Category Archives: Trademark

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

The Case of the ‘Missing S’

At What Point Can Trademark Owners Claim Damages When a Registered Mark Infringes?

Under section 19 of the Canadian Trademarks Act, “… the registration of a trademark in respect of any goods or services, unless shown to be invalid, gives to the owner of the trademark the exclusive right to the use throughout Canada of the trademark in respect of those goods or services.” (our emphasis) That exclusive right is said to be infringed if another person, among other things, sells goods in association with a confusingly similar trademark or trade name. (s. 20(1)(a)) The owner can then institute legal proceedings against the allegedly infringing party (s. 52 ff) and, if they are successful, obtain monetary compensation or other remedies.

But what happens if a registered trademark is later expunged and the use of that mark is held to be infringing another trademark owner’s trademark rights? When does the protection of section 19 cease? In other words,  when can another registered trademark owner obtain damages for that infringing use?

In its recent decision in Group III International Ltd. v. Travelway Group International Ltd., the Canadian Federal Court of Appeal has provided some guidance. According to this decision, in the absence of misrepresentation or bad faith, there can be no damages for the period prior to expungement.

The first decision in the case was issued in 2013, and involved the registered trademarks of GROUP III INTERNATIONAL LTD., HOLIDAY GROUP INC. and WENGER S.A. (collectively “GROUP III”), namely the “Wenger Cross Logo” as well as related marks with the words “WENGER” or “SWISSGEAR”  registered in association with luggage and bags.

GROUP III alleged trademark infringement and passing off by TRAVELWAY GROUP INTERNATIONAL LTD. (“Travelway”) with respect to the use of Travelway’s registered trademarks  on its luggage related products:

In this first judgement, the Federal Court ruled that Travelway’s registered marks were not confusingly similar to GROUP III’s, and therefore, that there was no infringement. Similarly, GROUP III’s claim that  Travelway had attempted to pass of their goods as those of the GROUP IIIs failed.

On appeal, however, the Federal Court of Appeal ruled that the trial judge had misapplied the test for confusion, overemphasizing the resemblance of the logos, and ruled that there was indeed confusion and passing off. The issues of whether  Travelway’s registered marks ought to be expunged, and the applicable quantum of damages were referred back to the Federal Court.

In 2019, the Federal Court ordered Travelway’s trademarks expunged, but refused to grant  GROUP III compensation as there could only be damages after the expungement of Travelway’s marks. At this stage GROUP III attempted to rely on the judge’s discretionary power with respect to remedies, alleging that  Travelways had blatantly infringed  GROUP III’s marks. Under the circumstances, they claimed, there was “no basis to deny compensation altogether.” According to GROUP III, the expungement should have rendered Travelway’s marks invalid from the beginning (e.g. void ab initio) and as such, the shield of Section 19 should never had existed.  However, the judge agreed with Travelway, and followed the precedent established in Remo Imports Ltd v Jaguar Cars Limited, which held that absent a finding of bad faith, a registration would not be deemed void ab initio. The judge noted that in the present case, the Travelway had “ceased all sales on the date of the Judgement of the Federal Court of Appeal,” and that there had in fact been no finding of bad faith.  Damages were only available after the expungement of the mark, not prior thereto.

GROUP III appealed on the basis that the Federal Court erred and should have found that the infringing marks have always been invalid and never registrable, therefore disentitling Travelway from relying on section 19 and entitling GROUP III to financial compensation from the moment Travelway started using its infringing trademarks. The Federal Court of Appeal ruled that Travelway “could rely on its registrations as protection until such time as the Federal Court expunged its trademarks from the Register.” In reaching this conclusion, it noted that trademark registration is subject to a complex, specialized administrative scheme, which militates against trademarks being deemed invalid from the outset. Furthermore, it distinguished between the time at which a trademark becomes invalid and the time at which it is expunged from the register. The latter, it concluded, must be the starting point for any liability arising from the use of a registered trademark that has been invalidated.

The case underlines the importance of obtaining registered trademarks. They continue to serve the dual purposes of protecting members of the public by allowing them to identify the source of goods and protecting owners’ business interests by preventing others from using their marks. However, they may also serve a defensive purpose: they can protect the owner, in certain circumstances, in infringement claims by third parties. That being said, this protection could, however, be lost where the trademark is obtained fraudulently or in bad faith.

IAM Global Leaders

Jean-Nicolas Delage Recognized as IAM Global Leader for 2021
Fasken partner, Jean-Nicolas Delage, has been recognized in the 2021 edition of IAM Global Leaders Guide.

Now into its second year, the IAM Global Leaders Guide brings together the world’s foremost private practice patent experts. Congratulations Jean-Nicolas! Read the full guide here.

Jean-Nicolas is the co-leader of the Technology, Media and Telecommunications group and specializes in intellectual property strategy for rapidly growing technological clients.

CIPO Fees to Increase After January 1, 2021

The Canadian Intellectual Property Office (“CIPO”) has announced that many of its fees for Canadian trademarks, patents, industrial designs, and integrated circuit topographies will increase on January 1, 2021. Among the fees being increased by 2% are those for an application to register a trademark as well as examination of patent and industrial design applications. A full list of the adjusted fees can be found in the links above or on the CIPO website.

The CIPO website should be consulted for an up-to-date listing of the adjusted fees because the applicable Tariff of Fees in the Patent Rules may not yet be updated. Whether the current fee or the adjusted fee must be paid for a given service will depend on the date on which the fee is received by CIPO, not the date on which the service is requested.

Fasken’s team of experienced intellectual property lawyers, patent agents, and trademark agents would be pleased to assist you with any and all CIPO matters.

Rapid Patenting of Solutions to Covid-19

Are you a small business or independent inventor with an invention which may help in the fight against COVID-19?

On 8 May 2020, the United States Patent and Trademark Office (USPTO) announced a new program for accelerating the review of patent applications related to COVID-19. This could be your lucky day (if you’re one of the 500 selected…)!

The purpose of this program is to facilitate the patenting process by reducing cost and allowing rapid review of eligible filed patent applications.

What do you need to know about the new program (“COVID-19 Prioritized Examination Pilot Program”)? Here’s a snapshot:

  • The patent application must cover a product or process that is subject to U.S. Food and Drug Administration (FDA) approval for use in the prevention and/or treatment of COVID-19.
  • Only small and micro entities are eligible (companies with <500 employees or independent inventors).
  • Prioritized examination fees are not required under this program (regular fees apply).
  • Total of 500 applications will be reviewed under the program.

Full details may be found by clicking here (link to USPTO).

Canada’s Intellectual Property Office (CIPO) does not have a specific program for inventors in response to COVID-19 but it has multiple programs for expediting review of new patent applications, and at a low cost relative to the U.S., which may be used as before. Canadian patent applications may be expedited under one of the following scenarios:

  1. By payment of a fee of $500CAD (useable on virtually all applications).
  2. By having a corresponding patent issued in a foreign patent office. For example, if you have filed the same patent application in the U.S. and Canada and a U.S. patent has issued, CIPO will expedite review of the corresponding Canadian application.

For any questions or further information, please contact a member of our patent group.