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TRADEMARKS - Expungement - Grounds - Non-use

Thursday, August 20, 2020 @ 6:11 AM  

Lexis Advance® Quicklaw®
Appeal by Live! Holdings from a judgment that upheld the decision of the Registrar of Trademarks to expunge the “LIVE” trademark from the Register of Trademarks. The appellant was an American holding company that owned the Canadian trademark registration for the mark. The LIVE mark was registered for use in Canada in association with approximately 35 different types of services including hotel, entertainment and advertising and marketing services for others. The appellant conceded it had not used the mark in Canada. The appellant’s affiliates owned entertainment venues in the United States that used the mark. Canadians could purchase event tickets and make hotel reservations online for those venues through websites that bore the LIVE mark. The appellant and its affiliates owned no Canadian venues.

HELD: Appeal dismissed. Assuming, without deciding, the use of the mark on websites, promotional materials, tickets and hotel reservations was sufficient to constitute use of the mark in Canada, the Federal Court did not err in concluding the appellant failed to establish that any use of the mark in Canada by its affiliates should enure to its benefit. It did not err in finding there was insufficient evidence to infer the existence of a licensing agreement between the appellant and its affiliates with respect to the use of the mark. There was no evidence the appellant exerted any form of control over the character or quality of the services offered by its affiliates in association with the mark. The Federal Court did not err in finding there were no special circumstances excusing the non-use of the mark.

Live! Holdings, LLC v. Oyen Wiggs Green & Mutala LLP, [2020] F.C.J. No. 769, Federal Court of Appeal, D.G. Near, J.B. Laskin and A.L. Mactavish JJ.A., July 14, 2020. Digest No. TLD-August172020007