Trademark Use: No Need For A "Bricks And Mortar" Presence In Canada

"Use it or lose it" is a staple expression known to Canadian trademark lawyers. Once a business successfully registers a trademark in Canada, it must "use" its registered mark in Canada or it may lose the protections provided by the Trademarks Act (the "Act"). With the advent of e-commerce, many non-Canadian businesses can now advertise their services to Canadians online. Demonstrating use of the mark in association with such services online by the non-Canadian business may prove challenging.

The Federal Court of Appeal (the "FCA") recently confirmed in Miller Thomson LLP v Hilton Worldwide Holding LLP¹ that a business may be able to establish use of its mark in Canada in association with its services, despite not having a "bricks and mortar" presence in Canada. This case is important for two reasons: (1) it confirms that a trademark owner may be able to establish use of its mark in association with services without a physical presence in Canada; and (2) it