You Need More than Reservation Services to Reserve and Preserve Your Rights in Canada

In Live! Holdings, LLC. v Oyen Wiggs Green & Mutala LLP and Pickering Developments (Bayly) Inc., 2019 FC 1042 (“Live!”), the Federal Court of Canada again weighed in on the issue of trademark “use” by businesses without any bricks and mortar presence in Canada. The decision confirms that to sustain a registration for services such as entertainment and hotel services, more than merely the ability to reserve in Canada for such services offered elsewhere is required; there must be a “tangible and meaningful benefit” received in Canada.

The prevalence of online commerce poses interesting issues in the determination of “use” necessary to maintain registered trademark rights. Most Canadian decisions on trademark use originate from non-use challenges under section 45 of the Trademarks Act, which provides a mechanism to cancel unused registrations after the third anniversary of registration in the absence of use in Canada during the preceding three years. Such non-use proceedings have been characterized as a mechanism to clear “deadwood” from the Register, and with Canada's new trademark regime, where “use” is no longer necessary to obtain a registration, setting clear guidelines on what is necessary to maintain a registration is increasingly important.

The Live! decision issued following an appeal of the Registrar's decision to cancel the LIVE registration for non-use. On appeal, the registrant (“Live! Holdings”) filed evidence pertaining to entertainment services, hotel services and advertising and marketing services for others. Argument focused on whether the use was “by the registrant”, whether use in association with ancillary reservation services amounted to “use” for hotel and entertainment services, and, if not, whether there were special circumstances excusing non-use.

Must show use “by the registrant”

The provisions of s. 45 of the Trademarks Act require evidence of useby the registrant. This issue is commonly raised by parties challenging evidence of use in Canada (as well as those defending allegations of infringement and depreciation of goodwill). Past decisions have acknowledged that a registered mark can be cancelled or be found unenforceable, even if in use in Canada, if such use is not by the registrant. However, if an entity is licensed by the owner, and the owner maintains direct or indirect control over the character and quality of the goods/services, such use is deemed (by s. 50 of the Act) to have the same effect as use by...