Author: Anastasia Reklitis

About Anastasia Reklitis

Anastasia Reklitis maintains a broad commercial litigation, arbitration and dispute resolution practice.

The Federal Court of Appeal Upholds Finding that Trademark Use Can Be Established Without a Physical Presence in Canada.

With the rise of e-commerce, many non-Canadian businesses can now advertise their services to Canadians online without having any physical presence in Canada. If these businesses have Canadian registered trademarks associated with these services, there are however important considerations for businesses wanting to properly maintain their trademarks in Canada. Unlike other forms of intellectual property, an owner of a Canadian trademark must “use” their registered mark in Canadian commerce or it may lose the protections provided by the Trademarks Act. It goes without saying that without a physical presence in Canada, it could be challenging for foreign trademark owners to prove that they are meeting the “use” requirement. The WALDORF ASTORIA case provides helpful guidance for foreign trademark owners to mitigate the risk of compromising their intellectual property.  

Recently in Miller Thomson LLP v Hilton Worldwide Holding Inc., 2020 FCA 134[1], the Federal Court of Appeal confirmed that a non-Canadian business may be able to establish “use” of its mark in Canada in association with its services, despite not having a “bricks and mortar” presence in Canada. The mark at issue in this case was the WALDORF ASTORIA trademark, registered by Hilton Worldwide Holding LLP in Canada (“Hilton”) in association with “hotel services”. Despite having this mark registered in Canada, there was no hotel operating under that name in Canada.

This case was originally before the Canadian Registrar of Trademarks, where the Registrar found that the absence of a brick-and-mortar hotel in Canada was fatal and ordered the WALDORF ASTORIA registration be removed. The Registrar’s decision was subsequently appealed to the Federal Court. On appeal, the Federal Court set aside the decision of the Registrar and concluded that a “bricks and mortar” hotel was not necessary to establish “use”, so long as Canadians obtained some tangible, meaningful benefit from the services in Canada. The Federal Court had found that hotel services encompass more than the provision of a room and that the evidence advanced by Hilton had established that there were several benefits that were available to people in Canada, over and above their eventual enjoyment of their stay in a “bricks and mortar” hotel. Moreover, the evidence established that many people in Canada had already taken advantage of such benefits.

The Federal Court of Appeal ultimately agreed with the lower court’s earlier determination, noting in its reasons that that trademark “use” requirements had to adapt to accord with 21st century commercial sales practices – i.e. sales and services in the Internet age.

The Federal Court of Appeal however cautioned that:

…bare assertions of use will not be enough, and the mere display of a mark on a website from outside of Canada will not suffice to establish use of the mark in this country in association with registered services. Moreover, the ability of individuals in Canada to passively view content on a foreign website will be insufficient to constitute use of a mark in this country. There must, at a minimum, be a sufficient degree of interactivity between trademark owner and Canadian consumer to amount to use of a mark in Canada in conjunction with services over the internet.

Based on the foregoing, it appears that for foreign trademark owners seeking trademark protection in Canada, it will be important to create a record supporting that the use of a trademark in Canada has been established. As noted by the Federal Court of Appeal, the determination as to whether a particular mark has been “used” in Canada in association with specified services is largely factual in nature. Trademark owners should appreciate that such cases will therefore most likely turn on the quality of the evidence.

The Federal Court of Appeal provided the following examples of evidence that may be persuasive in establishing the “use” of a mark in Canada as it relates to online services:

  • Website metrics demonstrating the number of times that a displaying mark has been accessed by people in Canada;
  • Evidence that the content offered by the website is stored on servers located in Canada;
  • Sales figures with respect to value of the registered services that have been provided to Canadian consumers over the internet; and  
  • Evidence that prices are listed in Canadian dollars.

Foreign trademark owners should consider these categories of evidence when designing websites to be accessed by Canadians in association with a specified service.


[1] https://decisions.fca-caf.gc.ca/fca-caf/decisions/en/item/484960/index.do

A Recent Look at Interlocutory Injunctions in Trademark Infringement Cases

Interlocutory injunctions remain difficult to obtain in trademark infringement cases. To obtain an interlocutory injunction, the moving party must satisfy a three-part test. A party must show that:  (1) a serious issue has been raised; (2) irreparable harm will result if the injunction is not granted; and (3) the balance of convenience favours the moving party. Over the years parties seeking injunctive relief in trademark infringement cases have faced difficulty satisfying the irreparable harm branch of the test. In order to satisfy the court that irreparable harm will result, the court requires clear and non-speculative evidence of harm that could not be compensated for by an award of damages at trial. This has proven to be difficult for parties for among other reasons, the fact that often in these cases it is in fact possible to quantify the harm that has and/or will be done and accordingly compensate the moving party through an award of damages at trial. Canadian courts have recently provided more insight on the evidence required to support a request for injunctive relief.

In the 2017 decision of Sleep Country Canada Inc. v. Sears Canada Inc., 2017 FC 148, Sleep Country Canada Inc. (“Sleep Country”) was granted an interlocutory injunction against Sears Canada Inc. (“Sears”) to prevent Sears from using its slogan: “THERE IS NO REASON TO BUY A MATTRESS ANYWHERE ELSE”, pending the final determination of Sleep Country’s trademark infringement action against Sears. Sleep Country alleged that Sears’ slogan infringed Sleep Country’s trademarked slogan of “WHY BUY A MATTRESS ANYWHERE ELSE”. The court accepted Sleep Country’s arguments and found that on a balance, there was a likelihood of confusion between the time of the motion and the disposition of the infringement action and that this confusion would result in lost sales as a result of consumers being less aware and familiar of the slogan’s association to Sleep Country. The court found that these associations would consequently result in a loss of distinctiveness for the brand of Sleep Country and this would in turn have an effect on the goodwill established by Sleep Country.

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