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Trademarks - 'Use'. Milano Pizza Ltd. v. 6034799 Canada Inc.
In Milano Pizza Ltd. v. 6034799 Canada Inc. (Fed CA, 2023) the Federal Court of Appeal considered the issue of 'control' as it bears on trademark use adequate to establish trademark validity:[3] The appellants argue that the Federal Court applied an incorrect legal test when assessing whether the appellants had control over their licensees within the meaning of subsection 50(1) of the TMA. Both the appellants and respondents agree that determining the correct legal test is a question of law, reviewable on a correctness standard: Housen v. Nikolaisen, 2002 SCC 33, [2002] 2 S.C.R. 235 [Housen]. The appellants argue that the Judge improperly required trademark owners to have a specific manner or degree of control over their licensees, whereas it is for the trademark owner to determine the appropriate manner and extent of control over the character or quality of the goods or services. The appellants argue that they had control over their licensees through a requirement that licensees purchase their ingredients, pizza boxes and drinks from authorized distributors (the purchasing requirement) and through a requirement that no other licence would be awarded or granted for a given geographical area without the licensee’s consent (the territory requirement): see Decision at para. 17.
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[6] Control over the finished product or service is therefore required to ensure the same quality across all licensees: see Decision at paras. 91-93, 99-101, Tommy Hilfiger Licensing Inc. v. Produits de Qualité I.M.D. Inc., 2005 FC 10 at para. 81, Empresa Cubana Del Tabaco Trading v. Shapiro Cohen, 2011 FC 102 at paras. 86-90, aff’d Cohen v. Empressa Cubana Del Tabaco, 2011 FCA 340. In the case at bar, the Judge determined that Milano’s control was insufficient. Contrary to the appellants’ submission, the Judge was not dictating how or in what manner the trademark owner needed to exercise control, but simply found, on the facts of this case, that control did not exist at all. This is clearly not an error of law. Indeed, it would make a mockery of subsection 50(1) if any type or degree of control was acceptable. . Miller Thomson LLP v. Hilton Worldwide Holding LLP
In Miller Thomson LLP v. Hilton Worldwide Holding LLP (Fed CA, 2020) the Federal Court of Appeal discussed the importance of 'use' in trademark law:[6] Unlike other forms of intellectual property, use of a trademark is essential, and is fundamental to trademark rights: HomeAway.com, Inc. v. Hrdlicka, 2012 FC 1467, [2012] F.C.J. No. 1665 at paras. 11–12. As the Supreme Court of Canada noted in Mattel, Inc. v. 3894207 Canada Inc., 2006 SCC 22, [2006] 1 S.C.R. 772 at para. 5, "“in trade-marks the watchword is ‘use it or lose it’”". Indeed, the statutory definition of "“trademark”" in section 2 of the Act is "“a sign or combination of signs that is used or proposed to be used by a person for the purpose of distinguishing or so as to distinguish their goods or services from those of others […]”" [emphasis added].
[7] In accordance with subsection 4(2) of the Act, a trademark will be deemed to be used in association with services "“if it is used or displayed in the performance or advertising of those services”". That said, the mere advertising of services in Canada will not constitute use in Canada in association with a service. Some aspect of the services must be performed or delivered in Canada: Porter v. Don the Beachcomber, [1966] Ex.C.R 982, 48 C.P.R. 280 at para. 17; Marineland Inc. v. Marine Wonderland and Animal Park Ltd., [1974] 2 FC 558.
[8] While foreign trademark owners can register their marks in Canada and thereby enjoy the benefits of exclusivity, maintenance of a registration depends on the use of the mark in Canada.
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