Congratulations! You have successfully registered your trademark in Canada. This gives you several advantages, including a presumption that the trademark is valid across the nation even if you are not carrying on business in all 10 provinces and 3 territories. The owner of a registered trademark also enjoys other advantages including the exclusive right to use the trademark in Canada and ease of enforcement against infringers, both online and in the bricks-and-mortar world.
Now that your trademark is registered, can you file the registration certificate away in a drawer to collect dust (or more likely, on a server to languish in the digital netherworld)?
While many owners of registered trademarks do just that, failing to take steps to proactively maintain the trademark registration can result in the weakening of the registration, in some cases to the point where the trademark will be struck from the register altogether.
A trademark registration is presumed to be valid, but that presumption can be attacked. The validity of a registration is most commonly at issue in situations where the trademark may no longer be used (either at all, or in the form in which it was registered), or in situations where the trademark owner has permitted others in the marketplace to use similar marks without attempting to enforce its rights against them.
Proceedings attacking a trademark registration for non-use can arise when another party (often a competitor) wishes to use or register an identical or similar mark for identical or similar products/services. If a prior trademark registration is blocking them from being able to do so, they can investigate the marketplace to find out if the owner of earlier registration has been using the trademark with the products/services listed in the registration. In the absence of such use, the earlier registration can be struck. Non-use can occur if the trademark has changed in a way that makes it a substantial variation from what was registered, as is sometimes the case with logos or other marks with graphic elements that change over time. The rule is “use it or lose it”.
In other cases, a trademark registration can be jeopardized where an owner is not vigilant about enforcing its rights against others. If non-related entities are permitted to use marks that are arguably confusingly similar to that of the trademark owner, the registration becomes vulnerable to being struck for lack of distinctiveness. This means that the registration can no longer function to distinguish the goods/services of the trademark owner from those of others due to the proliferation of confusingly similar marks.
With all this in mind, here are some tips for maintaining your Canadian trademark registrations:
1. Maintain records showing how the trademark is being used. Do this consistently by keeping copies of packaging, containers, invoices, and digital records (such as screenshots) of websites and social media accounts where the mark may appear, together with the date. Keeping an archive will mean you are well-armed for any attacks based on non-use of the mark.
2. Ensure that proper licensing agreements are in place. In many instances, the entity using the trademark is different from the entity that owns the trademark. This occurs, for example, with holding or parent companies and operating entities; franchisors and franchisees; and merchandising or sponsorship arrangements. Under such circumstances, it is essential for the trademark owner to be able to demonstrate that they exercise sufficient control over the use of the mark. Such control provisions should be part of a trademark license agreement. If a trademark owner cannot prove that the use of the mark is sufficiently controlled by them, the trademark registration can be invalidated based on loss of distinctiveness.
3. Regularly audit your trademark portfolio. Consider whether the marks are being used in the same form in which they were registered, with the same products/services. If there are variations, consider whether the variations need to be separately registered and/or whether additional registrations should be sought to cover any new products/services.
4. Monitor the marketplace and the database of the Canadian IP Office so that you can be proactive in enforcing your rights against infringers and other entities who may be filing applications for similar marks and/or using similar marks. Online monitoring tools exist, and your Canadian trademark professional can assist with finding and implementing a solution tailored to your needs.
Hoffer Adler LLP provides practical and cost-effective legal assistance about all aspects of trademarks and brand management, including trademark selection, registration and maintenance. We also represent clients before the courts and the Trademark Opposition Board in enforcing or defending your trademark rights. If you have any questions about a trademark or brand management matter, we would like to hear from you.