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
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
2. Maintain records evidencing use of the
Evidence of use of a trade-mark may be important for disputes
relating to that trade-mark, such as in a request for
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
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
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.
A recent Saskatchewan Court of Queen's Bench decision allowed a court-appointed receiver to sell and transfer intellectual property rights free and clear of encumbrances, finding that a license to use improvements of an invention was a contractual interest and not a property interest.
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