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Trademarks and the Law: Use ‘em or Lose ‘em

4 minute read

A trademark or “mark” is a “sign or combination of signs” (e.g. the traditional symbol, logo, word or word combination, but also includes colours, sounds, and even smells and tastes) that identifies the source of goods and services. A mark is a shorthand way to identify where goods and services come from, but it also communicates to consumers other ideas, like quality. Consider the name Nike, the “swoosh” logo and the slogan “Just Do It”: Nike has been using these marks to tell a story to consumers about their shoes and athletic clothing for more than twenty years.

Your trademark is a valuable asset that protects your company’s brand. Registration under the Trademarks Act (the “Act”) protects that brand by providing:

  1. The registered owner (the “registrant”) with the exclusive right to use the mark throughout Canada with respect to the goods and services with which it is associated;[1]
  2. It prohibits others from using the marks in Canada without your permission; and
  3. Provides additional powerful statutory protections and remedies, including those identified in the footnotes.[2]

Registered trademark rights are strategically useful for businesses because once registered, these rights continue so long as the registrant renews the marks every ten years. However, to quote Uncle Ben, “With great power comes great responsibility.”[3]

Prior to amendments in 2019, the Act required a registrant to show use of the mark in order to secure registration.[4] This is no longer the case. Instead of having to declare that the mark was used prior to registration, a mark will be registered and it is up to a third party to challenge a trademark for non-use under section 45 of the Act.

Section 45 works like this:

  1. Any time after 3 years of the registration date, any third party can request proof of use of the mark during the prior 3 years.
  2. The third-party must provide a written request and pay the requisite fee to the trademarks office to request proof of use from the registrant.
  3. The trademarks office will[5] issue a notice under section 45 of the Act to the registrant.
  4. The registrant will then have 3 months to provide the trademarks office with evidence sufficient to demonstrate use in Canada of the mark in association with the goods and services for which the mark is registered.

The meaning of “use in Canada” can be somewhat tricky, as it can vary based on the types of goods and services for which the mark is registered, and a registrant should seek professional advice on that.

Because of the potential for a section 45 challenge, it’s a good best practice for a registrant to keep records of use of its registered marks. This practice will make it easier (and more cost-effective) to respond within the Act’s 3-month deadline in the event of a section 45 notice. The records should be sufficient to demonstrate use in Canada for each of the goods and services with which the mark is registered over the previous 3 years. For example, typically for goods, records may be invoices containing descriptions of goods sold and the address of the purchaser in Canada, often with photos of packaging or products showing use of the mark on the packaging or product.

If you receive a section 45 notice, you should retain a trademark agent as quickly as possible to assist you. The 3-month deadline can make it challenging to pull together the required evidence and prepare a response.

If you need help protecting your brand, contact me at Lerners Lawyers.  We are here to make your business our priority.

[1] Act, s. 19.

[2] For example: passing off (section 7), which is capitalizing on the goodwill of the mark of another; infringement (section 20), which is when a person uses a mark they aren’t entitled to use; and depreciation of goodwill (section 22), which is using a registered mark in a way that harms the goodwill of the registrant.

[3] This proverb, popularized by Spiderman, dates to at least as early as the French Revolution:

[4] Section 40(2) under the Act then in force on June 16, 2019.

[5] The language of section 45 of the Act is permissive, not strict, and there are some circumstances where the trademarks office may not issue a notice.

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Mark H. Evans

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