A recent decision of the Federal Court clarifies when the distribution of samples of products is use of the trademark.

Trademark Use

The Trademarks Act provides specific closed definitions of what is use in association with goods and services. Both definitions incorporate the requirement that the trademark be used to distinguish the goods or services of the trademark owner from goods or services of others.

A trademark is deemed to be used in association with goods if, at the time of transfer of property in or possession of the goods, in the normal course of trade it is marked on the goods themselves or on the packages in which they are distributed that notice of the association is then given to the person to whom the property or possession is transferred.

Section 45 Proceedings

Section 45 of the Act provides a summary procedure for removing "dead wood" from the Register.

Once proceedings are instituted the registered owner has three months within which to furnish an affidavit showing, with respect to each good specified in the registration, whether the trademark was in use in Canada at any time during the three-year period immediately preceding the date of the notice and, if not, the date the mark was last in use and the reason for the absence of such use since such date.

The Facts

Estee Lauder Cosmetics Ltd. ("Estee") owns the trademark ENLIGHTEN for use in association with "face makeup". The Registrar of trademarks issued a notice under section 45 requiring Estee to show the trademark was in use during the period between July 28, 2011 and July 28, 2014. Estee filed an affidavit stating that use of the mark was discontinued in 2009 but that Estee planned to reintroduce the mark in early 2013 with a "ship to retailer" date of September 2014 and an "on counter" sale date of October 2014.

The Hearing Officer found that Estee had provided no evidence on when ENLIGHTEN branded goods were delivered to a shipper. As a result it was found that Estee had not established any use and the registration was expunged.

Estee appealed from this decision and filed additional evidence. The additional evidence consisted of a further affidavit setting out more details about sale of goods to retailers and distributing samples. To make a long story short Estee could not show that ENLIGHTEN branded goods were shipped during the period to demonstrate "use".

However, the result was different concerning the samples. There was little evidence concerning samples before the registrar but the additional evidence clarified that samples were provided to retailers during the relevant period to generate sales. Case law has established the distribution of samples will be evidence of use only if there are later sales of goods in issue. Since Estee showed that it obtained orders for the goods after the distribution of the samples this established use of the mark.

Comment

Estee came close to losing its registration just as it was proceeding to re-launch its brand. However, it was saved because of the distribution of the samples. The case emphasizes the importance, from the brand owner's viewpoint, of ensuring that trademark registrations are supported by use.

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