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harder to recognize a "local business" and one operating in a far-flung country. "There's a tension in the cases and also among the decision-makers who haven't really cottoned onto the idea that a web site has the capability of identifying the user's location and catering it to who's accessing the web site," says Rowden. For example, many online users are no longer just sitting at their desktops but looking up goods and services via their laptop, tablet, or mobile phone. Many companies operating online are using location-based software to serve up specific pages with Canadian pricing and availability. "In fact, they could be in Mongolia and you simply don't know," says Rowden. The situations causing most of the controversy are typically being driven by existing trademark rights. In many of those cases, a foreign organization has obtained a Canadian trademark registration, but if it hasn't been used within a three-year period, it can be subject to a s. 45 summary cancellation proceeding. "It's a pretty easy process for another party to come in," says Melliship. That means the onus is on trademark owners to be in a position to prove use even as the online world — and possibly their business model — evolves. "In my view, depending on trends we see over time, the courts and the opposition boards who handle use cases don't want to take away rights," says Rowden. "They're trying to give rights or help owners keep rights that they have." Similarly, IP lawyers are trying to figure out the best way to protect their clients' interests. "It might be easier if there were more direction in the legislation, but I think it would be difficult to do," says McKeown, adding that if Canada were to sign onto the international trademark registration system known as the Madrid Protocol, "there would be more consistency. Canadian law would be more consistent with international law and other trademark regimes around the world, but Canada hasn't really been on that particular agenda." Companies may also need to make protecting their IP more of a priority, particularly the growing number of technology startups that launch their businesses with international ambitions at the outset. "Registering a domain name is great, but the ability to get a unique domain name and draw a big fence around it is very difficult," says Rowden. "You need to marshal all the intellectual property rights you can." Finally, the legal community may just have to wait until enough of the oddities have crept up that case law around online use of trademarks covers most of the possible scenarios. In the meantime, Melliship says lawyers need to improve the clarity with which they explain how trademarks are used in cyberspace. "As time goes on and technology changes, judges will become more comfortable with the online world when they're making their submissions," he says. "Judges are consumers too. They probably themselves book hotels. I think it will be just a case where, over time, they'll use prior precedents to push the envelope." IN THE BUSINESS OF BRILLIANCE Discover why many of the world's most original thinkers rely on Bereskin & Parr LLP for IP guidance. As one of Canada's leading intellectual property law firms, we combine depth of expertise with a dedication to tailored service that builds lasting trust. www.bereskinparr.com 1.888.364.7311 Toronto | Mississauga | Waterloo | Montréal www.CANADIAN ntitled-2 1 L a w ye r m a g . c o m October 2013 45 13-09-11 4:55 PM

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