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Applicant is not a Broadcasting Undertaking; thus held Not to have Previous Use in Broadcasting Services

Adrian J. Howard
Beverley Moore
Chantal Saunders
Ryan Steeves
Borden Ladner Gervais LLP - Ottawa Office

April 15, 2014

Previously published on April 9, 2014

Unicast SA v. South Asian Broadcasting Corporation Inc., 2014 FC 295

In this case, Unicast brought an application pursuant to s. 57 of the Trade-marks Act requesting expungement of the trade-mark “RED FM” from the Register. The Court dismissed the application.

The Applicant operates a radio station in association with the trade-mark “ROUGE FM”. It is operated over the internet in Canada. The Respondent offers radio programing in association with the RED FM trade-mark. The Court held that for the Applicant to be successful, it must satisfy the Court that it had used its trade-mark before the Respondent, had not abandoned it, and that the two marks were confusing.

In considering these elements, the Court held that the Applicant’s online activities did not constitute “broadcasting” for the purposes of the legislation. The Applicant does not store its transmitted content on Canadian servers. It is not physically present in Canada. It does not seek or have advertisers in Canada. Finally, it did not take steps towards gathering Canadian listeners, other than offering its programming online. Thus, the Applicant’s activities were held not to constitute a “broadcasting undertaking” as they are not “carried in whole or in part in Canada”, under the Broadcasting Act. Thus, it cannot claim to have used the ROUGE FM trade- mark while providing broadcasting services to Canadians. As a result, the application must be dismissed.


The views expressed in this document are solely the views of the author and not Martindale-Hubbell. This document is intended for informational purposes only and is not legal advice or a substitute for consultation with a licensed legal professional in a particular case or circumstance.

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