Use is an important concept in trademark law for several reasons. For example, applicants need to use or propose to use the trademark in order to register it, and a trademark registration could be cancelled if it is not used.
This article reviews the importance of using your trademark in Canada and the potential consequences if you do not.
Why is using a trademark important?
Having a registered trademark for your business can be very important. It establishes your right to use the mark and grants you exclusive rights to its use. In turn, it allows you to use your brand to promote and grow your business.
Beyond just having a trademark, It is incredibly important to use your trademark. The law is designed to allow only those using their trademarks to register and maintain their registrations. This is because it is desirable for only those marks in use to be registered, freeing up unused marks for other traders to use.
In the next three sections, the post will review some of the use-related requirements that apply under Canadian trademark law.
Applying for a trademark – has the applicant used, or do they propose to use, the trademark?
Firstly, under section 30(1) of the Canadian Trademarks Act, a person can only apply to register a trademark in respect of goods or services if they are either using, or proposing to use, the trademark in Canada in association with those goods or services.
When applying for a registered trademark, applicants must declare that they either use the mark in Canada or propose to do so. A relatively low bar is set with respect to registering a trademark, as the applicant can apply before they use the trademark in Canada.
Opposition to a trademark application – can a third party show the applicant did not use, or propose to use, the trademark?
If the trademark passes an examination by the Trademarks Office, it is published in a journal and can be opposed by others. Section 38(2) of the Trademarks Act sets out the possible grounds for opposition. The trademark registration can be refused if the opponent provides evidence supporting one of these grounds.
One ground of opposition is that, at the application filing date, the applicant was not using the trademark and did not propose to use the trademark in Canada in association with the goods or services specified in the application. If an opponent can adduce evidence showing that the mark was not used nor proposed to be used, their opposition may succeed.
Cancellation of a trademark registration – has the trademark been used in the preceding three years?
Under Canadian trademark law, in certain circumstances, a trademark registration can be cancelled if it is not used. Not using the trademark makes it vulnerable to what is called a non-use cancellation. This differs from the process for trademarks registered in the United States. In the U.S., proof of use is required to maintain a trademark registration. Trademark owners must submit a declaration of use, including proof of use, five and nine years after registration and then every ten years after that. If trademark owners do not use their marks or comply with these maintenance requirements, and special circumstances do not apply, the registration may be cancelled.
In Canada, a different process applies regarding the ongoing use of the trademark. Regular use declarations do not apply. However, according to the Trademarks Act, after a trademark has been registered for three years, any person can apply to the Trademarks Office (or it can do so on its own initiative) requiring it to instruct the trademark owner to provide evidence within three months showing:
“with respect to all the goods or services specified in the registration or to those that may be specified in the notice, whether the trademark was in use in Canada at any time during the three-year period immediately preceding the date of the notice and, if not, the date when it was last so in use and the reason for the absence of such use since that date.”
If the trademark was not used in Canada in the three-year period, either with respect to all or any of the specified goods or services, and there are no special circumstances to excuse non-use, the Trademarks Office may cancel or amend the registration.
What constitutes use of a trademark in Canada?
The Trademarks Act states that a trademark is deemed to be used in association with goods if, at the time of the transfer of the property in or possession of the goods, in the normal course of trade, the trademark is placed on the goods themselves or on the packaging or in another manner associated with the goods that notice of the association is given to the person to whom the property or possession is transferred.
Furthermore, a trademark is deemed to be used in Canada when it is marked in Canada on goods or packaging in which the goods are contained, when those goods are exported from Canada.
Concerning services, the Trademarks Act provides that a trademark is deemed to be used if it is used or displayed in the performance or advertising of the services.
Contact DBH Law in Calgary for Assistance with your Intellectual Property and Trademark Needs
The team of trademark agents and intellectual property lawyers at DBH Law helps their clients protect their important intellectual property and confidential information. We can assist you with a range of trademark services, from registering and advising you on your mark, to defending and enforcing your exclusive trademark rights, to preparing sale and licensing agreements.
Official trademark fees can add up, so we work to keep our fees down by taking a pragmatic approach and solving the issues you need to allow you to focus on your business. Please contact us online or by phone at 403-252-9937 to schedule a consultation and learn how we can help you protect your intellectual property.