In Canada, even if you have applied for your trademark and obtained a certification of registration, there is still more to do to keep your trademark. From the date of registration, you have three years to use your trademark. If you fail to do so, your registration might be expunged.
How does a trademark owner "use" a trademark?
"Use" is described in the Trademarks Act:
- When it comes to merchandise, the trademark must appear on the actual product or its packaging at the time it is transferred in the normal course of trade.
- For those in the service industry, a trademark must be displayed while performing the services or displayed in advertisement of the services.
Recently, the company that owns the "LE DELIZIE ZARA" trademark and sells and distributes Italian food products under that brand in Europe, the Middle East, and North and South America had its trademark registration challenged on the basis that it was not "using" its trademark in Canada. As a result, the company was required to file evidence with the Trademarks Opposition Board to show "use" of its trademark.
Unfortunately, the evidence filed by the company was excluded on an administrative technicality, and the Registrar expunged the trademark registration.
The company appealed the Registrar's decision to the Federal Court.
In its appeal to the Federal Court, the company resolved the administrative technicality issue. The Federal Court had to consider whether "use" had been established. Here, the trademark registration is for "LE DELIZIE ZARA," however, the trademark appears on the packaging in the following manner:
The mark as it appears on the packaging shows the use of two separate trademarks: "LE DELIZIE" and "ZARA" rather than use of the mark as a whole.
Is the use of the mark on the packaging too different from the mark as registered?
No. A trademark owner has the right to use the words in its mark in different font, styles, and colour. The Federal Court held that the trademark had been preserved so that the mark as used maintains its identity and remains recognizable as the registered mark.
The Federal Court set aside the Registrar's decision and directed the Registrar to maintain the trademark registration.
As a trademark owner, you may be able to breathe a sigh of relief knowing you can display your mark creatively; however, such creativity might still expose you to a registration challenge. Be creative, but be safe, and always consult a trademark agent.
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