I am a London girl at heart (born and raised) so when I came across a recent Canadian decision about Harvey Nichols, it caught my attention. (Visions of a glass of bubbly at Harvey Nichols’ rooftop café danced in my head). I digress.
I was not shocked by the decision: Harvey Nichols does not operate in Canada (tell me something I don’t know!) and, therefore, its Canadian trade-mark registration is not valid. But the decision is useful in illustrating the importance of use in acquiring (and maintaining) trade-mark rights in Canada. So, we shall file this case under “lessons learned”.
Harvey Nichols & Co. (the famed high-end London department store) was granted a trade-mark registration for HARVEY NICHOLS in association with a wide range of clothing, toiletries, jewellery and luggage and also retail department store services.
The Canadian Trade-marks Office, on the behest of a third party, issued a Section 45 expungment notice, requiring Harvey Nichols & Co. to demonstrate that it is using its trade-mark in Canada in order for the trade-mark registration to remain valid.
What is an Expungement Proceeding?
Canada is a “use it or lose it” jurisdiction. In order to have trade-mark rights in Canada, you have to use the trade-mark in Canada. (It does not have to be immediate use. If you are seeking a trade-mark registration, you can base the application on proposed use – but there has to be use of the trade-mark in Canada at some point before it registers). Use is also critical in maintaining rights to the trade-mark in Canada. If you stop using the trade-mark, you stop having rights to the trade-mark: “use it or lose it”.
Three years after your trade-mark registers, it is possible for “any interested party” to lodge a request with the Canadian Trade-marks Office to seek evidential confirmation that you are continuing to use the trade-mark in Canada. This is an expungement proceeding. It is then up to the trade-mark owner to provide appropriate evidence to demonstrate that the trade-mark has been used in Canada. If the evidence does not satisfy the Canadian Trade-marks Office, then it is possible that the trade-mark registration will be “expunged” (essentially, deleted).
How did Harvey Nichols & Co. React?
Dutifully, Harvey Nichols & Co. filed affidavit evidence attesting to the continued use of the trade-mark HARVEY NICHOLS in Canada. The evidence was largely based upon its online store, which is facilitated through its website. The affidavit included evidence that gift vouchers and Christmas hampers are bought online from Canadian consumers. Moreover, there was evidence of online traffic from Canadian IP addresses and purchases by credit cards owned by Canadians.
Where did Harvey Nichols & Co. Go Wrong?
First, evidence was produced with respect to Christmas hampers and gift vouchers – yet neither of these were itemized in the trade-mark registration. The screenshots of Harvey Nichols & Co.’s website did not display pictures of the Christmas hampers, nor was the evidence of delivery of these Christmas hampers to Canada. Thus, there was no evidence of use of the trade-mark with any of the wares listed in the Canadian trade-mark registration.
In today’s digital age, the Court recognizes stores do not have to have a “brick and mortar” presence to be using a trade-mark in Canada. Online retail stores can satisfy the use requirement. However, in reviewing Harvey Nichols & Co.’s website, there was no information that was pertinent to Canadian shoppers. There was no Canadian pricing, no Canadian contact information, no shipping policy directed to Canadian deliveries etc. Moreover, there was no evidence submitted that proved that Canadians bought merchandise from Canada for delivery to Canada.
First, carefully draft the trade-mark application to fully reflect all of the wares and services that the trade-mark will be used with. Then, regularly conduct audits of your trade-mark registrations. Has your product line/business plan changed? Perhaps additional trade-mark registrations should be obtained.
Second, if you are going to operate an online retail component to your business, include an explicit Canadian presence.
Third, keep accurate and comprehensive evidence of use of your trade-mark in Canada.