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LEGAL REPORT/Intellectual Property name in Thailand, what does that mean for me in searching for a clearing? How do you merge that global Internet and its borderless business model with a system that requires national rights?" According to McKeown, the contentions around trademark use in an online world have been percolating for some time. Last year, McKeown published a report and comparative chart about online trademark use as part of his work with the International Trademark Association's Internet committee/online trademark use subcommittee. It showed relative consistency among 25 countries about what constituted trademark use via online channels, whether it involved advertising or the ability to purchase or order shipments of goods or services. An updated version of his report is due sometime next year. "It's become a little more cohesive. There are fewer outlier countries," he says, adding the law in Canada will probably remain unchanged for the foreseeable future. "Basically it seems to work, with the caveat that you can get into situations that are a little odd that require some analysis. That's the way it's always been." It's true, the uncertainty predates the Internet era. Take the case in the late 1980s involving Saks Fifth Avenue, the iconic retail brand recently acquired by HBC. "They had some customers from Canada, people who travelled down to the U.S., shopped there, and then received catalogues through the mail," says Neil Melliship, a partner with Clark Wilson LLP in Vancouver. "You could phone up a 1-800 number in the U.S. and get warranty service on a watch from Saks in the States, or you could mail in the product. There was a question at the time about whether they were using the mark in association of retail services." Although web sites allow customers to do a lot more than merely contact a company via toll-free numbers, some judicial decisions are looking even more broadly at use. A recent case, HomeAway.com Inc. v. Hrdlicka, saw the Federal Court expunge a Impossible? Possible! registration for the trademark VRBO that HomeAway had been using in Canada for online vacation rental booking services. Justice Roger Hughes said although the web site was hosted in the U.S., the service is available to Canadians, which therefore constitutes use. "He basically said something along the lines of, 'the appearance of a trademark on a computer screen web site' is use of a mark in Canada," says Melliship. "Taken out of context, that can be a very broad statement that probably goes way too far in terms of what constitutes use." Alison Hayman, an IP lawyer with Cassels Brock & Blackwell LLP in Toronto, agrees. "That decision has created a large degree of uncertainty," she says. "When a client comes to us and says, 'Can I use this trademark in Canada?' we can't provide solid advice. . . . Trademark laws are national, but business has become global." This problem may only get worse, in part because what some view as improvements in technology are making it even What's in a name? We bring new meaning to ip. Seeing opportunity instead of obstacle. So often the difference between success and failure. The lawyers at Dimock Stratton have a proven track record of thinking outside the box and getting results – often setting precedent in the process – for their clients. If you're looking for winning ip representation, look no further than Dimock Stratton. Click on read about our rankings and recognition from our firm profile page at dimock.com to find out more. Dimock Stratton llp experience. results. Everything. Intellectual Property and Information Technology Law 150 York Street, Suite 400, Toronto, Canada M5H 3S5 Tel 416.941.9440 Fax 416.941.9443 E-mail info@dww.com Practical. Experience. www.dww.com 20 Queen W. 32nd fl, Toronto | 416.971.7202 | dimock.com 44 ntitled-6 1 October 2013 www.CANADIAN L a w ye r m a g . c o m 13-09-11 5:11 PM ntitled-2 1 11-12-06 11:26 AM

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