Trade-mark decision raises concerns for Canadian IP lawyers

Canadian IP lawyers are talking about a recent Federal Court decision – Homeaway.com Inc v Hrdlicka, 2012 FC 1467 – that found a trade-mark displayed on a US-website accessed in Canada constituted “use.”

According to Brian Isaac of Smart & Biggar/Fetherstonhaugh, in a case update:

Justice Hughes’ decision is consistent with prior jurisprudence and the view of trade-mark practitioners in Canada that display of a trade-mark 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.

Alison Hayman of McMillan also commented:

… it will be interesting to see if future litigants are able to rely on the Court’s statement for a broader proposition, particularly in disputes involving Internet websites. If the display of a trade-mark on a computer screen website in Canada constitutes “use” of a trade-mark in Canada with services, it will be significantly easier for web-based businesses located outside of Canada to register their trade-marks in Canada and to bring claims and trade-mark opposition proceedings against persons who use or apply to register confusingly similar trade-marks in Canada. Similarly, companies which do not believe they are offering a service in Canada could be the subject of infringement claims in Canada simply because their website is viewed in Canada.

The full text of the decision is available here.