More Rules for Trademark Use
This month we are continuing with the discussion concerning trademark use. We deal with additional requirements and the practical rules that apply.
Section 4 provides that a trademark is used in association with goods if, at the time of transferring the property in or possession of such goods, in the normal course of trade, it is marked on the goods themselves or on the packages in which they are distributed or it is in any other manner so associated with the goods that notice of the association is then given to the person to whom the property or possession is transferred.
A trademark is used in association with services if it is used or displayed in the performance or advertising of such services.
A trademark marked in Canada on goods or on the packages in which they are contained is, when such goods are exported from Canada, used in Canada in association with such goods.
These provisions also incorporate the definition of a trademark and the requirement that the mark be used to distinguish goods or services manufactured, sold, leased, hired or performed by the brand owner from those manufactured, sold, leased, hired or performed by others.
To show “use”, two elements must be established. First, were the goods or services associated with the trademark? Second, was the mark used as a trademark to distinguish or identify the trademark owner’s goods or services from the goods or services of others?
The use must be a use as a trademark and not as a mere generic or descriptive term or name. If a trademark becomes so popular that consumers use the mark as the generic name of the goods or services in issue, the registration may be invalid because the trademark is no longer distinctive.
Typically, the text or presentation of the mark must be distinguished from the surrounding text to be “use” of the mark. This means that use in an e-mail address or as part of a company name will not be trademark use unless the mark is distinguished from the surrounding text.
There are some basic business-oriented rules concerning trademark use, consistent with the requirements of the Act, which should be always followed:
(a) A trademark should always be used as an adjective qualifying a generic noun that defines the goods or service; take, for example, a SWINGLINE stapler. A trademark should not be used as a noun, in the plural or as a verb. Using a trademark in a generic fashion may cause a loss of distinctiveness;
(b) all reproductions of a particular trademark should be accurate and consistent, so consumers view the trademark the same way on each occasion they see it;
(c) The use of a trademark notice is permissive but prudent;
(d) A trademark should always be distinguished from surrounding text by capital letters or the like;
(e) Variants or abbreviations of a trademark should not be used without considering the impact on the brand and obtaining specific protection; and
(f) Accurate sales records should be kept of the sales or services provided in association with the mark for each good or service the mark is registered with, so the brand owner can show the mark is being used.
If you have questions, please contact me at firstname.lastname@example.org.
Goldman Sloan Nash & Haber LLP
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Toronto, Ontario M5G 1V2
Direct Line: (416) 597-3371
Fax: (416) 597-3370
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.