Homeaway.com, Inc. (applicant) v. Martin Hrdlicka (respondent) (T ; 2012 FC 1467) Indexed As: Homeaway.com Inc. v. Hrdlicka

Transcription

1 Homeaway.com, Inc. (applicant) v. Martin Hrdlicka (respondent) (T ; 2012 FC 1467) Indexed As: Homeaway.com Inc. v. Hrdlicka Federal Court Hughes, J. December 12, Summary: HomeAway.com Inc., an American company, applied to expunge the registered trademark at issue (VRBO) on several grounds, including prior use. It owned all trademark rights of VRBO.com Inc. The respondent resided in Canada and was the person registered as owner of the trademark. The use of VRBO was the offering of vacation rental services and advertising such services over the web. There had been very little jurisprudence to date as to "use" by means of computer screen display. The Federal Court found that a trademark which appeared on a computer screen website in Canada, regardless where the information originated from or was stored, constituted for Trade- Marks Act purposes, use and advertising in Canada. In the end result, the court granted the application and expunged the registration of VRBO, with cost consequences. Statutes - Topic 501 Interpretation - General principles - Purpose of legislation - Duty to promote object of statute - [See first Trademarks, Names and Designs - Topic 889.2]. Statutes - Topic 2614 Interpretation - Interpretation of words and phrases - Modern rule (incl. interpretation by context) - Legislative or statutory context - [See first Trademarks, Names and Designs - Topic 889.2]. Trademarks, Names and Designs - Topic 4 Trademarks - General - Trade-marks Act - Interpretation - [See first Trademarks, Names and Designs - Topic 889.2]. Trademarks, Names and Designs - Topic Trademarks - Registration - Expungement of mark - Grounds - Loss of distinctiveness (incl. non-distinctiveness) - [See second Trademarks, Names and Designs - Topic 889.2]. Trademarks, Names and Designs - Topic Trademarks - Registration - Expungement of mark - Grounds - Prior use - The applicant, an American company, applied to expunge the registered trademark at issue (VRBO), on the basis of, inter alia, prior use - The respondent resided in Canada and was the person registered as owner of the trademark - The use of the trademark was the offering of vacation rental services and advertising such services over the web - A trademark was

2 deemed to be used in association with services "if it is used or displayed in the performance or advertising of those services" (Trade-Marks Act, s. 4(2)) - There had been very little jurisprudence as to "use" by means of computer screen display - The Federal Court stated that "the modern approach in interpretation of statutes generally is to construe legislation reasonably, having regard to its object and purpose... [L]egislation must be interpreted in a manner consistent with modern day realities and that computer information which is stored in one country can be said to exist in another; in this case, Canada" - The court found, therefore, that a trademark which appeared on a computer screen website in Canada, regardless where the information originated from or was stored, constituted for Trade-Marks Act purposes, use and advertising in Canada - See paragraphs 10 to 22. Trademarks, Names and Designs - Topic Trademarks - Registration - Expungement of mark - Grounds - Prior use - The applicant (Home Away.com) was an American company which owned all trademark rights of VRBO.com Inc. - The respondent, an individual residing in Canada, filed an application on September 2, 2009, to register the trademark VRBO based on proposed use - The Federal Court ordered that the registration be expunged - The trademarks of both parties were not just confusing, they were identical and the services were identical - HomeAway had used the trademark VRBO in Canada by use on its website in association with vacation real estate listing services since before September 2, 2009, and such use was continuous - Therefore, the respondent was not the person entitled to register the trademark (Trade-Marks Act, s. 16(3)(a)) - VRBO was and continued to be distinctive in Canada of the vacation real estate listing services of HomeAway - Therefore the registration was invalid (s. 18(1) (b)) - The respondent never used VRBO as a trademark until November 2012, and at the time that he applied to register the trademark, he was aware of the use of VRBO by HomeAway - The respondent secured the registration for improper purposes and did not act bona fide or in good faith - His intent was to extort money or other consideration from HomeAway - In the result, the court provided cost consequences - See paragraphs 23 to 39. Trademarks, Names and Designs - Topic Trademarks - Registration - Expungement of mark - Grounds - Confusion - [See second Trademarks, Names and Designs - Topic 889.2]. Trademarks, Names and Designs - Topic Trademarks - Registration - Expungement of mark - Grounds - Ownership - [See second Trademarks, Names and Designs - Topic 889.2]. Trademarks, Names and Designs - Topic 4424 Trademarks - Practice - Costs - [See second Trademarks, Names and Designs - Topic 889.2]. Cases Noticed: FileNet Corp. v. Registrar of Trademarks et al., (2001) 209 F.T.R. 195; 2001 FCT 865 (T.D.), affd. (2002), 297 N.R. 178; 2002 FCA 418, refd to. [para. 16].

3 ebay Canada Ltd. et al. v. Minister of National Revenue (2007), 318 F.T.R. 284; 2007 FC 930, affd. (2008), 382 N.R. 261; 2008 FCA 348, refd to. [paras. 17, 19]. Hayes v. Sim & McBurney (2010), 373 F.T.R. 243; 2010 FC 924, refd to. [para. 21]. Statutes Noticed: Trade-marks Act, R.S.C. 1985, c. T-13, sect. 4(2) [para. 13]. Authors and Works Noticed: Fox, Harold George, The Canadian Law of Trademarks and Unfair Competition (2001), para. 5.2(a) [para. 11]. Vaver, David, Intellectual Property Law: Copyright, Patents, Trade-marks (2nd Ed. 2011), pp [para. 12]. Counsel: Lynn Cassan, for the applicant; Martin Hrdlicka, on his own behalf. Solicitors of Record: Cassan Maclean, Ottawa, Ontario, for the applicant. This application was heard at Toronto, Ontario, on December 11, 2012, before Hughes, J., of the Federal Court, who delivered the following reasons for judgment and judgment, dated December 12, Editor: E. Joanne Oley Application allowed. Statutes - Topic 501 Interpretation - General principles - Purpose of legislation - Duty to promote object of statute - The applicant, an American company, applied to expunge the registered trademark at issue (VRBO), on the basis of, inter alia, prior use - The respondent resided in Canada and was the person registered as owner of the trademark - The use of the trademark was the offering of vacation rental services and advertising such services over the web - A trademark was deemed to be used in association with services "if it is used or displayed in the performance or advertising of those services" (Trade-Marks Act, s. 4(2)) - There had been very little jurisprudence as to "use" by means of computer screen display - The Federal Court stated that "the modern approach in interpretation of statutes generally is to construe legislation reasonably, having regard to its object and purpose... [L]egislation must be interpreted in a manner consistent with modern day realities and that computer information which is stored in one country can be said to exist in another; in this case, Canada" - The court found, therefore, that a trademark which appeared on a computer screen website in Canada, regardless where the information originated from or was stored, constituted for Trade-Marks Act purposes, use and advertising in Canada -

4 See paragraphs 10 to 22. Statutes - Topic 2614 Interpretation - Interpretation of words and phrases - Modern rule (incl. interpretation by context) - Legislative or statutory context - The applicant, an American company, applied to expunge the registered trademark at issue (VRBO), on the basis of, inter alia, prior use - The respondent resided in Canada and was the person registered as owner of the trademark - The use of the trademark was the offering of vacation rental services and advertising such services over the web - A trademark was deemed to be used in association with services "if it is used or displayed in the performance or advertising of those services" (Trade-Marks Act, s. 4(2)) - There had been very little jurisprudence as to "use" by means of computer screen display - The Federal Court stated that "the modern approach in interpretation of statutes generally is to construe legislation reasonably, having regard to its object and purpose... [L]egislation must be interpreted in a manner consistent with modern day realities and that computer information which is stored in one country can be said to exist in another; in this case, Canada" - The court found, therefore, that a trademark which appeared on a computer screen website in Canada, regardless where the information originated from or was stored, constituted for Trade-Marks Act purposes, use and advertising in Canada - See paragraphs 10 to 22. Trademarks, Names and Designs - Topic 4 Trademarks - General - Trade-marks Act - Interpretation - The applicant, an American company, applied to expunge the registered trademark at issue (VRBO), on the basis of, inter alia, prior use - The respondent resided in Canada and was the person registered as owner of the trademark - The use of the trademark was the offering of vacation rental services and advertising such services over the web - A trademark was deemed to be used in association with services "if it is used or displayed in the performance or advertising of those services" (Trade-Marks Act, s. 4(2)) - There had been very little jurisprudence as to "use" by means of computer screen display - The Federal Court stated that "the modern approach in interpretation of statutes generally is to construe legislation reasonably, having regard to its object and purpose... [L]egislation must be interpreted in a manner consistent with modern day realities and that computer information which is stored in one country can be said to exist in another; in this case, Canada" - The court found, therefore, that a trademark which appeared on a computer screen website in Canada, regardless where the information originated from or was stored, constituted for Trade-Marks Act purposes, use and advertising in Canada - See paragraphs 10 to 22. Trademarks, Names and Designs - Topic Trademarks - Registration - Expungement of mark - Grounds - Loss of distinctiveness (incl. non-distinctiveness) - The applicant (Home Away.com) was an American company which owned all trademark rights of VRBO.com Inc. - The respondent, an individual residing in Canada, filed an application on September 2, 2009, to register the trademark VRBO based on proposed use - The Federal Court ordered that the registration be expunged - The trademarks of both parties were not just confusing, they were identical and the services were identical - HomeAway had used the trademark VRBO in Canada by use on its website in association with vacation real estate listing services since before

5 September 2, 2009, and such use was continuous - Therefore, the respondent was not the person entitled to register the trademark (Trade-Marks Act, s. 16(3)(a)) - VRBO was and continued to be distinctive in Canada of the vacation real estate listing services of HomeAway - Therefore the registration was invalid (s. 18(1) (b)) - The respondent never used VRBO as a trademark until November 2012, and at the time that he applied to register the trademark, he was aware of the use of VRBO by HomeAway - The respondent secured the registration for improper purposes and did not act bona fide or in good faith - His intent was to extort money or other consideration from HomeAway - In the result, the court provided cost consequences - See paragraphs 23 to 39. Trademarks, Names and Designs - Topic Trademarks - Registration - Expungement of mark - Grounds - Confusion - The applicant (Home Away.com) was an American company which owned all trademark rights of VRBO.com Inc. - The respondent, an individual residing in Canada, filed an application on September 2, 2009, to register the trademark VRBO based on proposed use - The Federal Court ordered that the registration be expunged - The trademarks of both parties were not just confusing, they were identical and the services were identical - HomeAway had used the trademark VRBO in Canada by use on its website in association with vacation real estate listing services since before September 2, 2009, and such use was continuous - Therefore, the respondent was not the person entitled to register the trademark (Trade-Marks Act, s. 16(3)(a)) - VRBO was and continued to be distinctive in Canada of the vacation real estate listing services of HomeAway - Therefore the registration was invalid (s. 18(1) (b)) - The respondent never used VRBO as a trademark until November 2012, and at the time that he applied to register the trademark, he was aware of the use of VRBO by HomeAway - The respondent secured the registration for improper purposes and did not act bona fide or in good faith - His intent was to extort money or other consideration from HomeAway - In the result, the court provided cost consequences - See paragraphs 23 to 39. Trademarks, Names and Designs - Topic Trademarks - Registration - Expungement of mark - Grounds - Ownership - The applicant (Home Away.com) was an American company which owned all trademark rights of VRBO.com Inc. - The respondent, an individual residing in Canada, filed an application on September 2, 2009, to register the trademark VRBO based on proposed use - The Federal Court ordered that the registration be expunged - The trademarks of both parties were not just confusing, they were identical and the services were identical - HomeAway had used the trademark VRBO in Canada by use on its website in association with vacation real estate listing services since before September 2, 2009, and such use was continuous - Therefore, the respondent was not the person entitled to register the trademark (Trade-Marks Act, s. 16(3)(a)) - VRBO was and continued to be distinctive in Canada of the vacation real estate listing services of HomeAway - Therefore the registration was invalid (s. 18(1) (b)) - The respondent never used VRBO as a trademark until November 2012, and at the time that he applied to register the trademark, he was aware of the use of VRBO by HomeAway - The respondent secured the registration for improper purposes and did not act bona fide or in good faith - His intent was to extort money or other consideration from HomeAway - In the result, the court provided cost

6 consequences - See paragraphs 23 to 39. Trademarks, Names and Designs - Topic 4424 Trademarks - Practice - Costs - The applicant (Home Away.com) was an American company which owned all trademark rights of VRBO.com Inc. - The respondent, an individual residing in Canada, filed an application on September 2, 2009, to register the trademark VRBO based on proposed use - The Federal Court ordered that the registration be expunged - The trademarks of both parties were not just confusing, they were identical and the services were identical - HomeAway had used the trademark VRBO in Canada by use on its website in association with vacation real estate listing services since before September 2, 2009, and such use was continuous - Therefore, the respondent was not the person entitled to register the trademark (Trade-Marks Act, s. 16(3)(a)) - VRBO was and continued to be distinctive in Canada of the vacation real estate listing services of HomeAway - Therefore the registration was invalid (s. 18(1) (b)) - The respondent never used VRBO as a trademark until November 2012, and at the time that he applied to register the trademark, he was aware of the use of VRBO by HomeAway - The respondent secured the registration for improper purposes and did not act bona fide or in good faith - His intent was to extort money or other consideration from HomeAway - In the result, the court provided cost consequences - See paragraphs 23 to 39.