Canadian Trademark Use Requirements Update

Takeaway: Website or application interactivity that provides Canadians with some benefit will establish a trademark use in Canada even if there is no physical presence in Canada.

In Dollar General Corporation v. 2900319 Canada Inc., the court affirmed the decision that there need only be a sufficient level of interactivity with potential Canadian customers to show a proper use to establish trademark rights in Canada.

In this case, Dollar General operated stores in the United States but did not operate stores in Canada. Dollar General’s only presence in Canada was their website and application to which Canadians had access. Both the website and the app required Canadians to come to the United States to pick up their online purchases or required them to solicit a third-party carrier to deliver the products to Canada. Even though there was no shipping for online purchases, the fact that Canadians were able to access and purchase the product established a proper trademark use.

This decision shows that as long as a company has enough interactivity for Canadians to receive a benefit based on a web or application service, trademark use will be established.

This decision is significant because the Canadian Trademarks Opposition Board typically does not acknowledge ancillary services such as websites and applications to establish a proper trademark use in Canada. This decision impacts the way the Opposition Board has dealt previously with this type of use.