How to “Use” Your Trademark
Remember that a trademark is something, usually a word, phrase or design, that identifies the products of a particular person, known as the owner of the mark. In Canada, an owner acquires and maintains trademark rights by “using” the trademark in Canada. If you have developed a trademark, and want to keep others from utilizing it, you need to “use” it. How do you do that?
If you are a service provider, the answer is usually straightforward. Displaying the trademark on or in your promotional and advertising material counts as “use”, and enables you to develop trademark rights.
If you sell goods that can bear a trademark - for example clothing, toys, tools, writing instruments, cars, or appliances - then you can “use” the trademark by displaying it right on the product.
Placing a trademark on your product packaging also counts as “use”; that works where the manufacturer or distributor supplies the container in which the product is displayed and sold (virtually every type of CPG – consumer packaged goods – falls in this category).
But what about goods that are sold loose or unpackaged? Purchasers of bulk foods, fuels, garden soils, and construction materials often take delivery of these using their own container (such as a gas or fuel tank), or none at all (soils and construction materials may simply be dumped at the delivery point). Here, the answer is a little more complicated. In these cases, the supplier can “use” its trademarks in association with the goods by displaying them so that purchasers perceive the trademarks when buying the goods or taking delivery. Shelf cards or POS (point-of-sale) material can play this role in a bulk food store. For a service station, a trademark is “used” when depicted on the signage at the pump island, and on the canopy and pylon/pole. Truck signage should work for home delivery of fuel, soils and construction material.
Advertising is an important means for sellers of goods to promote their products, but under the Canadian Trademarks Act, utilizing a trademark in advertising does not constitute “use” with goods. This is a trap for the unwary.
Display of a trademark in product information such as flyers and catalogues, and transactional documentation such as invoices often does not count as use. However, context matters – if these materials are available to purchasers when they purchase the product or take delivery, “use” may occur.
Each manufacturer, distributor, retailer and service provider should review its practices to ensure that it is “using” its trademarks. Otherwise, the owner’s rights to enforce its marks may be weakened, and registrations may be vulnerable to cancellation. If you have questions, please get in touch.
References
See for example Nissan Canada Inc. v. BMW Canada Inc., 2007 FCA 255, 60 CPR (4th) 181, available at the following link: http://canlii.ca/t/1s3b7.