The old adage "use it or lose it" is particularly relevant when it comes to a Canadian trademark owner’s registered rights. Canada is largely considered a 'use-based' country wherein use of the mark in accordance with the provisions of the Trademarks Act is a paramount consideration. This then begs the question: what constitutes use of a trademark?
Section 4 of the Canadian Trademarks Act defines when a trademark is deemed to be used. With respect to wares (goods), a trademark is in use if, at the time of the transfer of the wares (or the transfer in the possession of the wares), it is marked on the wares, or its packaging, or is in any other manner associated with the wares insofar that the person(s) receiving the wares is aware of the association (for example, a sign bearing the trademark that is placed near the product in a retail store, making it clear to the customer that the trademark is associated with the product).
As for services, the Act states that "a trademark is deemed to be used in association with services if it is used or displayed in the performance or advertising of those services." While the Act stipulates that the trademark is deemed to be used in association with services if it is used and displayed in the performance or advertising of the services, it has been generally accepted that the use or display of the trademark in advertising alone is not sufficient, despite conflicting case law. There is also some debate in Canada as to whether strict performance of the services is required or whether a willingness and ability to peform the services in Canada is sufficient. There is case law supporting both points of view on this issue.
Finally, for those goods exported from Canada, a trademark is deemed to be used when it is marked, in Canada, on the wares or their packages.
Presently, a trademark application can be filed in Canada based on one or more of the following bases: use or made known in Canada, use and registration abroad, and proposed use in Canada. Although each of these bases is different, they all share the underlying requirement that the trademark be in use in order for the owner to be entitled to a registration, as will be explained below. Unlike in the United States, it is not necessary to submit specimens of use in order to obtain the registration. However, each basis nonetheless requires the applicant to provide some information as to its use of the mark.
When an application is based upon use or made known in Canada, a date of first use must be provided. The date does not necessarily need to include a day or month, but must specify the year in which use of the mark began. It is important to note that in the absence of specifying a day and month, should the mark be challenged, December 31st of the year given will be utilized as the material date of first use. Similarly, if only a month and year is provided, the last day of the month will be utilized as the material date in the event of a challenge.
A proposed use application will not issue to registration until a Declaration of Use, executed by the applicant/owner, is filed with the Trademarks Office. This is a simple document, which states that the wares and/or services associated with the application are now in use by the applicant/owner. One must be cognizant of what is deemed as trademark use in Canada so that a false statement is not filed on the record.
An application based upon the applicant’s use and registration of the mark abroad simply needs to specify the country in which the mark is in use, and provide the details of the foreign registration (i.e. registration number, registration date and list of wares and services of the registration). A certified copy of the foreign registration must also be submitted. Thus, technically the owner can obtain the registration without commencing use of the mark in Canada.
Once a registration is obtained, it will remain on the register for a period of 15 years before having to be renewed. Again, unlike in the United States, it is not necessary to provide specimens of use when renewing a registration.
If 'use' does not have to be shown in order to obtain or renew a registration, when does an owner have to show or prove that the mark is, in fact, in use in Canada? Generally, it is when the registration is challenged.
Section 45 of the Trademarks Act allows for the Registrar at any time, or at the written request of a third party three years after the date of registration, to request evidence of use of the trademark from the owner. The owner must comply by submitting an affidavit or statutory declaration that shows that the mark has been in use, for the wares and/or services, at any time during the three-year period preceding the request for proof of use. If such proof cannot be provided, or if sufficient reasons for why the mark was not in use cannot be given, the registration will be cancelled for non-use.
The validity of the registration can also be challenged under section 18 of the Trademarks Act. One of the grounds upon which a registration can be found to be invalid is abandonment of the trademark. To be successful in such a challenge, the party seeking the invalidation must establish an intent to abandon. Such an intent can be inferred from a long period of non-use. This is therefore another example of a challenge to the registration that requires the owner to show use of the registered trademark.
Thus, although Canada is not stringent on having to prove use of a trademark to obtain a registration, it is important that the mark be in use in Canada in order to maintain the rights provided by a registration. As the saying goes, "use it, or lose it."
Wendy Edmeades, Toronto
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