In a decision issued on 16 December 2024 in Limbic Media Corporation v. Lutron Electronics Co., Inc. 2024 FC 2041, the Federal Court held that use of a trademark in advertisements was not sufficient to show use of a trademark for goods.
Limbic Media Corporation owned a registration for the trademark AURORA for use in relation to "electric lighting fixtures". At the request of Lutron Electronics Co., Inc., the Registrar of Trademarks issued a notice under section 45 of the Trademarks Act requiring that Limbic show use of the trademark in Canada within the preceding 3 years. In response to the notice, Limbic provided a statutory declaration depicting screenshots from its website. In a decision issued 26 February 2024, the Registrar of Trademarks ordered the registration expunged, noting that displaying the trademark on Limbic's website was not enough to demonstrate trademark use, as the Registrar could not infer that customers were able to purchase the goods from the website.
In an appeal before the Federal Court, Limbic argued that the combination of Internet evidence, invoices, and sales reports demonstrated sales in Canada and that the trademark was associated with the goods.
The Federal Court dismissed the appeal and noted that although the evidence showed that sales occurred in Canada, Limbic did not demonstrate that the trademark was associated with the goods at the time of transfer of the property or possession of its products. Displays of the trademark on the website may be used as evidence of use only if customers are able to purchase goods on the website. Otherwise, website displays may be considered mere advertisements for the goods. It was also noted that an invoice may establish use of the mark in association with the goods, but only if the evidence shows that the invoice accompanied the goods at the time of transfer.
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