Summary
While use is not needed to register a trademark in Canada, use is required to maintain trademark rights and protection. In Canada, use is defined in section 4 of the Trademarks Act (“the Act”) for goods and services separately. Proof of use is required when: a trademark is facing cancellation, you want to establish acquired distinctiveness, or you need to establish prior use to oppose another trademark. Use can be established in a variety of ways, and differs for both goods and services.
Discussion
When You Need to Prove Trademark Use
a. Acquired Distinctiveness: Trademarks that ordinarily would not be registered for being descriptive, primarily merely a name, or not inherently distinctive may be registrable under s. 12(3) of the Act for having acquired distinctiveness. To establish acquired distinctiveness of a trademark, an applicant must show evidence of use in the marketplace for an extended period of time.
b. Opposition: During the two-month advertisement period before a trademark registers, owners of a registered or common law trademark can file an opposition against an advertised trademark where there is a likelihood of confusion. Both parties have an opportunity to establish the extent of use of the respective trademarks, which informs the confusion analysis.
c. Cancellation: Pursuant to s. 45(1) of the Act, a trademark owner may, upon notice from the Trademark Registrar, have to show that the trademark has been used in Canada during the three years preceding the date of the notice (the “Relevant Period”) to avoid having the trademark registration cancelled/expunged/amended. Such notice can only be given after a trademark has been registered for at least three years. Master Saddles is an example of this type of proceeding (see below).
d. Prior Use: Pursuant to s. 17(1) of the Act, trademark owners can bring proceedings to expunge the registration of a confusing trademark. Such owner would bare the onus to prove use of its trademark prior to the allegedly confusing trademark’s registration.
A recent s. 45 cancellation proceeding that involved establishing trademark use of a word and design mark (the “Trademarks”) is Master Saddles Inc v Moffat & Co, 2023 FC 179. We will use Master Saddles in the next part of this article to show types of evidence that the Courts accept to establish use of a trademark.
Trademarks Associated with Goods
Subsection 4(1) of the Act states that a trademark will be deemed to have been used in association with goods, at the time of a commercial trade, if the trademark was either:
- “marked on the goods themselves”, e.g. embedded directly on the product;
- “marked on the packages in which they are distributed”, e.g. on bags or boxes in which the good is placed; or
- “marked in any other manner so associated with the goods that notice of the association is then given to the person to whom the property or possession is transferred”, e.g. on an invoice, on a display case or marketing materials (such as brochures) displayed directly alongside the product where it is sold.
These rules have been adapted somewhat for online marketplaces. For example, the use of the trademark on the website may be sufficient to satisfy the requirements of association with the good being sold. It is important to note that, for a mark to be deemed “used” in association with a good, a commercial sale must occur — critically, there should be a buyer. A trademark on promotional goods given for free do not qualify as use of a trademark with such goods.
In Master Saddles, the trademark owner provided evidence that the Trademarks were embedded on the goods, affixed to the goods by way of hangtags, and appeared on invoices for the sale of the goods to establish use of the Trademarks. The Court found that the evidence did in fact establish use of the Trademarks in association with most of the goods.
However, for one of the goods listed in the registration, namely “briefcase”, the trademark owner only provided evidence of marketing efforts — there was no evidence of commercial sales during the Relevant Period. The Court held there was no use of the Trademarks during the Relevant Period with respect to “briefcase”, and thus amended the registration to remove “it from the statement of goods”.
Trademarks Associated with Services
Subsection 4(2) of the Act states that a trademark is “deemed used in association with services if it is used or displayed in the performance or advertising of those services”. No transaction or sale is required to establish use of a service. Examples of use of a trademark in associated with services include: incorporating the trademark into advertising materials, displaying the trademark during business development activities, such as conferences or trade shows, and having the trademark displayed at a physical location where the service is provided.
In Master Saddles, the Court accepted evidence of a price list, a catalogue, and invoices to establish use of the Trademarks in association with the listed services. While the good “briefcase” was removed from the statement of goods, the services “sale of briefcases” was maintained because there was evidence of briefcases listed in a catalogue during the Relevant Period.
Take Away
To maintain or acquire trademarks rights, the key is to use the trademark in Canada in association with the specific goods and services.