Does your organization have a Canadian trade-mark registration? If yes, your organization can do certain things to help maintain the benefits afforded by registration. The following are some general guidelines which, if followed, can help protect an organization's registered trade-mark rights.
1. Use the registered trade-mark every three years with the wares and services listed in the registration.
Under Canadian trade-mark law, a third party can request the Registrar of Trade-marks to cancel a registration if the owner cannot show use of the subject trade-mark in the preceding three-year period with any of the wares and services listed in the registration. If the owner can show use with some but not all of the wares and services, those wares and services with which the mark has been used will be maintained, while all others will be deleted.
2. Maintain records evidencing use of the trade-mark.
Evidence of use of a trade-mark may be important for disputes relating to that trade-mark, such as in a request for cancellation.
3. Avoid altering the trade-mark.
Modifications to a trade-mark may weaken and expose the trade-mark to attack for non-use or abandonment.
4. Use the trade-mark together with the generic name of the wares or services.
This can help prevent the trade-mark from becoming a generic term used to describe those particular wares or services. For instance, the trade-mark should be used as an adjective together with the generic name of the wares or services. For example, if you own the trade-mark STARLET and use it to sell bracelets to raise funds for children programs, do not say "Have you bought your STARLET?" to promote the sale of the bracelets. Use "Have you bought your STARLET bracelet?" instead. Use of the trade-mark as a noun may lead others to use the mark as a generic term to describe similar goods and services from other sources, which may result in the loss of trade-mark rights.
5. Use standard trade-mark markings.
Such markings include " (can be used for registered or unregistered trade-marks) or ® (can only be used for registered trade-marks). These markings distinguish the trade-mark from surrounding text or other trade-marks, and give notice to the world that ownership in the trade-mark is claimed, and that it is not intended to be a generic term.
6. Monitor the use of similar marks and names by others.
Use of confusingly similar marks and names by other parties can lead to the trade-mark becoming non-distinctive such that it does not distinguish the organization's goods and services from those of others. A non-distinctive trade-mark is considered a weak mark and subject to a narrower scope of protection, if any.
7. Establish written trade-mark licenses and control use of the trade-mark.
A written trade-mark license should be established with each party intending to use the trade-mark. Also, licensees should be required to display a notice which states the name of the owner of the trade-mark and that the trade-mark is used under license. An organization licensor should exercise control over the character and quality of the wares and services with which the licensees are using the mark in association.
8. Diarize the renewal date.
Trade-mark renewals need to be dealt with in a timely manner, namely, every 15 years from the date of registration.
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.
