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April 2011

By James Buchan

Providing information on a website may be sufficient to establish use for retail store services in Canada

In TSA Stores, Inc. v. Heenan Blaikie LLP (2011 FC 273), the Federal Court found that use of a trade-mark on a website that provided descriptions and information on how to choose and care for various products constituted use of a mark in association with retail store services. 

In 2006, at the request of the law firm Heenan Blaikie, the Trade-marks Office issued a summary expungement notice to TSA Stores requiring it to show that certain of its registered trade-marks were in use in Canada in association with various wares and services, including retail store services. The Trade-marks Opposition Board expunged the registrations, finding that the evidence submitted by TSA Stores did not show use of the trade-marks by the registered owner nor that it had demonstrated it had licensed the use of the marks. 

On appeal with respect to four of the trade-mark registrations, and with the benefit of additional evidence, the Federal Court concluded that the subject trade-marks were in use for retail stores services and were duly licensed. 

The decision is of particular interest because the Federal Court also found that the impugned trade-marks were in “use” in Canada on the basis that the marks were displayed on a website accessible to Canadians in circumstances where the website provided information about products found in stores located in the U.S., and the website provided a store locator feature showing the nearest store in the U.S. The Federal Court found that the Trade-marks Act makes no distinction between primary, incidental or ancillary services and, as long as some members of the public in Canada receive a benefit from the activity, retail store services are provided. The Federal Court compared visiting the website for information to help choose sporting gear as “akin to visiting a bricks and mortar store and benefiting from a discussion with a knowledgeable sales person.”

This decision opens up for question the extent to which a trade-mark registration can be supported by use of a trade-mark on a website visited by Canadians who receive a benefit from doing so, even when the core services described in the registration are not available in Canada.

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