The pandemic and franchise challenges did not qualify as circumstances excusing non-use
The Federal Court upheld partial registration of the “PIEOLOGY” trademark for general restaurant services in Canada but not for specific services like sit-down dining, as advertising efforts alone did not demonstrate actual use.
The case originated from a decision by the Registrar of Trademarks, who issued a notice under s. 45 of the Trademarks Act due to a lack of use of the trademark in Canada over a three-year period. The section allows the expungement of a trademark if it falls into disuse. In response, the restaurant owner, The Little Brown Box Pizza, filed an affidavit asserting that it actively advertised its brand in Canada through websites, social media, and brochures to attract franchisees. However, the registrar found that these efforts did not demonstrate the actual provision of services in Canada.
The owner appealed, submitting additional evidence through an affidavit by its chief financial officer which addressed gaps identified by the registrar. This new evidence highlighted that several thousand Canadians accessed the PIEOLOGY website during the relevant period and demonstrated the company’s continued efforts to establish franchises in Canada, despite setbacks caused by the COVID-19 pandemic and difficulties securing suitable franchisees.
On appeal, the court accepted the owner’s argument that the new evidence was substantial enough to warrant a review of the registrar’s decision. The court found that advertising and promoting its restaurant services in Canada through interactive online platforms sufficed to demonstrate the use of the trademark for “restaurant services.” However, it did not accept that these activities extended to other registered services like sit-down dining and take-out services, which require an operational restaurant in Canada.
The Federal Court ruled that the COVID-19 pandemic and challenges in establishing a franchise network did not amount to “special circumstances” excusing non-use. It emphasized that while international expansion takes time, the owner did not show concrete steps or significant progress towards opening Canadian locations, nor a clear intention to resume use in the near future.
As a result, the court ordered that the PIEOLOGY trademark be maintained only for general restaurant services, while other specific services were removed from the registration.
