Gascon Propriété intellectuelle Intellectual Property

Since the amendments to the Trademarks Act in June, the use of a trademark is no longer a prerequisite for obtaining the registration of a trademark in Canada.

However, a trademark registration may be expunged by the Registrar of Trademarks (the “Registrar”), if it has not been used in Canada within three years following the date of its registration.

In its recent decision, Live! Holdings, LLC. v. Oyen Wiggs Green & Mutala LLP and Pickering Developments (Bayly) Inc. (2019 FC 1042), the Federal Court defined the right to maintain the registration of a trademark used in connection with services rendered to Canadians from a distance.

In this case, the key issue was whether Live! Holdings, LLC., a foreign corporation with no “brick and mortar facilities” in Canada, had established use of its “LIVE” trademark, registered in Canada in connection with advertising, marketing and entertainment services consisting, namely, in reservation services of tickets for events or stays in hotels in the U.S. offered to Canadians via websites.

The Federal Court held that, in itself, the accessibility to online reservation services on foreign websites did not constitute use of a trademark in Canada. Such services have to procure tangible and meaningful benefits to Canadians. For this reason, the Federal Court dismissed Live! Holdings, LLC.’s appeal of the Registrar’s decision to expunge the “LIVE” trademark.

This decision is particularly relevant for e-commerce or technology-based business whose dealings, with Canadian consumers, are from a distance.

Both Canadians and foreigner owners of trademarks should review their trademarks in order to maintain their registrations and ensure their protection in Canada.

By Mélanie Masson