Computer software programs are “goods” irrespective of medium of access

Specialty Software Inc. v. Bewatec Kommunikationstechnik GmbH
2016 CarswellNat 579
Federal Court

Intellectual property --- Trade-marks — Loss of rights — Expungement — Grounds — Proof of use — Websites

Applicant SS Inc. registered trade-mark in association with computer software programs as wares — SS Inc. had sold its software on disks, but now clients could obtain access to software over internet from SS Inc.'s computer server after installing icon on their computers — BKG alleged that transfer of property was not proved — BKG's application to expunge SS Inc.'s mark from register was granted — SS Inc. appealed — Appeal allowed — There was no real change in what SS Inc. was selling — Change related to means by which software was transferred to clients, not to actual nature of use of trade-mark — SS Inc. showed compliance with legal requirements — Even though SS Inc. used to sell its software on disks, it was always really selling license to use software, which was intangible good — SS Inc. did not actually sell software itself, but sold entitlement to obtain access to it by way of licenses — Evidence showed that trade-mark was used in manner that showed association between mark and goods sold, which were licenses — SS Inc. showed there was transfer of property in ware and mark was visible to purchasers before, during and after transfer.