Sea Change: The Internet And Use In Canada Part 1

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...