Both Here and There: Trademark Use on Websites Available in Canada
According to a December, 2012 decision of the Federal Court, HomeAway.com, Inc v. Hrdlicka, “a trade-mark which appears on a computer screen website in Canada, regardless where the information may have originated from or be stored, constitutes for Trade-marks Act purposes, use and advertising in Canada.” This broad statement suggests that the appearance of a trade-mark on a computer screen is sufficient whether or not services are available or performed in Canada. However, the decision is best understood in context.
HomeAway.com, which acquired and now operates the well known Vacation Rentals by Owner or VRBO website at VRBO.com, sought to expunge the trade-mark VRBO which Hrdlicka had applied to register in 2009 for use in association with services described as “vacation real estate listing services”. HomeAway.com sought to establish prior use of VRBO. HomeAway.com had a computer presence in Canada, but no physical presence. In analyzing section 4(2) of the Act which states that “a trade-mark is deemed to be used in association with services if it is used or displayed in the performance or advertising of those services”, the Court noted that there was little jurisprudence regarding use by means of a computer screen display. The Court then adopted the concept that an activity can be “both here and there” from a series of earlier cases involving tax, criminal activity and copyright and sought to interpret section 4(2) “in a manner consistent with modern day realities”, namely “that information which is stored in one country can be said to exist in another; in this case Canada.”
The Court then went on to describe the HomeAway.com business as being “advertising, on its website, homes, apartments and the like owned by third persons who wish to rent them to others”, suggesting that HomeAway.com offers the same services as the Classifieds section of a newspaper. The Court used the accessing of properties in “Montreal” and “Niagara-on-the-Lake” as examples of how the website might be used. It is not clear whether there was actual evidence before the Court of Canadians posting and accessing properties on the website, but presumably this was available.
In the circumstances, Hrdlicka’s registration was expunged in light of HomeAway.com’s prior use, the absence of any use by Hrdlicka until 2012 and evidence that Hrdlicka was trying to sell his trade-mark to HomeAway.com.
The question now is whether the mere appearance of a trade-mark in advertising available on a website in Canada is enough to constitute use in association with services. However, when the statement from the Federal Court is read in context, it would appear that the services must be available to or accessed by Canadians. Some further case law may be necessary to clarify this point.