The crux of one's rights in a trademark lies in use of the mark. Upon issuance of a trademark registration, we advise owners that it is important to use the trademark on an ongoing basis, as marks not used in Canada during a three-year period following registration may be vulnerable to expungement.
Often, trademark owners use their trademarks through related companies or subsidiaries. For such use to benefit the trademark owner, the use should be under license and the trademark owner must have control over the character and quality of the associated goods and services.
In a recent decision in Wheel Pros, LLC v. KTM Components GmbH, the Trademark Opposition Board held that use of a trademark by a licensed subsidiary enured to the benefit of the owner of the registration. In the affidavit evidence filed by the owner of the registration, the affiant swore that the owner exercised control over the character and quality of the associated goods. The party challenging the registration argued that the evidence did not sufficiently establish that the owner exercised control over the character and quality of the goods. The Board dismissed that argument, citing the Federal Court's decision in Empresa Cubana Del Tabaco Trading v. Shapiro Cohen, which held that owners "can clearly swear to the fact that they exert the requisite control". The Board concluded that the use by the licensed subsidiary enured to the benefit of the owner and the registration was maintained.
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.
