Use it or lose it: some tips to ensure you maintain your trade-mark rights

November 8th, 2012 by

Under the Trade-marks Act, the owner of a registered trade-mark is granted the exclusive right to the use throughout Canada of the trade-mark.  However, in order for a trade-mark owner to maintain that right, the mark must be properly “used”.

Failure to use a registered trade-mark for a period of three years from the date of registration or for an uninterrupted period of three years, provided there are no special circumstances that excuse the absence of use, may result in the trade-mark registration being expunged.

It is important to note that non-use for a three year period does not result in automatic expungement.  In order to be expunged for non-use, a written request must be made by a third party for the Registrar to give notice to the registered owner of the trade-mark requiring them to produce evidence of use, prompting what is commonly known as a Section 45 proceeding.  Be that as it may, failure to use a trade-mark for a long period of time does place a registered trade-mark owner’s trade-mark rights at risk.

Here are some important issues that the owner of a registered trade-mark should consider in order to ensure their mark remains in “use”:

  • Affix your trade-mark to your wares or services. In order for trade-mark rights to be created and maintained, a mark must be affixed to a specific product, or used in the provision of a particular service.  A mark will not be considered as in use in association with wares unless it is marked on the wares themselves or on the packages in which they are distributed or unless notice of an association with the wares is given to the person receiving the purchased products.  For services, the “use” requirement is somewhat more lenient – a trade-mark is deemed to be used in association with services if it is used or displayed in the performance or advertising of those services.
  • If your services are advertised on a web page, prominence should be given to the mark on the page.  Simply including a mark as part of a domain name may not be sufficient evidence of use.
  • If possible, a trade-mark should always be indicated as such using the ® symbol for registered trade-marks and the ™ symbol if the trade-mark is unregistered. A trade-mark acknowledgement should always be included in advertising, promotional materials and on packaging.
  • Trade-mark owners should ensure that all third parties, for example licensees, also use the mark correctly. Authorized third-party users of a trade-mark should be licensed, and all licensing agreements should be written carefully, signed, and enforced. The agreement must set standards concerning the licensee’s use of the trade-mark, and the quality of products or services with which the trade-mark will be used.
  • In the course of a Section 45 proceeding, evidence of use must be shown for each of the wares and services mentioned in the trade-mark registration.

If you have any questions regarding Section 45 proceedings specifically or trade-mark registration in general, please do not hesitate to contact a lawyer or trade-mark agent in the Intellectual Property department at Devry Smith Frank LLP.  We have been assisting our clients grow and prosper since 1964.


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