Trademarks: Use Them or Lose Them?

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The Canadian Trademarks Act has undergone the most dramatic change in recent history. Canada had not been consistent with some of the international treaties governing trademark practice. The goal was to make Canadian trademarks practice more consistent with those practices in other countries. Changes include adopting a class system to group use descriptions, a class based fee structure, dropping use requirements from the application process, and new types of trademarks. Some of these changes will make things easier, some will make it more difficult and costly.

This is one of a series of posts about changes to trademarks coming on June 17, 2019. Last time we discussed the introduction of the Nice classification system and we’ve also covered the new types of trademarks and the new requirements to prove distinctiveness for your mark.

Change #4: Declarations of use disappear

Applicants will no longer need to declare a date of first use of the mark for all the listed uses, or declare that the mark has been used before registration. Use is still an important concept to keep a mark alive – it just won’t be necessary to mention it on application.

What this means for you.

Applications will become easier because use won’t be an issue. No longer will registrations be held up waiting for the mark to be used on some things listed in the use description. But because details of use dates won’t be on the registry, it may lead to more oppositions, non-use cancellation proceedings, and litigation because the facts surrounding use won’t be clear. Currently the use information on the registry can be valuable information to know.

It will be more important than ever to be able to prove use of a trademark. Registrants should keep ongoing records of use of their trademarks relating to all the items in the use list. That would include web pages, images of products and packaging, advertising material, invoices to suppliers of marketing material and packaging, standard invoices – in other words, anything that the mark appears on. It is also important to show dates, volumes, sales figures, and geographic reach.

The changes to the Act will also make it possible to divide applications and complete registration for some uses but not others. More on that next week. Subscribe to our Top Ten in Tech Law newsletter to be sure to catch the rest of this series.

If you're concerned that these changes might have an impact on your business, we recommend that you contact your trademark lawyer today or contact us for a no obligation consultation.


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