A Canadian trademark registered in association with goods must be used in "the normal course of trade".
Riches, McKenzie & Herbert LLP v. Cosmetic Warriors Limited, 2018 FC 63, considered whether Cosmetic Warriors' registered trademark, LUSH, was used in association with t-shirts in the normal course of trade. Cosmetic Warriors sold the t-shirts to employees for promotional purposes.
On the evidence, Justice Manson concluded that promotional use intended to generate goodwill in a separate business does not constitute use in the normal course of trade:
Where items (here, t-shirts) are sold at cost for promotional purposes to employees only, to generate goodwill in a different business (here, cosmetics), it is difficult to find how that type of sale can be said to be in the normal course of trade ... given the absence of profit, the promotional and de minimis nature of the sales to employees, and the fact that the Respondent is not normally in the business of selling clothing, the Registrar's determination that the sales were "in the normal course of trade" is unreasonable.
A Canadian trademark that is registered for use in association with goods that are only distributed for promotional purposes and without profit is potentially vulnerable. Trademark owners must carefully document evidence of use in the normal course of trade to repel such post-registration attacks.
About Norton Rose Fulbright Canada LLP
Norton Rose Fulbright is a global law firm. We provide the world's preeminent corporations and financial institutions with a full business law service. We have 3800 lawyers and other legal staff based in more than 50 cities across Europe, the United States, Canada, Latin America, Asia, Australia, Africa, the Middle East and Central Asia.
Recognized for our industry focus, we are strong across all the key industry sectors: financial institutions; energy; infrastructure, mining and commodities; transport; technology and innovation; and life sciences and healthcare.
Wherever we are, we operate in accordance with our global business principles of quality, unity and integrity. We aim to provide the highest possible standard of legal service in each of our offices and to maintain that level of quality at every point of contact.
For more information about Norton Rose Fulbright, see nortonrosefulbright.com/legal-notices.
Law around the world
nortonrosefulbright.com
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
