Main Takeaway
If a social media post from a company bearing a trademark receives one or more likes, it can be inferred that customers or prospective customers accessed that company’s social media pages for the purposes of determining whether there was use of the trademark with associated services.
Background
At the request of Hamburger Mary’s LLC (the “Requesting Party”), the Registrar of Trademarks issue a notice under section 45 of the Trademarks Act to 1148718 B.C. LTD (the “Owner”) for the trademark HAMBURGER MARY’S (the “Mark”) which was registered in association with the following goods and services:
- Goods: Clothing, namely t-shirts.
- Services: Restaurant services.
Decision
In Hamburger Mary’s International, LLC and 1148718 B.C. LTD, 2013 TMOB 181 (CanLII), the Registrar of Trademarks found that the HAMBURGER MARY’S registration should be amended to delete the goods “clothing, namely t-shirts”, but maintained for “restaurant services”.
Reasoning
The Registrar accepted the Owner’s evidence that it formally changed its name from 1148718 B.C. LTD, the owner of record at the time the cancellation action was initiated, to HAMBURGER MARY’S DAVIE LTD, and thus also accepted that any use shown by the latter was use of the Mark by the Owner.
The Registrar was satisfied that the Owner used the Mark in association with restaurant services based on the Owner’s social media posts and sign outside their restaurant bearing a stylized version of the Mark. From one social media post that received several “likes”, the Registrar inferred that customers or prospective customers accessed the Owner’s social media pages.
However, the Registrar found the following evidence submitted by the Owner insufficient to show use of the Mark with “clothing, namely t-shirts” because it did not show transfer of property or possession of t-shirts in the Owner’s normal course of trade:
- a social media post with a photograph of the Owner’s employees wearing t-shirts bearing the words “MARY’S ON DAVIE”; and
- a text message mentioning the possibility of obtaining a quote for shirts bearing a picture of a sign containing a stylized version of the Mark.
