Trade-marks: What is “Use” of a Mark?

What constitutes “use” of a trade-mark in Canada? Under Canadian trade-mark law, a trade-mark is deemed to be used in association with services if it is used or displayed in the performance or advertising of those services. 

The Federal Court of Canada decision in TSA Stores Inc. v. Registrar of Trade-marks (2011 FC 273) adopts a liberal definition of “use”. 

TSA owns the registered mark THE SPORTS AUTHORITY in association with retail-store services in Canada. It operated six stores in Canada, but the stores were closed in 2000. It tried to maintain the validity of its mark by relying on display of the mark on a website that was accessible from Canada. In this case, TSA was able to show “use” of the mark through the operation of an information website through which US online sales were possible, but which did not permit Canadian sales. The court reasoned that “services” is a broad term and as long as some consumers or purchasers receive a benefit from an activity, then it qualifies as a “service” for the purpose of showing use of a mark. In other words, for services, use of a mark need not involve any sales or advertising, and could be established by any incidental activity by which some members of the Canadian consuming public receive a benefit.

What happens if we couple this with the decision in Masterpiece. Does this mean that any website on the internet which is accessible in Canada from which some Canadians derive some benefit, may establish trade-mark “use” in Canada? And is such use sufficient to invalidate a registered mark in Canada if it pre-dated the date-of-first-use of the registered mark?  Arguably, this would only apply in the case of services, but it certainly appears to lower the bar to establishing use in Canada and makes it difficult for trade-mark owners to assess the risks when filing a trade-mark application. This seems to raise more questions that it settles, and further clarity is required from the courts on this question.

Calgary – 07:00 MT

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