Use has long been an integral component required to obtain, maintain and enforce registered trademarks in Canada.
Prior to June 17, 2019, applications for registration of a trademark filed in Canada required the identification of one or more basis of registration typically selected from proposed use in Canada, actual use in Canada, or registration and use in a foreign country of origin. If an application was based on proposed use, registration would not be granted until a declaration of use in Canada had been submitted. After June 17, 2019 an applicant no longer needs to identify a basis of registration.
Has Canada done an about face and eliminated use as a requirement for trademark protection in Canada?
A number of commentators have suggested that “use” is no longer required to obtain a valid trademark registration in Canada.
While it may appear at first glance to be the case, closer examination reveals that, while Canada has streamlined its registration process, “use” remains a requirement to maintain and enforce trademark rights in the country. Also, in some cases, use and the date of first use become an important consideration in the registration process.
under the new amendments, What is a trademark?
Under the amendments to Canada’s Trademarks Act (the “Act”), which come into force June 17, 2019, a trademark is defined in Section 2 of the Act as follows:
2 “trademark” means
(a) a sign or combination of signs that is used or proposed to be used by a person for the purpose of distinguishing or so as to distinguish their goods or services from those of others; or,
(b) a certification mark.
While an applicant is no longer required to identify use or proposed use in the application for registration, the definition of trademark requires that the applicant have used or propose to use the trademark as of the filing date. Further, Section 30 of the Act indicates that:
30 (1) A person may file with the Registrar 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 the applicant has no use as of the filing date nor a bona fide intent to use the trademark, they are not entitled to submit an application. Section 38(2) of the Act reinforces this in setting out the potential grounds of opposition to include:
38 (2) (a) that the application does not conform to the requirements of subsection 30(2), without taking into account if it meets the requirement in subsection 30(3);
(a.1) that the application was filed in bad faith; …
(e) that, at the filing date of the application in Canada, the applicant was not using and did not propose to use the trademark in Canada in association with the goods or services specified in the application; or …
How the Registrar and the Canadian Courts will interpret and apply these grounds of opposition remains to be seen.
Use and registrability
Use may also be a consideration in determining the registrability of a trademark. The Act in Section 12 sets out requirements for registrability of a trademark as follows:
12 (1) Subject to subsection (2), a trademark is registrable if it is not
(a) a word that is primarily merely the name or the surname of an individual who is living or has died within the preceding thirty years;
(b) whether depicted, written or sounded, either clearly descriptive or deceptively mis descriptive in the English or French language of the character or quality of the goods or services in association with which it is used or proposed to be used or of the conditions of or the persons employed in their production or of their place of origin;
(c) the name in any language of any of the goods or services in connection with which it is used or proposed to be used;
(d) confusing with a registered trademark;
(e) a sign or combination of signs whose adoption is prohibited by section 9 or 10; … and …
Sections 12(2) and 12(3) further provide:
12 (2) A trademark is not registrable if, in relation to the goods or services in association with which it is used or proposed to be used, its features are dictated primarily by a utilitarian function.
(3) A trademark that is not registrable by reason of paragraph (1)(a) or (b) is registrable if it is distinctive at the filing date of an application for its registration, having regard to all the circumstances of the case including the length of time during which it has been used.
Under Section 12, use is relevant in assessing if a mark that is otherwise unregistrable under Sections 12(1)(a) or (b), has become distinctive at the filing date and therefore entitled to registration under Section 12(3) and/or confusing with a registered trademark under Section 12(1)(d). Looking at the question of registrability under Section 12(1)(b), Section 32(1) of the Act provides jurisdiction for the Registrar to assess if a mark is inherently distinctive and require the applicant to provide evidence of acquired distinctiveness as of the filing date.
32 (1) An applicant shall furnish the Registrar with any evidence that the Registrar may require establishing that the trademark is distinctive at the filing date of the application for its registration if any of the following apply:
(a) the applicant claims that their trademark is registrable under subsection 12(3);
(b) the Registrar’s preliminary view is that the trademark is not inherently distinctive;
(c) the trademark consists exclusively of a single colour or of a combination of colours without delineated contours;
(d) the trademark consists exclusively or primarily of one or more of the following signs:
(i) the three-dimensional shape of any of the goods specified in the application, or of an integral part or the packaging of any of those goods,
(ii) a mode of packaging goods,
(iii) a sound,
(iv) a scent,
(v) a taste,
(vi) a texture,
(vii) any other prescribed sign.
While the Trademarks Office has not yet issued a practice notice on what evidence is required to establish if a trademark is distinctive at the filing date of the application, it would seem that only a trademark that has been in use in Canada prior to filing is going the meet the standard. Until such time as the Registrar provides further guidance, reference can be made to the practice in existence prior to June 17, 2019 regarding establishing:
A. that a distinguishing guise had been so used in Canada by the applicant or his predecessor in title as to have become distinctive at the date of filing an application for its registration; and/or ,
B. the evidentiary requirements previously required to establish that a trademark which is not prima facie registrable under the provisions of Section 12(1)(a) or (b) has been used in Canada so as to have become distinctive at the date of filing of the application in Canada, pursuant to Section 12(2) (now Section 12(3)).
Use and entitlement
Another issue during examination where use is a consideration relates to who is entitled to registration. The person who is entitled to registration is defined by Section 16 of the Act:
16 (1) Any applicant who has filed an application in accordance with subsection 30(2) for the registration of a registrable trademark is entitled, subject to section 38, to secure its registration in respect of the goods or services specified in the application, unless at the filing date of the application or the date of first use of the trademark in Canada, whichever is earlier, it was confusing with
(a) a trademark that had been previously used in Canada or made known in Canada by any other person;
(b) a trademark in respect of which an application for registration had been previously filed in Canada by any other person; or
(c) a trade name that had been previously used in Canada by any other person.
Use of a trademark and the date of first use is central to determining, as between entities, who is entitled. Section 6 sets out when trademarks and/or trade names are confusing:
6 (2) The use of a trademark causes confusion with another trademark if the use of both trademarks in the same area would be likely to lead to the inference that the goods or services associated with those trademarks are manufactured, sold, leased, hired or performed by the same person, whether or not the goods or services are of the same general class or appear in the same class of the Nice Classification.
(3) The use of a trademark causes confusion with a trade name if the use of both the trademark and trade name in the same area would be likely to lead to the inference that the goods or services associated with the trademark and those associated with the business carried on under the trade name are manufactured, sold, leased, hired or performed by the same person, whether or not the goods or services are of the same general class or appear in the same class of the Nice Classification.
(4) The use of a trade name causes confusion with a trademark if the use of both the trade name and trademark in the same area would be likely to lead to the inference that the goods or services associated with the business carried on under the trade name and those associated with the trademark are manufactured, sold, leased, hired or performed by the same person, whether or not the goods or services are of the same general class or appear in the same class of the Nice Classification.
Use in determining Trademark Confusion
In assessing confusion, Subsection 6(5) sets out the criteria to be considered:
6 (5) In determining whether trademarks or trade names are confusing, the court or the Registrar, as the case may be, shall have regard to all the surrounding circumstances including
(a) the inherent distinctiveness of the trademarks or trade names and the extent to which they have become known;
(b) the length of time the trademarks or trade names have been in use;
(c) the nature of the goods, services or business;
(d) the nature of the trade; and
(e) the degree of resemblance between the trademarks or trade names, including in appearance or sound or in the ideas suggested by them.
Use and the extent of use can be an important consideration in assessing confusion between trademarks and/or trade names. If not addressed by the Registrar, the issue of entitlement can arise in Opposition proceedings prior to registration.
The grounds of Opposition in Section 38(2) include, in addition to the ones noted earlier:
38 (2) (f) that, at the filing date of the application in Canada, the applicant was not entitled to use the trademark in Canada in association with those goods or services.
Infringement And use
The amendments to the Act require that in any proceedings for infringement or depreciation of goodwill commenced within three years of the date of registration, the owner is not entitled to relief unless the trademark was in use in Canada at any time during that period or special circumstances exist that excuse the absence of use in Canada during that period.
53.2 (1.1) If, within a period of three years beginning on the date of registration of a trademark, the owner of the registered trademark makes an application claiming that an act has been done contrary to section 19, 20 or 22, the owner is not entitled to relief unless the trademark was in use in Canada at any time during that period or special circumstances exist that excuse the absence of use in Canada during that period.
USE and trademark Maintenance
Finally in order to maintain a registration, the Act provides summary cancellation proceedings under Section 45 of the Act, available to either the Registrar at any time or third parties three years after registration, requiring the registered owner to show whether the trademark was in use in Canada at any time during the three-year period immediately preceding the date of the notice and, if not, the date when it was last so in use and the reason for the absence of such use since that date. If the Registrar is not satisfied there has been a showing of use, the registration of the trademark is liable to be expunged or amended if partial use is shown.
In Section 45 proceedings after June 17, 2019 the Registrar may, by order, award costs in a proceeding under this section.
As can be seen by the above discussion, while it is possible for an applicant on filing to not have to identify if use had commenced and the date of first use in Canada there are circumstances where use by the applicant or at least a bona fide intention to use the trademark as of the filing date will be in issue in order to establish the registrability of the mark and the applicant’s entitlement to registration. Post registration proper trademark use is vital to maintaining and enforcing the Registered Owner’s trademark rights.
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