Here are three concepts that are not new: trade-marks, borders
and the internet. But the courts are still trying to work out how
to handle the three when they collide, as they did in the case of
HomeAway.com, Inc. v. Hrdlicka. In
this interesting dispute, two parties – an American company
and a Canadian man – clashed over ownership of the trade-mark
VRBO. Some of our readers may be familiar with this as the brand of
a popular vacation property rental site.
HomeAway.com, through its predecessor VRBO.com Inc. commenced
using the VRBO mark in the US in 1996. Mr. Hrdlicka, a Canadian,
filed an application for registration of VRBO as a trade-mark in
Canada on September 2, 2009. At the time the Canadian application
was filed, no actual use was claimed. The application was based on
"proposed use". A declaration as to use of the trade-mark
in Canada was filed on June 28, 2010 but there was no evidence of
any actual use of the mark by Mr. Hrdlicka. The VRBO mark matured
to a
