A Slice Of Pie: Federal Court Maintains Trademark Registration For Restaurant Services In Absence Of Restaurant Physically Located In Canada

On October 9, 2024, the Federal Court of Canada (the FC) released its decision in Little Brown Box Pizza, LLC v DJB, 2024 FC 1592, partially allowing The Little Brown Box Pizza, LLC’s (the Owner) appeal from the Registrar of Trademarks’ (the Registrar) decision to expunge its trademark for PIEOLOGY (the Trademark).

The Owner’s Trademark was the subject of non-use cancellation (section 45) proceedings, requiring it to show use, or special circumstances excusing non-use, of the Trademark during a three-year period from 2017 to 2020 in association with restaurant services and certain ancillary restaurant services.  The Registrar expunged the Trademark, because it was not satisfied that the Owner was offering or prepared to perform the services in Canada, and found that even if Canadian consumers may have been able to access websites or social media accounts about the Owner’s services being offered outside of Canada, that was not sufficient to meet the threshold to establish use in Canada.

On appeal, the Owner filed new evidence to address evidentiary gaps identified by the Registrar. The FC held that this evidence was material and therefore considered the matter de novo.

The FC confirmed that “services” should be liberally construed, and “restaurant services” do not necessarily require the operation of a restaurant in Canada.  While the FC found that evidence of the Owner’s distribution of operational brochures to potential franchisees failed to amount to use of the Trademark with ancillary restaurant services, the FC held that the evidence of several thousand Canadian users visiting the PIEOLOGY website and mobile app, and the interactive functions thereof, was sufficient to show that a benefit was received.  Therefore, the FC concluded that the Owner provided sufficient evidence to demonstrate its use of the Trademark in association with “restaurant services” in Canada during the relevant period.

The FC then considered the issue of whether the Owner demonstrated special circumstances excusing non-use with the remaining registered services, such as “restaurant services, namely, providing of food and beverages for consumption on and off the premises”.  The FC found that the Owner failed to provide a persuasive reason as to why the COVID-19 pandemic constituted a special circumstance in this case, noting that the pandemic accounted for only five months of the three-year relevant period and did not explain why the Trademark was not used with the remaining services since 2016.

Ultimately, the FC maintained the Trademark in association with “restaurant services” only, and ordered the remaining ancillary restaurant services to be deleted.

Summary By: Claire Bettio