In Homeaway.com Inc v Hrdlicka, 2012 FC 1467, Justice Hughes of the Federal Court recently considered an application to expunge a registration of the trademark VRBO for the services “vacation real estate listing services”, including on the basis of prior use of the same trademark for the same services in Canada by Homeaway.com.
Justice Hughes noted the scarcity of jurisprudence in Canada on the question of “use” by means of display on computer screens. After citing Canadian jurisprudence including a previous decision that specifically acknowledged use on a website constituted “good use of a trademark” in respect of services including provision of information regarding rental and sale of vacation properties distributed over computer networks, he concluded:
I find, therefore, that a trademark which appears on a computer screen website in Canada, regardless where the information may have originated from or be stored, constitutes for Trademarks Act purposes, use and advertising in Canada.
Justice Hughes further noted that, with respect to the issue of “making known” of trademarks in Canada, the provisions in the Trademarks Act are “badly in need of updating.” He noted that the provisions discuss making known through printed publications and radio broadcasts, but not by means of internet websites, and found there was no “making known” despite finding “use” in the case.
In the end result, Justice Hughes expunged the registration based on the evidence of prior use by Homeaway.com of the trademark in issue on its website.
Justice Hughes’ decision is consistent with prior jurisprudence and the view of trademark practitioners in Canada that display of a trademark on a website accessible from Canada constitutes use and advertising in respect of services that are available in Canada. However, the language of his specific finding set out above may support an argument for a finding of “use” in Canada through internet websites whether or not the wares or services are actually sold or available in Canada.
Brian P. Isaac, Toronto
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