Canada: Sea Change: The Internet And Use In Canada Part 1

Last Updated: June 27 2018
Article by Roger A.C. Kuypers and Janine A. MacNeil

Technological advancements in the marketplace have changed the manner in which goods and  services are offered to consumers.  E-commerce and web-based commercial activities by trademark owners are prominent among these advancements and have expanded the scope of what is considered use of a trademark in Canada.  Given that Canada is a common law jurisdiction, this has a direct impact on trademark owners seeking trademark protection or enforcement in Canada, especially those owners who do not have a commercial presence here.

Although pending changes to Canadian trademarks law will omit use as a basis of trademark applications, use will continue to play an important role in determining who has rights to a trademark in Canada.  The Canadian Trademarks Act (the "Act") defines "use" in association with goods as a mark displayed on the goods themselves or on the packaging, or otherwise so associated with the goods at the time of sale in the ordinary course of trade.  A mark is used in association with services if the mark is used or displayed in the performance or advertising of those services.

There is no one single approach to the treatment of Internet evidence.  Rather, what constitutes use on the Internet largely depends on the type of industry, and is determined on a case-by-case basis1.  The Canadian Trademark Opposition Board and the Courts have applied the following fundamental concepts to the adjudication of Internet evidence:

  • Interaction:  to effectively portray use, the Internet evidence should demonstrate an interaction between the company or the trademark and Canadian consumers, and
  • Relevancy:  to be considered use, Internet evidence must always be relevant to the goods and services for which a trademark is applied for or registered,
  • Location of Services:  in the case of services, the services must be offered in Canada.

In the first of two articles in this Series, we look at Interaction.  The second article looks at Relevancy and Location of Services.

Interaction with Canadians

The Courts have affirmed that simply having a website is not sufficient to demonstrate use.  Internet evidence should also demonstrate an interaction between the Company or the mark with Canadian consumers.

In Waltrip v Boogiddy Boogiddy Racing Inc2, an American NASCAR sports announcer failed in his opposition of an application to register the trademark "Boogity Boogity Boogity", a phrase which he used and which was featured on his merchandise.  The Board stated that he "provided no evidence regarding the number of Canadians who may have accessed these websites or read these articles" that featured his interviews or fan commentary demonstrating his popularity nor did he provide any evidence regarding on-line "sales figures for the amount of items sold in Canada bearing the mark...nor was any information provided regarding the number of Canadians who have visited the website. 3"  This case illustrates that data regarding Canadian use and access of the site can be evidence in some cases to demonstrate use.

Such evidence should adequately demonstrate the breakdown of the amount of Internet traffic from Canada that the website or services receive.  For example, in Bojangles' International LLC v. Bojangles Café Ltd. 4, the Court considered an application to expunge where an American restaurant franchise, without Canadian locations, submitted data that showed very few Canadians visiting its website each month. The Court found the Internet evidence to be non-determinative.

By way of contrast, in Advance Magazine Publishers, Inc. v. Banff Lake Louise Tourism Bureau, evidence adduced by Advance Magazine Publishers' argued it had "over 60 million 'unique visits' to its website from Canada" 5 which represented different individuals which it did not track repeat visitors.  The Court also considered Canadian activity on Advance Magazine Publishers' social media noting there were "tens of thousands of Canadian 'followers' of the Facebook and Twitter accounts, and well over one million 'likes' from Canadians for various articles and stories" and other channel subscribers such as Canadian views of its videos on YouTube.  The significant online presence as well as other evidence of licensing in Canada enabled the Court to conclude the mark acquired a distinctiveness in Canada.  The Court summarized its approach to the use of Internet and social media evidence as a way to assess influence on a market.  In particular, the court stated:

"in assessing customer awareness or reach into the marketplace through a website or social media, presence by merely posting a website or putting content into a social media platform may not be indicative of any particular reach into the market which would support an argument of acquired distinctiveness through use in Canada6. In this case, the more telling evidence relates to the number of visits or activity on the website or social media platforms7. This is valuable because it demonstrates both Canadians' awareness of the material and their desire to take some steps to seek it out, which itself reflects a certain recollection or awareness. The on-line impact of the brand is evident because it requires Canadians to take steps to engage, either through visiting the website or taking steps to "follow" it or to "like" a feature article or photograph on one or more social media platforms. This can be equally valuable in supporting an analysis of acquired distinctiveness under the Act8."

Interested in reading more? Part 2 is available here.

Footnotes

1 Express File Inc v HRB Royalty Inc, 2005 FC 542, 39 CPR (4th) 59. For example, retail stores have been found to provide a service in Canada even if they operate solely online as long as Canadians can purchase and be shipped merchandise to their homes through the website where as hotels are generally required to have a location in Canada in order to be found to be providing a service. Having a website that allows for online reservations is not sufficient. See Heenan Blaikie LLP v Sports Authority Michigan Inc, 2011 FC 273, and Supershuttle International, Inc. v. Fetherstonhaugh & Co., 2015 FC 1259.

2 2007 CanLII 80867 (CA TMOB), cited with approval by the Federal Court in Jack Black L.L.C. v. Canada (Attorney General), 2014 FC 664.

3 Ibid.

4 Bojangles' International LLC v. Bojangles Café Ltd., 2006 FC 657.

5 Advance Magazine Publishers, Inc. v. Banff Lake Louise Tourism Bureau, 2018 FC 108 at para 37.

6 UNICAST SA v South Asian Broadcasting Corporation Inc, 2014 FC 295 at paras 27-31; Cathay Pacific Airways Limited v Air Miles International Trading BV, 2016 FC 1125 at para 56.

7 TSA Stores, Inc v Registrar of Trade-Marks, 2011 FC 273.

8 TSA Stores; Teaja Holdings Ltd v Jana Beverages Ltd, 2017 TMOB 64 at para 21.

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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