Trademark “use” in Canada: products

Introducing Trademark-land

Over the years, I’ve learned that, in approaching many areas of law, a good mental habit to adopt is to treat the area of law as being different from all other areas of endeavour. That is, in most cases, if you approach a particular area of law with what would otherwise be typical or ordinary beliefs, associations and connotations that you use (probably successfully) in operating the rest of your life, you’ll probably come to grief.

To emphasize that separation, I find it useful to refer to, say, trademark law as “Trademark-land”; always remembering that what applies in Trademark-land doesn’t (necessarily) apply elsewhere, and vice versa.

All of which is a long introduction to the topic of this post: the deceivingly simple, three-letter term called “use”.

In ordinary life, “use” is a common word, with no hidden or special meanings. “What’s the use of that?”, we say. Or, “can someone show me how to use the photocopier?”. And we immediately understand what the person means.

“Use” in Trademark-land

But in Trademark-land, “use” isn’t simple or straightforward anymore. In Trademark-land, especially for Canada, “use” has a special, narrow meaning. And failing to understand and act upon that meaning can make or break your trademark, especially if a competitor decides to attack your mark.

This is because, in Canada, a trademark’s life depends on its continuous “use” (in that special, Trademark-land meaning). If there is no “use” of your mark, then you can’t even get the mark registered in the first place. If your mark is registered, but you stop using the mark for three consecutive years, then anyone can ask the Trademarks Office to cancel your registration on a summary procedure (though you do get a chance to respond to any such request for cancellation).

In Canadian trademark law, for products, “use” is defined by a “when” test and a “what” test:

• The “when” test means that the relevant time is the moment when legal title to, or possession of, the products in question are transferred to a buyer, whether a wholesaler or the end customer.
• The “what” test has a few subdivisions:
  • The transfer of title or possession must take place in the ordinary course of trade. This means that the trademark owner needs some minimal level of commercial activity. Not a lot of activity, but more than a one-off situation created to get a trademark registered. Handing out free samples doesn’t count as “use”. It’s activity where an invoice or shipping documentation will be generated at some point.
  • The second aspect is that, at the time of this transfer, the mark (in the form applied for) must be somehow associated with the products being sold. The best way of doing this is to put the mark on the product label or on the packaging for the product. But if you can’t do either of those, then there is a catch-all provision of “otherwise associated”; one possible example being a point-of-sale display that contains the product in question.

In short, what the “use” test in Canada’s Trademark-land is looking for is a real sale to a real customer with the product bearing the mark somehow.

And don’t hide the mark in a tiny corner of your product. That may not be a sufficient marking. When the customer buys your product somehow they must perceive they are buying the product as a combination of your product and your mark. Otherwise, they might as well be buying the generic item from the discount bin.

Defensive Trademark Practice

In Canada, there’s no longer any requirement to file actual proof of “use” of one’s trademarks, at least during the application phase. Sure, for proposed use applications, one must file a declaration of use, but that document is just a few lines where the trademark owner asserts that they have in fact begun to use their trademark. Certainly the CIPO examiners don’t check behind the declaration.

But just because there’s no checking, don’t think that it means that a trademark owner should game the system. Filing a false declaration will result in the registration being void, and financial penalties can apply.

Therefore, the wise trademark owner will keep a file containing evidence of their first use of each trademark. Such a file might contain copies of the initial invoices that were issued when the products were sold; related shipping documents; even digital photographs of the product and the mark as the customer would have seen them at the time. From time to time, the trademark owner might want to update the file with those same kinds of documents. That way, the owner will be able to easily fend off any challenge to their registration for alleged non-use.

So welcome to Trademark-land. But learn its ways and customs if you want maximum protection for your Canadian trademark.