Since the reform of the Trade-marks Act last June, trade-mark registration is no longer conditional on use in Canada.
However, the Registrar of Trade-marks (the ” Registrar “) may expunge the registration of a trade-mark that is not used, in Canada, within three years of its date of registration.
In the recent decision, Live! Holdings, LLC. c. Oyen Wiggs Green & Mutala LLP and Pickering Developments (Bayly) Inc. (2019 FC 1042), the Federal Court set out the right to maintain the registration of a trademark used in connection with services rendered, remotely, to Canadians.
The main issue in this case was whether Live! Holdings, LLC, a foreign company with no place of business in Canada, had demonstrated the use, in Canada, of its registered trademark in connection with its advertising, marketing and entertainment services, which included booking tickets for events and hotel stays in the U.S., offered to Canadians via Internet sites.
The Federal Court ruled that the availability of online reservation services on non-Canadian websites does not in itself constitute use of a trademark in Canada. Such services must provide tangible and real benefits to Canadians. For these reasons, the Federal Court dismissed Live! Holdings, LLC.’s appeal of the Registrar’s decision to expunge the “LIVE” trademark.
This decision is particularly relevant to e-commerce and technology companies that deal with Canadian consumers remotely.
Canadian and foreign trademark owners alike have an interest in reviewing their trademarks to ensure their continued registration and protection in Canada.
By Mélanie Masson