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Acquisition of Rights under the Trademarks Act

Adoption

The Trademarks Act contemplates that rights in a mark are acquired by adopting it. A trademark is deemed to have been adopted by a person when that person or their predecessor in title commenced to use it in Canada or to make it known in Canada or, if that person or their predecessor had not previously so used it or made it known, when that person or their predecessor filed an application for its registration in Canada.


Making Known

A trademark is deemed to be made known in Canada by a person only if it is used by that person in a country of the Union, other than Canada, in association with goods or services, and

(a) the goods are distributed in association with it in Canada, or

(b) the goods or services are advertised in association with it in

(i) any printed publication circulated in Canada in the ordinary course of commerce among potential dealers in or users of the goods or services, or

(ii) radio broadcasts ordinarily received in Canada by potential dealers in or users of the goods or services, and it has become well known in Canada by reason of the distribution or advertising.


Use of the trademark for the purposes of making known must satisfy the above requirements of the Act. It is not sufficient to show circulation of printed publications or radio broadcasts by themselves, but that the publications or broadcasts circulated among or were ordinarily received in Canada by potential dealers in or users of such goods or services. The advertisements relied on to show the mark is well known must be substantial and have a significant impact on the Canadian market.


In order to become well known in Canada, it may be sufficient to show that a substantial area or part of Canada knows the mark as opposed to the entire country.


These requirements are matters of substantive law and not evidence. As a practical matter, reliance on making known will be relatively infrequent and limited to being used to support a ground of opposition.


No Requirement to Specify any Ground of Registration

Under the Trademarks Act there is no requirement to specify any ground as a basis of registration and no requirement to specify a date of first use. Despite this absence, section 30(1) provides that a person may file an application for the registration of a trademark in respect of goods or services if they are using or propose to use, and are entitled to use, the trademark in Canada in association with those goods or services.


If you have questions, please contact me at mckeown@gsnh.com.


John McKeown

Goldman Sloan Nash & Haber LLP

480 University Avenue, Suite 1600

Toronto, Ontario M5G 1V2

Direct Line: (416) 597-3371

Fax: (416) 597-3370

Email: mckeown@gsnh.com


These comments are general in nature and not intended to provide legal advice as

individual situations will differ and should be discussed with a lawyer.

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