A trademark is deemed used in association with a service if it is used or displayed in the performance or advertising of the service in Canada. The word "service" is not defined in the Trademarks Act and its meaning depends on the facts of each case. A service is not restricted to those that are independently offered to the public and a service may be ancillary to or connected with goods.
There is no distinction in the Act between primary, incidental, or ancillary services. As long as some members of the public, consumers, or purchasers receive a benefit from the activity and notwithstanding the service is provided without charge it is a service.
None of the restrictions relating to the use of a mark in association with goods described in last month's blog entry apply to the use of a mark in association with a service. For example, no commercial or monetary element is required for a trademark to be used in association with a service if a benefit is provided to the public.
The service must be performed in Canada. Use is not established by advertising a trademark in Canada when the performance of the service takes place outside of Canada. However, the operation of a website and online retail store to which Canadian customers have access and make purchases from in association with a trademark can constitute use of the trademark in Canada in association with online services notwithstanding the absence of any retail stores in Canada.
The meaning of terms used in trademark registrations can evolve. This is especially so where there have been significant technological advancements that have changed how services are offered to consumers.
The Federal Court observed that services delivered on-line had expanded greatly. The hotel in issue did not have a bricks and mortar location in Canada, but potential guests could make online reservations. The Judge said the meaning of "hotel services" must adapt to reflect the fact that an ordinary customer would expect to book a hotel room on-line. The scope of a registration must be considered in light of the ordinary meaning of the words and the impact of online commerce as it relates to the ordinary commercial understanding of both the business and the customer.
An ordinary customer making a contract for the reservation of a hotel room and receiving a discounted room rate and loyalty points for the booking, is receiving "hotel services" in Canada, when this transaction is completed by a person in Canada. The term "hotel services" naturally includes a series of related things, some of which can only be delivered at the physical hotel, but some of which can be "performed" (from the owner's perspective), or "enjoyed" (from the customer's perspective) in Canada.
The Judge concluded that the term "hotel services" included hotel registration services, when it is shown that people in Canada obtained some tangible, meaningful, benefit from such use. Customers in Canada received a meaningful benefit from the delivery of hotel services, through the on-line reservation service, and in particular the discounted room rate for a pre-paid room and loyalty rewards points received with a hotel booking.
The Federal Court of Appeal affirmed the approach of the trial Judge and dismissed an appeal. As long as some members of the public, consumers, or purchasers, receive a benefit from the activity in issue, it is a service. On reviewing the evidence, they agreed there was a benefit available.
Subsequent decisions from both Hearing Officers and the Federal Court have concluded that providing a service that is incidental or ancillary to a registered service can be considered performance of the registered service itself.
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.
