Proving Use In Canadian Trademark Cancellation Proceedings: Registrant Discovers That 'Ancillary Services Principle' Has Its Limits, As Registered Services Held Not To Have Been Performed In Canada

The recent decision of the Federal Court in SuperShuttle International, Inc v Fetherstonhaugh & Co, 2015 FC 1259, is a helpful reminder to registered rights holders of the dangers of not using their trademarks in association with the specific goods or services covered by their registrations. In this case, the registrant, SuperShuttle International, Inc. ("SuperShuttle"), appealed from a decision of the Registrar of Trade-marks, which had concluded that SuperShuttle had not used its registered trademark SUPERSHUTTLE in Canada in connection with its registered "[a]irport passenger ground transportation services". Consequently, the registrant's SUPERSHUTTLE trademark was found to be "deadwood", and expunged from the trademarks register pursuant to section 45 of the Trade-marks Act.

The late Brian Isaac of our Toronto office successfully represented the respondent.

Issues on appeal

The registrant raised two issues on appeal.

First, did the Registrar err by interpreting the meaning of "use" in section 4 of the Act, such that the registrant's activities in Canada did not constitute use of the mark with the registered services?

Second, is a mark "used" in Canada with a service if an essential step in the performance of that service, including the provision of a benefit to consumers, happens in Canada?

Issue No. 1: Did the Registrar misinterpret the statutory definition of "use"?

With respect to the first issue, the Court found that the Registrar did not err. None of the evidence filed by the registrant at first instance demonstrated use of the mark with the registered services. Rather, the Registrar found, and the Court agreed, that the registrant in this case did not operate an "[a]irport passenger ground transportation" service in Canada, but only advertised, and allowed Canadians to reserve, that service in Canada. Since "reservation services" were not the registered services, the Registrar "was not satisfied that the [a]pplicant performed the registered 'airport passenger ground transportation services' in Canada and consequently decided that the [trademark SUPERSHUTTLE] should be expunged from the trademarks register".

Issue No. 2: Does an "essential step" in the performance of a service amount to a performance of the service itself?

The Registrar, the Court ruled, also did not err with respect to the second issue, finding that the occurrence in Canada of a single "essential step" in the performance of a registered service does not constitute...