Let's Talk about "use"...

Photo by Aaron Burden on Unsplash

By Sukey Omran

Since the 2019 amendments to the Trademarks Act, trademark 'use' is no longer a pre-requisite to the registration of a trademark in Canada. Indeed, applications filed after June 17, 2019 no longer need to include a claim of use, making known, proposed use, or use and registration abroad. Brand owners with pending applications that were filed prior to June 17, 2019 now have the option of removing any use claims from the application. There could be value in removing these claims when it comes to third-party challenges post-registration.
 
Of course, "use" is still essential for establishing and maintaining trademark rights in Canada.  If a registered mark is not in use, it is vulnerable to cancellation under Section 45 of the Act. 
 
If you would like more information on what constitutes 'use' of a trademark in Canada, please contact us at Clancy PC.  Spoiler alert: the definition of 'use' differs if the trademark is associated with goods vs. if a trademark is associated with services!