• Are You Being Served?: The Noteworthy Differences between Proving ¿Use¿ of a Service Mark in Canada and the U.S.
  • May 1, 2015 | Author: Graham A. Hood
  • Law Firm: Smart & Biggar/Fetherstonhaugh - Toronto Office
  • The U.S. Court of Appeals for the Federal Circuit recently delivered a decision that helps to highlight some noteworthy differences between U.S. and Canadian trademark law. In David Couture v Playdom Inc ("Playdom"), 113 USPQ2d 2042 (TTAB 2015), the Court was asked to consider whether the U.S. Trademark Trial and Appeal Board (TTAB) had erred in its decision to cancel a U.S. trademark registration because the applicant had not "used" the trademark in commerce as of the date of his application. At issue was whether the offering of a service, without the actual provision of a service, is sufficient to constitute use in commerce under U.S. trademark law.

    In upholding the TTAB's decision to cancel the trademark, the Court confirmed that advertising or publicizing a service that an applicant intends to perform in the future will not support the registration of a trademark, and found that "rendering services requires actual provision of services". The Court ruled that the TTAB was correct to cancel the trademark because the appellant "had not rendered his services as of the filing date of his application", but "merely posted a website advertising his readiness, willingness and ability to render said services".

    The strictness of the U.S. law concerning trademark "use" in connection with services contrasts with a somewhat more liberal view in Canada.

    For instance, Canadian courts traditionally applied a strict test similar to that in Playdom and required both advertising and actual performance of the services in Canada in order to find "use". However, in many more recent decisions, Canadian courts have held it to be sufficient if the brand owner is merely ready, willing and able to provide the advertised services in Canada.

    Consequently, in these decisions, Canadian courts have found trademark "use" because the owner was in a position to perform its advertised services in Canada, without requiring that the services have, in fact, been performed in Canada.

    Also, there have been many cases in which it has been held that a mark is in "use" in Canada even though it has merely been used in connection with "secondary", "incidental" or "ancillary" services, rather than the "primary" services set out in the relevant trademark registration. For example, the trademark ORIENT-EXPRESS was held to be in use in association with "travel services, namely railway passenger service" in the absence of an ORIENT-EXPRESS train service operating in Canada, because "train reservations and ticketing services" were nevertheless provided in Canada. Similarly, trademark registrations relating to the operation of retail sporting goods stores under the trademark THE SPORTS AUTHORITY were maintained, even though no such stores were located in Canada, because the brand owner's website provided information to Canadians.

    The U.S. Court's decision in Playdom also punctuates another notable difference between U.S. and Canadian trademark law, one that will materialize in late 2016 or early 2017, when the amendments to Canada's Trademarks Act are now expected to come into force. At present, an applicant in both Canada and the U.S. must either claim to have used its trademark as of the date of its application or file its application on the basis of "proposed use" (in Canada) or "intent to use" (in the U.S.), in which case the application will issue to registration only after the applicant has subsequently filed with the relevant trademarks office a "declaration of use" (in Canada) or a "statement of use" (as well as a specimen of such use, in the U.S.). However, as we have reported previously in our January 16, 2015 IP Update, an applicant in Canada will soon no longer need to provide, prior to registration, a date of first use or a declaration of use in Canada in order to secure a trademark registration. Thus, in Canada, an applicant will be able to register a trademark without ever claiming or commencing use once the amendments to the Act come into force.

    The preceding is intended as a timely update on Canadian intellectual property and technology law. The content is informational only and does not constitute legal or professional advice. To obtain such advice, please communicate with our offices directly.