There are four bases available for filing an application to register a trademark in Canada: (1) use in Canada, (2) proposed use (intent-to-use) in Canada, (3) making known in Canada, and (4) registration and use abroad. This article will focus on the differences between the first two bases, namely use in Canada and proposed use in Canada.
The use in Canada basis aptly supports an application to register a trademark that has been used in Canada in association with specific goods/services. An applicant who has yet to use the trademark in Canada should file its application on the basis of proposed use, discussed below.
What constitutes “use” of a trademark? The notion of “use” of a trademark differs depending on whether the use is in association with goods or with services.
For goods, generally speaking, there is associated “use” of a trademark if they have been sold and received by a purchaser in Canada (any purchaser along the chain of distribution) where the trademark appears on the goods or on the packaging, for example.
For services, there is associated “use” of a trademark if the services have been provided in Canada and if the trademark has been displayed in advertising or performing the services in Canada. If the services have not been provided in Canada, there can be use if the trademark has been advertised or displayed in Canada and if the applicant is ready, willing and able to provide the services if requested.
There are also other, less common circumstances that may constitute use of a trademark under Canadian law, and establishing whether there has in fact been use of a trademark may be case-specific.
Why is the notion of “use” important? An understanding of the notion of “use” in connection with a trademark in Canada is important in order to properly determine the proper basis for filing. Failure to do so could lead to an application for a trademark (and the resulting registration) being made on an incorrect basis, which could render the mark vulnerable in a situation where the application for registration is opposed or the validity of the resulting registration is challenged.
Indeed, if a trademark has been used in Canada, the application for registration of that trademark must indicate such prior use. In fact, it is improper to file an application on the basis of proposed use if the mark is already in use in Canada, and a trademark application filed on the basis of proposed use can be successfully opposed by a third party on the ground that it was filed on an improper basis by establishing that there was use of the trademark at the time the application was filed. Moreover, an application may not be corrected after filing to change the basis from proposed use to use in Canada, and an applicant would be required to file a new application in such a case.
Similarly, it is improper to file an application on the basis of “use” of a trademark in Canada if there has in fact been no such use when the application is filed.
It is therefore important to ensure that:
- for applications based on proposed use, the trademark has not already been in use in Canada in association with any of the goods/services covered by the application; and
- for applications based on use in Canada, the trademark has been properly used in Canada in association with all of the goods/services described in the application since the date of first use specified in the application.
What is the correct date of first use? In the case of an application based on use in Canada, the applicant must state the date of first use of the trademark in Canada in the application. Since it can be difficult to amend the date of first use after filing, it is important to include the correct information at the time of filing. The use of the language “at least as early as…” is acceptable and is often used when the precise date of first use is unknown.
Where a trademark has been used in association with all the goods/services specified in a trademark application but the date of first use differs for some of the goods/services, the applicant may group the goods/services in general classes (categories) and provide the earliest date of first use for each class. In this case, the applicant should ensure that that the trademark has in fact been used in association with every good/service in the class.
While no use is required at the time of filing in the case of applications based on proposed use of a trademark, the use the trademark is required before the trademark registration will be issued. To establish use of the trademark, a “Declaration of Use” must be filed by the applicant stating that use of the mark in Canada has commenced by the applicant or an entity that is licensed by or with the authority of the applicant to use the trademark. The “Declaration of Use” need not indicate the date upon which use commenced, but it must not be executed until use has commenced. An incorrectly filed declaration may render the eventual trademark registration vulnerable as the validity of the registration may be challenged on that basis.
Therefore, in the case of both bases, it is important not to claim a date of first use that is too early (i.e. before the actual date of first use) as this could result in vulnerability to opposition and/or invalidation. It is also important to ensure that use has in fact commenced in association with all of the goods and/or services as of the declared date.
What if there has only been use in association with some of the goods/services? Where a trademark has been in use with some but not all of the goods/services specified in an application, the applicant should file on the basis of actual use in Canada for the goods/services in connection with which the trademark has been used in Canada and on the basis of proposed use for the goods/services that have yet to be used in association with the trademark.
It should be noted that while it is possible for an application and resulting registration to be founded on more than one basis, it is not possible to file an application on the basis of both proposed use and use in Canada in association with the same good/service.
Conclusion. In summary, trademark applicants should exercise caution, and seek the advice of experienced legal counsel when necessary, when determining the proper basis for filing a trademark application, namely use in Canada or proposed use. Failure to so could lead to serious consequences, including loss of registration.
Eve Heafey, Ottawa
The preceding is intended as a timely update on Canadian intellectual property and technology law. The content is informational only and does not constitute legal or professional advice. To obtain such advice, please communicate with our offices directly.