Federal Court Broadens Meaning of Use of a Trade-mark for Services

In TSA Stores, Inc v Heenan Blaikie LLP, 2011 FC 273, Justice Simpson of the Federal Court (Court) found that display of a mark on a web site accessible to Canadians in association with the sale of goods not available within Canada nevertheless constituted use of the mark in Canada within the meaning of the Trade-marks Act. TSA Stores, Inc (TSA) is a major retailer of sporting goods, having more than 400 retail stores operating in the US under the name “The Sports Authority”. During the relevant period, TSA had no stores in Canada and apparently did not sell goods online to Canadians. TSA owned six registered trade-marks in Canada that in 2010 were expunged by the Registrar for non-use. TSA applied to the Federal Court to overturn the decision of the Registrar in respect of four of these marks, which were limited to services described as retail store services and operation of retail stores for the sale of sporting equipment and clothing. TSA’s web site provided services that the Court decided were ancillary services to its retail store services, from which Canadian consumers or purchasers received benefits. For example, the site offered a service called “Help Me Choose Gear” that the Court found provided a service akin to visiting a physical store and getting advice from a salesperson. Also, the site provided a service to identify the closest TSA retail store in the US based on the entering of a Canadian postal code. Following a hearing at which the respondents did not appear, the Court held that the display of the marks in association with such services was sufficient to constitute use of the marks in Canada and, as a result, the registrations of the four subject marks were ordered to be restored. Summary by: Tom Feather