In this case, Unicast brought an application pursuant to s. 57 of the Trade-marks Act requesting expungement of the trade-mark “RED FM” from the Register. The Court dismissed the application.
The Applicant operates a radio station in association with the trade-mark “ROUGE FM”. It is operated over the internet in Canada. The Respondent offers radio programing in association with the RED FM trade-mark. The Court held that for the Applicant to be successful, it must satisfy the Court that it had used its trade-mark before the Respondent, had not abandoned it, and that the two marks were confusing.
In considering these elements, the Court held that the Applicant’s online activities did not constitute “broadcasting” for the purposes of the legislation. The Applicant does not store its transmitted content on Canadian servers. It is not physically present in Canada. It does not seek or have advertisers in Canada. Finally, it did not take steps towards gathering Canadian listeners, other than offering its programming online. Thus, the Applicant’s activities were held not to constitute a “broadcasting undertaking” as they are not “carried in whole or in part in Canada”, under the Broadcasting Act. Thus, it cannot claim to have used the ROUGE FM trade- mark while providing broadcasting services to Canadians. As a result, the application must be dismissed.