Branding: use it or lose it

David Canton - for the London Free Press - September 30, 2006 Read this on Canoe

A trade-mark can be a valuable asset. A recognizable brand can boost sales and make products or services more easily recognizable to customers. But if you don't use your trade-mark, you can lose the registration.

According to the International Trade-mark Association, the average person sees or hears more than 1,500 trade-marks every day.

Success in the business world depends on presence in the marketplace -- the message and the image. Trade-marks establish the wares and services of a business and its reputation.

A trade-mark provides protection to the owner by ensuring the owner has an exclusive right to use it to identify goods or wares.

If a person or enterprise has a registered trade-mark, no one else is allowed to use it for the registered wares or services. If that person or enterprise fails to use its trademark in a timely fashion, it seems only appropriate that someone else may claim rights to and make use of it.

The Trade-marks Act provides that anyone who believes another party has failed to use their trade-mark with the listed wares or services during the last three years can apply to the trademarks office to have the trade-mark expunged. If this happens, the trade-mark essentially ceases to be a registered mark and any rights that registration brings are gone. It is then available to anyone wishing to register and use it.

A trade-mark is registered only for use with the wares or services listed in its registration. Expunging it may cancel the registration of the trade-mark as a whole or for just those wares or services that it is no longer being used for.

For example, if I have Brand X registered for breakfast cereal and for a restaurant, I might lose the registration for breakfast cereal, but keep it for the restaurant. That may be the case even if I sold breakfast cereal labelled Brand X for many years, but let it lapse for the last three.

Once a proceeding to expunge a trade-mark begins, the onus is on the registrant to prove by affidavit evidence, including samples of use, that it has been used within the last three years.

An exception is if a registrant can show a good reason why they have not used the trade-mark, they will not lose their rights to it.

In a recent case, the court decided it was reasonable to conclude that a vodka distiller from an emerging nation would be unfamiliar with Canadian alcoholic distribution requirements. The distiller mistakenly held off using its trade-mark while seeking certification. The court refused to expunge the unused trade-mark.