PROTECTING YOUR TRADEMARKS – IF YOU DON’T USE IT, YOU MAY LOSE IT
novemBER 2015 | AUTHOR: joanne gilbert-wiens
So you’ve filed your application and the registration certificate has been issued. You’ve officially registered your trademark – so, you’re all set, right? Not quite. The Canadian trademarks system is not a ‘set it and forget it’ system. If you don’t use your trademark properly, you may risk losing your registration.
Use
Trademark Use is defined in the Canadian Trademarks Act (the Act) specifically with respect to use with goods, use with services and use by export. Since you have gone through the time, effort and expense to register your trademark, of course you’ll be using it. The question is, are you using it as required under the Act to maintain your registration?
Use of the trademark with goods requires that the trademark be marked on the goods themselves, or on the packages, at the time the goods are sold. There must be an actual sale to a customer – use of the trademark internally or in the advertising of the goods will not be sufficient to show that the trademark is in Use.
Use of the trademark with services requires that the trademark be displayed in the performance or advertising of the services. For Use of the trademark in advertising to be sufficient, you must be able to actually provide the services at the time of the advertisement.
Finally, Use of the trademark by export requires that the trademark be marked in Canada on the goods themselves, or their packages, when the goods are exported from Canada.
Licenses
The Act also provides that Use by the registered owner is not required to constitute proper Use of the trademark. Use by a licensee is deemed to be Use by the trademark owner, as long as the owner has direct or indirect control of the character or quality of the goods or services. If public notice is given that the trademarks are being used under license, it is presumed that the Use is licensed by the owner and the character or quality of the goods or services is under the control of the owner.
Therefore, license agreements should provide that the trademark owner has the right to inspect the goods and services with which the trademark is being used, and that the licensees use a legend such as the legend below, when the trademark is Used:
“[®: Trademark] is a trademark of [owner], used under license by [licensee]”
Unregistered trademarks can also be licensed. For unregistered trademarks, the following legend would be used:
[“TM: Trademark] is a trademark of [owner], used under license by [licensee]”
Consequences of Non-Use
Section 45 of the Act provides for a summary proceeding whereby any person can request that a trademark that has not been used within the preceding three years be removed from the Register. To defend against such a proceeding, a trademark owner must show that it has Used the trademark, in association with the goods and services with which it is registered, pursuant to the definitions of Use set out above.
Conclusion
The Canadian trademarks system is not a ‘set it and forget it’ system. In order to maintain your trademark registration, you must ensure that you (or your licensees) are using your trademark in accordance with the Act, and in association with all of the goods and services with which it was registered. Failure to properly Use your trademark could lead to the Registrar removing your registration -‘clearing the deadwood from the Register’ - and allowing someone else to register your trademark for their goods and services.
If you have any questions relating to any of the above, please do not hesitate to contact Joanne Gilbert-Wiens at jgilbert@kmblaw.com or 905.276.0406.
Use
Trademark Use is defined in the Canadian Trademarks Act (the Act) specifically with respect to use with goods, use with services and use by export. Since you have gone through the time, effort and expense to register your trademark, of course you’ll be using it. The question is, are you using it as required under the Act to maintain your registration?
Use of the trademark with goods requires that the trademark be marked on the goods themselves, or on the packages, at the time the goods are sold. There must be an actual sale to a customer – use of the trademark internally or in the advertising of the goods will not be sufficient to show that the trademark is in Use.
Use of the trademark with services requires that the trademark be displayed in the performance or advertising of the services. For Use of the trademark in advertising to be sufficient, you must be able to actually provide the services at the time of the advertisement.
Finally, Use of the trademark by export requires that the trademark be marked in Canada on the goods themselves, or their packages, when the goods are exported from Canada.
Licenses
The Act also provides that Use by the registered owner is not required to constitute proper Use of the trademark. Use by a licensee is deemed to be Use by the trademark owner, as long as the owner has direct or indirect control of the character or quality of the goods or services. If public notice is given that the trademarks are being used under license, it is presumed that the Use is licensed by the owner and the character or quality of the goods or services is under the control of the owner.
Therefore, license agreements should provide that the trademark owner has the right to inspect the goods and services with which the trademark is being used, and that the licensees use a legend such as the legend below, when the trademark is Used:
“[®: Trademark] is a trademark of [owner], used under license by [licensee]”
Unregistered trademarks can also be licensed. For unregistered trademarks, the following legend would be used:
[“TM: Trademark] is a trademark of [owner], used under license by [licensee]”
Consequences of Non-Use
Section 45 of the Act provides for a summary proceeding whereby any person can request that a trademark that has not been used within the preceding three years be removed from the Register. To defend against such a proceeding, a trademark owner must show that it has Used the trademark, in association with the goods and services with which it is registered, pursuant to the definitions of Use set out above.
Conclusion
The Canadian trademarks system is not a ‘set it and forget it’ system. In order to maintain your trademark registration, you must ensure that you (or your licensees) are using your trademark in accordance with the Act, and in association with all of the goods and services with which it was registered. Failure to properly Use your trademark could lead to the Registrar removing your registration -‘clearing the deadwood from the Register’ - and allowing someone else to register your trademark for their goods and services.
If you have any questions relating to any of the above, please do not hesitate to contact Joanne Gilbert-Wiens at jgilbert@kmblaw.com or 905.276.0406.
This article is provided for general information purposes and should not be considered a legal opinion. Clients are advised to obtain legal advice on their specific situations.
