of a trade-mark by individuals based in
Canada may demonstrate use of that mark, the services with which
that mark is purportedly being used must still be performed in
In this case, despite the Mark being advertised and known in
Canada and used by Canadians for the purposes of making bookings
and reservations, "reservation services" were not
included as part of the Registered Services; as such, the Mark was
not being "used" in connection with the Registered
Services. Consequently, the FC concluded that the Mark could
not be maintained.
The decision in this case seems to run contrary to at least one
previous decision of the FC, where the "use"
of the trade-mark at issue in association with travel services was
deemed to also be "use" in association with incidental or
ancillary services, such as ticketing and reservation
services. While the trial judge in Supershuttle
recognized that "use" of a trade-mark in relation with a
service must be decided on a case-by-case basis, the apparent
inconsistency in the case law is a good reminder that trade-mark
applicants should exercise caution when deciding upon the services
to be included as part of a trade-mark application. In
particular, applicants should be cognizant of the risk associated
with including services that are, in fact, not offered in Canada
– even if the trade-mark can be observed by individuals in
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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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