The old dictum "use it or lose it" has been applied
countless times to trade-mark law (...and French as a second
language) for the very good reason that it neatly sums up the
ongoing requirement to put registered marks into actual
commercial use in order for trade-mark rights to be maintained. A
registered trade-mark is not a guaranteed ironclad bundle of
rights. It is vulnerable to an attack (usually by a competitor)
based on non-use.
In Canadian trade-mark law, these attacks are known as
Section 45 proceedings. As the court recently summed it up:
"Unlike other pieces of intellectual property, if a trade-mark
is not used, it may be expunged from the register."
Under Section 45 of the Trade-Marks Act, the registered
owner of a trade-mark can be compelled to provide evidence that the
trade-mark was in use in Canada at any time during the previous
three years. No evidence, no trade-mark.
In the recent case of Medos Services Corporation v. Ridout and Maybee
LLP, 2013 FC 1006, the court reviewed a Section
45 challenge to the mark MEDOS. The trade-mark owner asserted its
rights by tendering evidence such as various bills, receipts and
correspondence, none of which convinced the court.
The burden on the trade-mark owner is not very high: The
proceeding is "simply an opportunity for the registered
owner to show, if he can, that his mark is in use or if not, why
Invoices or receipts which do not show the mark are of no use
in Section 45 proceedings. The evidence must show
"use" of the registered mark for sales of
the specific products or services listed in the
It is not enough to show correspondence with a supplier or
customer which might lead to future sales. There must be
evidence of actual sales.
The court said: "Evidence of use can take the form of a
single commercial transaction in the ordinary course of
Keep track of your trade-mark use and maintain accurate records.
The well-prepared trade-mark owner will be able to fend off a
Section 45 challenge with relative ease. The unprepared owner will
have a much harder time, and as in the MEDOS case,
may face expungement of the mark.
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.
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The Canadian Intellectual Property Office has issued a report entitled IP Canada Report 2016, discussing trends in IP use domestically, and by Canadians abroad, based on analysis of CIPO's internal data and those collected by the World Intellectual Property Organization.
The value of reliance on a trade-mark registration, as opposed to prior use, stands out sharply in the recent Federal Court of Appeal case of Pizzaiolo Restaurants Inc. v. Les Restaurants La Pizzaiolle Inc. ( 2016 FCA 256 October 28, 2016).
This is an appeal from the Federal Court's decision setting aside the Registrar of Trade-marks decision to the extent that it dismissed the applicant's opposition regarding the mark PIZZAIOLO and Design.
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