The trademark use is of fundamental importance in determining the rights of a trademark owner. The outline below shows how it works and emphasizes the importance of understanding & complying with the requirements related to the trademark use.
The concept of use is of fundamental importance under the Trademarks Act since rights are determined by it. Notwithstanding that an application need not say anything about use, subsection 30(1) of the Act provides that a person may apply for the registration of a trademark regarding 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.
A registration gives to the owner the exclusive right to the use of the mark in Canada regarding the goods or services set out in the registration. Use must be shown in order to maintain a registration which is the subject of section 45 proceedings. A plaintiff must show it has used its mark and the defendant has used this mark or a confusing mark to be successful in an action for infringement.
A brand owner must understand and comply with the requirements relating to trademark use to protect the brand name under the Act. The Act sets specific rules concerning what is use for goods, services and exported goods which can be restrictive, particularly for goods. In addition, because of the potential impact of section 45, a brand owner should audit and maintain records that show trademark use.
Section 4 provides that a trademark is deemed to be 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 deemed to be 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 packages in which they are contained is, when such goods are exported from Canada, deemed to be used in Canada in association with such goods.
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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.