“Use”: a fundamental concept
In Canada, a trademark is used in association with goods if, at the time of any sale of the goods the trademark is clearly marked on the packaging of goods or a bill of lading that accompanies them.
A trademark is used in association with services if, at any time when the services are advertised, the trademark is used in performance or advertising of the services.
Use – or Proposed Use
When an applicant files an application to a Canadian trademark, the applicant may:
- Already be using the trademark in Canada; or
- Propose to use the trademark in Canada at a later date.
There is no longer a requirement to specify if the trademark is in use in Canada on the trademark application.
No evidence filed
In Canada, no evidence or specimens of use are filed.
Cancellation for Non-Use – section 45 proceedings
A Canadian trademark registration may be cancelled if at any time that is 3 years after the date of registration, the owner has not used the trademark within the previous 5 years.
These proceedings for removal of the trademark from the register administrative (and not adversarial) in nature and are conducted internally to the Office of the Registrar of Trademarks.
The authority for these proceedings is found in s. 45 of the Trademarks Act, and thus they are commonly referred to as ‘section 45 proceedings’.
In order to preserve the anonimity of the party interested in having the trademark removed from the register, non-use proceedings are usually initiated in the name of a law firm.
The party that wants the trademark removed files a request and pays the prescribed fee ($400). No further evidence can by filed by the party that requests a non-use hearing.
The owner of the registered trademark is obliged to submit evidence of use of the trademark – otherwise, the trademark will be removed from the register. Evidence of use must meet the requirements set out above. Accordingly, actual copies of invoices, packing slips, and advertisements are generally required. Further, it is customary to provide evidence of sales of the goods/services associated with the mark by year and by province to establish continuous use through the entire period in issue.
Because of the technical requirements of the rules of evidence and the nature of proof of ‘use’ of the trademark, owners of registered trademarks are usually represented by legal counsel when they respond to a non-use proceeding. Learn more about these ‘cancellation for non-use’ proceedings here.