In a recent Federal Court of Canada (the "FC") decision, 2015 FC 1259, the FC dismissed an appeal by Supershuttle International, Inc. ("Supershuttle") to overturn a decision of the Registrar of Trade-marks (the "Registrar"), expunging its Canadian trade-mark registration for SUPERSHUTTLE (the "Mark") for non-use.
Supershuttle provides ground transportation services to and from airports in cities that are all located outside of Canada. Canadians wanting to utilize Supershuttle's services can and do book tickets and make reservations through their website, which is accessible to persons who are physically in Canada. In December 2003, Supershuttle registered the Mark in Canada for use with "airport passenger ground transportation services" (the "Registered Services").
In February 2012, a summary cancellation proceeding was brought against the Mark pursuant to section 45 of the Trade-marks Act, requiring Supershuttle to provide evidence demonstrating use of the Mark in Canada in the three preceding years. Despite the evidence submitted by Supershuttle, the Registrar concluded that Supershuttle had not used the Mark in association with the Registered Services in Canada. The Registrar's decision was based largely on the fact that Supershuttle did not actually operate any shuttles or vans in Canada, and on the basis that simply advertising the Registered Services in Canada through its website, without those services actually being available for performance in Canada, was not sufficient to demonstrate use.
Supershuttle subsequently appealed to the FC and raised the following issues:
- Did the Registrar err in its interpretation of the statutory meaning of "use"; and
- Is a trade-mark "used" in Canada in connection with a service if an essential step in the performance of that service happens in Canada?
The FC ultimately denied Supershuttle's appeal on the basis that, while the observation of a trade-mark by individuals based in Canada may demonstrate use of that mark, the services with which that mark is purportedly being used must still be performed in Canada.
In this case, despite the Mark being advertised and known in Canada and used by Canadians for the purposes of making bookings and reservations, "reservation services" were not included as part of the Registered Services; as such, the Mark was not being "used" in connection with the Registered Services. Consequently, the FC concluded that the Mark could not be maintained.
The decision in this case seems to run contrary to at least one previous decision of the FC, where the "use" of the trade-mark at issue in association with travel services was deemed to also be "use" in association with incidental or ancillary services, such as ticketing and reservation services. While the trial judge in Supershuttle recognized that "use" of a trade-mark in relation with a service must be decided on a case-by-case basis, the apparent inconsistency in the case law is a good reminder that trade-mark applicants should exercise caution when deciding upon the services to be included as part of a trade-mark application. In particular, applicants should be cognizant of the risk associated with including services that are, in fact, not offered in Canada – even if the trade-mark can be observed by individuals in Canada.
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