An administrative decision of the Trade-marks Opposition Board confirms that a trade-mark owner will not be able to prove use of a trade-mark in association with services unless the owner performs or is prepared to perform those services in Canada.<\/p>\n
In the case of Bellagio Limousines v. Mirage Resorts, Incorporated<\/em> (2012 TMOB 220), the Trade-marks Opposition Board looked at two registrations for BELLAGIO owned by Mirage Resorts, Incorporated (\u201cMRI\u201d).\u00a0 MRI is the owner of the famous Bellagio hotel in Las Vegas, Nevada, a hotel which I recall from a friend\u2019s bachelor party in Las Vegas some years back, although my memory of the entire night is spotty at best.\u00a0 The trade-mark registrations in question covered four main categories: (1) promotional and guest relations services, i.e. hotel and casino and booking reservation services; (2) casinos and live entertainment services (3) hotels, beauty salons, and health spas; and (4) ladies\u2019 clothing and sportswear and clothing accessories.<\/p>\n A third party challenged the registrations under section 45 of the Trade-marks Act<\/em>, which requires the owner of the trade-mark to show evidence of use in Canada in the preceding three years (or special circumstances that would justify any non-use).<\/p>\n Hearing Officer Andrew Bene found that the BELLAGIO mark was well known in Canada, but that \u201cit is clear that the hotel and entertainment services of the Bellagio Property are performed in Las Vegas, not in Canada\u201d.\u00a0 While I do not think it is as catchy as the well-known Vegas slogan \u201cWhat happens in Vegas, stays in Vegas\u201d, might I suggest \u201cWhat happens with respect to the hotel and entertainment services in Vegas, stays in Vegas (and does not constitute use in Canada)\u201d is an accurate summary of the Hearing Officer\u2019s findings.<\/p>\n The Hearing Officer held that there was no evidence to suggest that MRI performed or was able to perform services (2) and (3) \u2013 as per above \u2013 in Canada during the relevant period, since there was no physical location in Canada to perform those services.\u00a0 Those services were therefore ordered struck from the registration.\u00a0 The Hearing Officer was more forgiving with respect to promotional and guest relations services which were maintained in the registration.<\/p>\n With respect to the clothing items (#4, above), MRI submitted evidence that the Bellagio hotel in Las Vegas sold such items to visitors (including Canadian visitors).\u00a0 However, the Hearing Officer held that a sale to a Canadian in the United States does not amount to use of a trade-mark in the normal course of trade in Canada, even if those goods are subsequently brought into Canada for personal consumption.\u00a0 The registration covering the clothing items was therefore ordered to be expunged.<\/p>\n Canadian business should understand that the term \u201cuse\u201d is a defined term in the Trade-marks Act<\/em>, and that even when a trade-mark is registered it is subject to attack from a third party on the basis of alleged non-use in Canada.\u00a0 If the services require a physical location (i.e. hotels, casinos, etc.), this decision suggests that it is not sufficient to simply promote these services in Canada because \u201c\u2026it is not use of the Mark in Canada with respect to the Services unless (the Applicant) performs or is prepared to perform the Services in Canada\u201d.\u00a0 Should you have any questions with respect to this article, or should you require any advice regarding \u201cuse\u201d of a trade-mark in Canada, please feel free to contact one of our trade-mark professionals.<\/p>\n
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