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October 2, 2019

Trademarks: The more things change, the more they stay the same

By Steven Z. Raber

Much has been written about the many changes to Canada’s Trademarks Act, which came into effect on June 17, 2019.

As part of the overhaul, Canada has adopted the Madrid Protocol, an international trademark registration system that offers businesses the convenience of obtaining trademark protection in over 100 countries by filing a single application with the World Intellectual Property Organization.

Although there are other important changes, the point of this piece is something that has not changed at all, namely the requirement that a mark be and remain in use in Canada.

In the past, pre-June 17 era, common bases for Canadian trademark applications were “use in Canada” or “proposed use in Canada.” In the former case, one would indicate the date on which the mark was first used in this country. 

If a mark was not in use at the time of filing, the application would be filed on the basis the applicant intended to use the trademark here in the future. In that case, the applicant would have to execute a declaration confirming the mark was in use prior to registration. 

If use of a trademark is no longer required to obtain a Canadian registration, one might ask why use is still an issue. In a word: CANCELLATION! Use in Canada is required in order that a registration avoid cancellation for non-use. 

The amendments to the Trademarks Act allow the Registrar of Trademarks, either on his or her own initiative or on the request of any person who pays the required fee, to issue what trademark professionals call a s. 45 notice. 

Under that section of the statute, a s. 45 notice may be issued at any time after a mark has been registered for three years. A s. 45 notice requires that the owner of the registration, within three months from the date of the notice, file evidence showing, with respect to all the goods or services specified in the registration or to those that may be specified in the notice, that the trademark was in use in Canada at any time during the three-year period immediately preceding the date of the notice. 

Alternatively, the owner must file evidence of the date the trademark was last in use and the reason for the absence of use since that date.

Should the owner fail to respond, or fail to respond adequately, the registration of the trademark is liable to be expunged (or amended, deleting those goods and services for which evidence of use in Canada was not provided).

Therefore, even though trademark registrations may be obtained without use in Canada, owners must be vigilant to ensure use has begun—and to keep proper records of use for each good and service listed in the registration—lest the registration be susceptible to cancellation, either in whole or in part.

Of course, trademark owners’ competitors, being the persons who usually initiate s. 45 proceedings, would do well to keep a close eye on their competitors’ trademark registrations and their use in Canada.

Despite all of the changes to Canada’s trademark regime, the old adage still applies: When it comes to maintaining the validity of trademark registrations, the rule is “use it or lose it.”

Steven Z. Raber is a lawyer, registered trademark agent, and trained mediator. You may reach Steven at  stevenraber@fillmoreriley.com or (204) 957-8304. 

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