Canadian Lawyer

LEGAL REPORT/Intellectual Property Uses and abuses of trademarks online IP lawyers are struggling with a series of recent decisions that cast uncertainty over long-held beliefs about what constitutes use of trademarks in Canada. T he tale of the British fishmonger may be one of the best examples. The way John McKeown tells the story — and you can almost hear him smiling over the phone — it sounds like some sort of fable for trademark lawyers everywhere. There once was a fishmonger based in Bristol, and like almost all small businesses operating in the 21st century, the fishmonger had a web site. The web site listed the fishmonger's name, address, some infor- mation about the fish, and even a way for those far from the U.K. to make inquiries. "People outside the country could make an order for the fish and receive it, but obviously it wouldn't be fresh," says McKeown, a lawyer with Goldman Sloan Nash & Haber LLP in Toronto. Did that mean, though, that the fishmonger was legally using its company trademark in those foreign countries? If that notion sounds a little, well, fishy, it's only one of the more apocryphal examples of recent cases that lawyers say are making it more difficult than ever to give clients good advice about how to properly register and maintain trademarks in an increasingly online — and increasingly globalized — world. Traditionally, courts have interpreted s. 4 of the Trade-marks Act — which says a trademark must be "used or displayed in the performance and advertising of services" — to mean an organization must be physically operating within Canada. Now no one seems sure of anything. Two years ago, after The Sports Authority closed all its Canadian locations, a Federal Court decided if people here were using The Sports Authority web site to look up products or find U.S. stores, those services were enough to validate the use of its trademark in Canada. More recently, however, the owners of Las Vegas' Bellagio Hotel and Casino lost the right to use its trademark for providing "hotel services," just "promotional and guest relations" services, like booking a room. If you can't walk into a Bellagio in Canada, the judge decided, you're not really using hotel services. In other words, the hard line about needing a brick-and-mortar presence that defined trademark use is becoming more blurred. An online presence can extend an organization's reach across borders, but it may be up to individual judges to determine what "use" really means. "We've had all kinds of discussions in our office," says Cynthia Rowden, a partner with Bereskin & Parr LLP in Toronto. "If [a client] wants to operate a restaurant here and goes and finds the same restaurant www.CANADIAN L a w ye r m a g . c o m October 2013 43 Matthew Billington By Shane Schick

• Cover