On February 18, 2016, the Canadian Federal Court released its decision in Specialty Software Inc v BEWATEC Kommunikationstechnik GmbH, 2016 FC 223, which deals with trade-marks registered for use in connection with cloud-based software (sometimes called software-as-a-service).

In this case, a mark was registered in connection with “computer software programs” as a “ware”.  In order to avoid expungement of their mark, the registrant was required to show use of the mark in connection with the wares for which it was registered.  The registrant had only used the mark in connection with cloud-based software and had not sold any actual copies of the software.  Instead, they stored the program on their own server and provided access to the software to users over the internet.

A challenger argued that no use as a “ware” had been shown (ie that the mark should instead have been registered in connection with a “service”). The court upheld the registration finding that there was a ‘good’ sold, which was an intangible good in the form of a licence to use the software (over the internet).

E-TIPS® ISSUE

16 04 20

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