Cassan Maclean
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COURT FINDS CANADIAN PRESENCE UNNECESSARY FOR USE OF MARK

The recent case of Dollar General Corporation v. 2900319 Canada Inc., 2018 FC 778, saw the Federal Court of Canada review the criteria necessary to establish use of a mark in Canada in association with retail store services by an online retailer with no physical presence in Canada.

The case concerned an appeal of the decision of the Registrar to cancel the registration of the mark DOLLAR GENERAL for non-use on the basis that the evidence showed that customers in Canada could only obtain their purchases by traveling to the United States or through the additional services of a trans-shipper.

In overturning the decision of the Registrar, the Court rejected the notion that goods must be shipped by the trademark owner to customers in Canada to constitute use of the mark in Canada, relying on two general propositions, namely that:

  1. “services” should be liberally construed and,

  2. if some members of the public, consumers or purchasers, receive a benefit from the activity, the activity is a service.

In reviewing the evidence, which included not insignificant sales of goods by the registered owner of the mark to customers with billing addresses in Canada and evidence that the registered owner’s retail website provided customers the ability to enter Canadian addresses when inputting billing information, the Court held that the interactivity and benefit to Canadians using the DOLLAR GENERAL website were sufficient to establish a prima facie case of “use” within the meaning of Section 4 of the Trade-marks Act.

The decision is good news for online retailers that do not operate physical brick & mortar stores in Canada but which effectively provide some form of retail shopping experience to the benefit of Canadian consumers.

For a full copy of the decision, please click here.