2011 TMOB 73 (May 24, 2011)
Overview
The Registrar maintained a registration in an expungement proceeding pertaining to the trademark GET IN THE ZONE for use in association with "retail auto parts store services" provided to Canadian customers by way of the registrant's website. This case is of particular importance as it summarizes the requirements for establishing "use" in Canada of a trademark in association with retail store services offered to Canadian customers through a website, and reiterates that the registrant need not have a physical store located in Canada to satisfy the use requirements under the Trademarks Act.
Abstract
The Registrar held that the trademark GET IN THE ZONE (the "Mark") in association with "retail auto parts store services" should be maintained in an expungement proceeding. In particular, the Registrar held that the registrant had demonstrated use of the Mark in accordance with section 4(2) of the Trademarks Act (the "Act") by providing evidence of sales to Canadians through its website, as well as delivery of those products to customers located in Canada during the relevant period. The Registrar was also persuaded by evidence that demonstrated that the Mark was displayed on the registrant's website and other advertising material during the relevant period.
Case summary
Facts. At the request of McCarthy Tetrault LLP (the "requesting party"), the Registrar forwarded a notice under section 45 of the Act on December 19, 2008, to AutoZone Parts, Inc. (the "registrant"), in respect of TMA590,907 for the trademark GET IN THE ZONE, registered for use in association with "retail auto parts store services."
Pursuant to section 45, it was incumbent on the registrant to demonstrate use in association with the services outlined in the registration at any time within the three-year period immediately preceding the notice, and if not, the date when the Mark was last used, and the reason for the absence of use since that date. In this case, the relevant period was December 19, 2005, to December 19, 2008.
To demonstrate use of the Mark during the relevant period, the registrant filed the affidavit of its Director of E-Commerce, Mr. Traywick.
In his affidavit, Mr. Traywick explained that the registrant operates a substantial number of retail stores for auto parts physically located in the United States. In addition, he indicated that the registrant operates a website, www.autozone.com, permitting customers in Canada to search for auto parts online, which can then be ordered via telephone. The ordered parts are subsequently delivered to Canadian customers in Canada.
The Traywick affidavit further provided the following evidence in support of the registrant's position that it had used the Mark during the relevant period in Canada:
- Unique Canadian visitor numbers to the registrant's website between 2006 and 2008, which totaled hundreds of thousands of visitors per year;
- Spreadsheets containing lists of sales transactions of auto parts to Canadian customers;
- Printouts from the registrant's website that clearly displayed the Mark as the pages appeared at various points during the relevant period; and
- Printouts of relevant advertisement circulars published on the registrant's website during the relevant period, which clearly displayed the Mark.
Only the registrant filed written submissions. The case proceeded without an oral hearing and solely on the basis of the Traywick affidavit.
Analysis. The single issue before the Registrar was whether the registrant's evidence demonstrated use of the Mark for the services listed in the registration during the relevant period.
In its reasoning, the Registrar initially set out the test for what qualifies as use of a trademark in association with services, as defined in section 4(2) of the Act:
A trademark is deemed to be used in association with services if it is used or displayed in the performance or advertising of those services.
In examining the jurisprudence on the issue of use of a service under section 4(2), the Registrar noted that mere advertising of a service in Canada is not sufficient to demonstrate use—a registrant also needs to show that it was prepared to perform the services in Canada during the relevant period. The registrant need not, however, have a "brick and mortar operation" in Canada to satisfy the requirements of section 4(2). Indeed, the Registrar held that so long as the services "are performed without the Canadian customer having to leave Canada" and the trademark is used in association with the services listed in the registration, this is sufficient to demonstrate use under section 4(2).
With reference to prior jurisprudence, the Registrar also noted that in respect of "retail store services," the display of a trademark on a website that advertises the registrant's services has been accepted to constitute "use" within the meaning of section 4(2). The Registrar further noted that an essential requirement is that the registrant must furnish evidence to demonstrate that the delivery of the product was made to Canadian customers in Canada during the relevant period.
Applying these principles to the case at hand, the Registrar concluded that the registrant's evidence demonstrated use of the Mark in accordance with section 4(2) of the Act. In particular, the Registrar stated that the sales records in the Traywick affidavit "clearly indicat[ed] sales to Canadians" and were "corroborative" of Mr. Traywick's statement in his affidavit that Canadian customers would use the registrant's website to locate auto parts online, order them via telephone, and then receive those parts via delivery in Canada. The Registrar was also convinced that the sales records indicated that the goods sold to Canadian customers were products available for sale on the registrant's website during the relevant period.
Finally, the Registrar referenced the "substantial number" of Canadian visitors to the registrant's website and the clear display of the Mark on the website and advertising circulars during the relevant period as further factors supporting use of the Mark by the registrant.
It was ultimately determined that use of the Mark had been demonstrated by the registrant for the services listed in the registration, and the registration was maintained.
Conclusion
This decision provides some clarity as to the requirements for establishing "use" in Canada of a trademark in association with retail store services performed by way of operation of a website. In particular, where there is evidence of a clear display of the trademark on a website in association with the retail store services listed in the registration during the relevant period, and where those services can be performed without the Canadian customer having to leave Canada, the requirements of section 4(2) are met. This case should serve as a helpful guide to registrants who may not have a 'brick and mortar' operation in Canada and who may be required to demonstrate use in respect of retail store services.
Cameron P. Weir, Ottawa
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