• Licensing the Use of a Website is Found to Relate to Wares, Not Services, as the Licence is an Intangible Good
  • March 31, 2016 | Authors: Adrian J. Howard; Beverley Moore; Chantal Saunders
  • Law Firm: Borden Ladner Gervais LLP - Ottawa Office
  • Specialty Software Inc. v. BEWATEC Kommunikationstechnik GmbH, 2016 FC 223

    In 1992, Specialty Software Inc. registered the trademark "MEDINET" in association with computer software programs in relation to wares rather than services. The mark was assigned to Medinet Health Systems Inc. in 2011.

    Bewatec sought expungement of the mark for non-use, Specialty failed to file any evidence of use between November 22, 2010 and November 22, 2013, and the Registrar granted Bewatec's application.

    Specialty now appeals and has presented fresh evidence of use that was not contested.

    Bewatec argues that the mark has been used in relation to services, not wares. The Court noted that Specialty used to sell its software in a tangible form on disks. This is no longer necessary. Clients can now obtain access to the software over the internet from Specialty's computer server after installing an icon on their computers. Bewatec argues Specialty's clients do not download or install or physically acquire anything, but merely obtain access to a service that Specialty provides over the internet.

    The Court disagreed that there was any real change in what Specialty was selling. Specialty has always been selling a license to use the software, which is an intangible good. The earlier disks merely represented the means by which the transfer of the goods occurred.

    On this basis, Specialty met the fairly low threshold that a registered owner must meet to demonstrate that its mark is not merely "deadwood" on the register.