Use It or Lose It – Importance of Use to a Trademark Owner

In order to maintain the validity of a Canadian trademark registration, the trademark must be used as registered. Trademark usage is what actually supports the ongoing validity of your trademark in the marketplace.

Use of a trademark in Canada in respect of products typically comprises actual sales of those products bearing the trademark. Specimens of such use would include commercial documentation or packaging sold along with the product or the product itself bearing the trademark. Use of a trademark in respect of services can comprise advertisement of those services to the public for sale.  It is no longer necessary to file specimens of use with the Canadian Intellectual Property Office, but in certain other countries including the United States it is necessary to file specimens of use showing the trademark as applied to the products or services in question.

Trademark owners who rely on licensed use by third parties to support their registrations also need to be sure to have appropriate license provisions in place so that use of the mark accrues to the benefit of the owner rather than the licensee.

Something else to keep in mind is the “creep” or morphing of trademarks which can take place over the years as marks are modernized or revisited by or during brand revisions. Modest, non-substantial modification of the trademark may not result in a sufficient departure to render the initial registration susceptible to cancellation but this is something to consider on an ongoing basis as a part of your brand monitoring.

From a business perspective it is important to implement some degree of ongoing trademark surveillance on your brand portfolio to ensure that sufficient use is being made and information gathered to support your trademark registrations – you don’t want to lose your rights at an inopportune moment because of a failure to use the trademark on an ongoing basis!