“Use” within the context of trademarks is critically important, for two major reasons:

• A trademark, whether registered or unregistered (common-law), cannot exist without use; and
• Use establishes the “priority date.”

Meaning of ‘Use’ For Wares

Use of a trademark on wares occurs when the trademark is associated with the wares at the time of its sale or delivery. Putting your trademark on a tag or label attached to the ware, or its container, is the usual and best way of establishing ‘use’ of the trademark. There are also other ways of establishing use, but these depend very much on the particular circumstances involved. Advertising does not usually qualify as trademark use for wares.

Use of a mark as part of a corporate name, or simply as a decoration on an invoice, letterhead or the like, does not qualify as trademark use in respect of wares.

Meaning of ‘Use’ for Services

A trademark is “used” if it is displayed at the place where the services are provided. The services themselves must be delivered by the owner of the trademark, or by a licensee operating under a proper license.

Use for services may also occur where the trademark is used in association with the advertising of services. Thus use of a trademark on a store-front sign, or on a newspaper ad, etc., could qualify as trademark use in respect of services.

Proposed Use

It is possible to file a trademark application based on “proposed use.” The procedure is basically the same as a regular application; however, before receiving a registration you must both “use” the trademark and file a Declaration of Use, indicating that you have started using it.

Adoption of a Trademark

A trademark belongs to the first business that “adopts” the mark to identify its goods or services. A mark may be “adopted” in several ways, including:

• Goods bearing the mark are sold, or services are performed, in association with the mark; OR
• A “proposed use” application is filed; OR
• The mark has become “well known” across Canada by reason of “spill-over” advertising on radio or TV or through magazines. For example, a U.S. firm advertising its product on a major television network, which “spills over” into Canada by its transmission signals, may well acquire trademark rights in Canada.

The right to have a trademark registered generally belongs to the first person to adopt a mark in a particular line of business. Even if the first user does not get a registration, they continue to have the right to get it. If someone uses the trademark later, and obtains a registration, it is still the first user who has the right to register. The first user can cause the registration of the second user to be cancelled. However, this situation changes five years after registration, with the second user henceforth being entitled to the registration over the first user, provided the first user has not sought cancellation of the second user’s registration.

 

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