By Richard Stobbe

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 consumers?

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, [2012] 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 added)

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.

Calgary – 07:00 MT