On What Basis Can I Register A Trade-Mark?

May 27th, 2013 by Meliha Waddell

Part 1 – Use in Canada

A trade-mark application can be filed in Canada on a number of different bases, which include:

  • Use in Canada
  • Proposed use in Canada
  • Made known in Canada
  • The mark being subject to a registration or application for registration in another country

When filing on the bases of “use” or “proposed use” it is important to understand what constitutes “use” according to the Trade-marks Act.

The Trade-marks Act provides for two definitions of “use”: one in relation to wares, and one in relation to services.

SubSection 4(1) of the Trade-marks Act specifies that a mark is deemed to be used in association with wares if, at the time of the transfer of the property in or possession of the wares, in the normal course of trade, it is marked on the wares themselves or on the packages in which they are distributed or it is in any other manner so associated with the wares that notice of the association is then given to the person to whom the property or possession is transferred.

SubSection 4(2) of the Trade-marks Act specifies that a mark is deemed to be used in association with services it is used or displayed in the performance or advertising of those service.
This is an important distinction. If a company advertises its services on its website in association with a trade-mark (and can actually provide those services), that may constitute “use”. Advertising its products for sale on the other hand, is not sufficient “use” according to the Trade-marks Act, and an actual sale must first be made.

On What Basis Can I Register A Trade-Mark?
If your mark is already in use, then filing a trade-mark application right away is generally the safest approach. If your mark is not yet in use, but you intend to begin use of the mark in the near future, then filing on the basis of “proposed use” may be more appropriate. Stay tuned for Part 2 of this blog series to find out more about filing on the basis of “proposed use”. If you wish to read more about other trade mark and IP topics, please visit our Intellectual Property Blog Page.

If you have any questions regarding trade-marks, please do not hesitate to contact a lawyer in the Intellectual Property department at Devry Smith Frank LLP. We have been assisting our clients grow and prosper since 1964.

Our law offices are easily located in the Lawrence and Don Mills location of Toronto and we have plenty of free parking.

Or, to browse some others law videos pertaining to Intellectual Property laws, kindly browse through our media page.


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