Clancy PC, Intellectual Property Law, Paula Clancy, Trademarks, Canadian IP, @CanadianIP, IP
Registering a trademark is a win for any brand owner: not only does it provide a broad monopoly and the exclusive right to use the mark across Canada, but also it confers powerful remedies against unauthorized use as well as a defence or 'shield' against infringement claims by third parties.
However, obtaining a registration is not the end of the story. In fact, it is just the beginning. Any registration may be attacked if the mark that is being used varies or deviates from the mark that was registered, or if the mark is not in fact being used in the Canadian marketplace.
Competitors may challenge trademarks that are registered at anytime after the 3rd anniversary from the date of registration. Therefore it is very important for brand owners to begin using their mark in Canada (preferably in the exact form as it was registered) within the first 3 years following the date of registration. Otherwise, the registered trademark may be challenged either for non-use, or on the basis that the mark 'as used' deviates from the mark 'as registered'.
"Use" has a very specific meaning under the Trademarks Act, and this definition varies if the trademark is used in relation to goods or services. "Use" in relation to goods is deemed to occur when the mark is displayed on the goods themselves or on their packaging. The Act makes no mention of the display of a mark in advertising or other promotional material. Therefore, the display of a mark on a website or in social media posts would not qualify as "use" in respect of goods. For example, if you have registered ACME for use with t-shirts, you must ensure that the word ACME appears somewhere on the t-shirts themselves, the tags or any labels affixed to them. Posting a photo on Instagram stating "Check out our new ACME t-shirt" would not qualify as "use" of the ACME mark for t-shirts in Canada. Moreover, you would need to establish the sale of t-shirts in Canada since the mark must be displayed at the time that the sale/exchange is made.
By contrast, "use" in relation to services is deemed to occur when the mark is displayed in the performance of or advertising of the services. If you guessed that displaying the ACME mark on a website advertising personal shopping services would be sufficient to constitute use in relation to services, you guessed correctly! Provided, of course, that these services were available in Canada to Canadian consumers.
If you are a brand owner with 'post-registration' questions, we're here to help. Please contact us.
Clancy PC, Intellectual Property Law, Paula Clancy, Trademarks, IP