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“Use” of a Trademark in Association with Services – Does It Have to Be “In the Normal Course of Trade”?

Suppose you maintain a blog providing original guides and tips on low-budget travel, and intend to use your blog for branding purposes. If your trademark headlines your blog posts, have you “used” your trademark?

Under the current Canadian law, if a trademark is not “used” for a period of time, the owner risks losing his or her registered rights. What constitutes “use” in Canada differs depending on whether the use is with respect to goods or services. With respect to goods, there is use of a trademark if, at the time of the transfer of the goods “in the normal course of trade”, the trademark is marked on the goods or their packaging.[1] But your travel website does not involve any “goods”; what you offer are services. Depending on the content of your blog, you could be offering personal services by helping your readers plan their trips, and/or advertising and marketing services if you provide links to third party websites. With respect to services, a trademark is used if it is displayed in the performance or advertising of those services.[2] There is no suggestion in the Trade-marks Act (“Act”) that for services, the use of the mark must be “in the normal course of trade”.

The Trademarks Opposition Board (“TMOB”) and the courts have held that when a trademark is used in association with services, the use does not have to occur in the normal course of trade.[3] While not expressly rejecting this finding, the Federal Court in Cornerstone Securities Canada Inc. v. Canada (Registrar of Trade Marks)[4] held that an element of commercial use must exist to establish use for services. In arriving at this finding, the Court in Cornerstone relied on an earlier Federal Court decision,[5] but one that dealt with goods and not services. Could it be that the Court in Cornerstone erred in its interpretation of the relevant provision on use?

Cornerstone has been subsequently applied, at least by the TMOB. In Boston Pizza International Inc. v. Boston Chicken Inc.,[6] the registered mark BOSTON CHICKEN for take-out restaurant and catering services was challenged. Boston Chicken alleged the following use in Canada: it imported individually packaged side items from one of its restaurants in Detroit and served the items at a Salvation Army event in Windsor, Ontario. The trademark BOSTON CHICKEN was displayed on a banner and on the t-shirts worn by the staff at the event. The TMOB found that displaying the mark BOSTON CHICKEN at a single charitable event was not of a “normal commercial nature” and did not constitute use under section 4(2) of the Act. Several subsequent decisions, dealing in part with deemed use in association with services, have made passing reference to use being “in the normal course of business”.[7]

The current authorities seem to indicate that “an element of commercial use”, a more lax standard than “normal course of trade”, is applicable when establishing use for services. The TMOB has explained that, in the context of goods, “normal course of trade” implies that the transactions in which use occurs must involve some payment or exchange of the goods that is a part of a regular dealing in the goods for the purpose of acquiring goodwill and profits.[8] This suggests that the goods should be the object of the transactions.[9] This is not necessary when establishing use for services. As long as the associated trademarks are displayed during the performance of the services, there can be use even if the transaction is for goods and the services are only incidental or ancillary to the goods offered.[10] The “commercial use” standard can also be met without the trademark owner actually performing the services, if the trademark is displayed in the advertising of the services and the owner is offering and prepared to perform the services in Canada. The term “commercial” suggests that an intention to make profit should probably accompany the use of a trademark.[11]

Headlining your trademark on your travel tip blog with an intention to use the blog for business or branding purposes likely constitutes “use” within the meaning of section 4(2) of the Act. The display of the trademark identifies and advertises your website, and the blog posts are one way to perform services for your readers. There is likely an element of “commercial use” as contemplated by Cornerstone.

In Canada, “use” of a trademark has been a paramount consideration for the establishment of a trademark owner’s registered rights. However, with upcoming changes to the Act, the use requirements will be eliminated. An individual or a business may then obtain a trademark registration without ever using the trademark in Canada. The removal of the use requirement may make the registration and maintenance of a trademark more straightforward, but it may also lead to a rise in the incidence of trademark trolls, who will seek to register marks as commodities to be traded.

[1] Trade-marks Act, RSC 1985, c T-13, s 4(1).

[2] Trade-marks Act, RSC 1985, c T-13, s 4(2).

[3] See, e.g., Shapiro, Cohen, Andrews, and Finlayson v. Fireman’s Fund Insurance Co. (1994), 54 CPR (3d) 566 (TMOB); Sim & Mcburney v. Gesco Industries, Inc. (2000), 9 CPR (4th) 480 (FCA) [Gesco].

[4] (1994), 58 CPR (3d) 417 (FC).

[5] Coscelebre Inc. v. Canada (Registrar of Trade Marks) (1991), 35 CPR (3d) 74 (FC).

[6] (1998), 87 CPR (3d) 333 (TMOB).

[7] See e.g., 88766 Canada Inc. v. Asphalte Desjardins Inc., 2014 TMOB 20 at para 13; Renaud Cointreau & Cie v. Cordeau Bleu International Ltd. (2000), 11 CPR (4th) 95 (FC); Western Financial Group Inc. v. Royal Bank of Canada, 2013 TMOB 148; and Baker & McKenzie v. Groupe iWeb Inc., 2013 TMOB 28.

[8] See e.g., Cast Iron Soil Pipe Institute v. Concourse International Trading Inc. (1998) 19 CPR (3d) 303 (TMOB); Renaud Cointreau & Cie v. Cordon Bleu International Ltd. (1993) 52 CPR (3d) 294 (TMOB) [Renaud].

[9] See e.g., supra note 6: Renaud.

[10] See e.g., supra note 3: Gesco; Riches, McKenzie & Herbert c Gulliver’s, The Travel Accessory Store Ltd. 2006 (TMOB)

[11] Lin Trading Co. v. CBM Kabushiki Kaisha (1985), 5CPR (3d) 27 at 32 (TMOB).