Trade-Marks Examination Manual (page 8 of 55)
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II.5.6 Naming Date of First Use or Making Known — Paragraphs 30(b) or (c)M
Consistency in the classification and grouping of wares and services into classes is extremely important as regards the date of first use of those goods. When an applicant seeks to register a trade-mark that is in use in Canada or which has been made known, it is advantageous to set down the earliest date of use or making known which can be substantiated in association with the wares or services falling within each general class.
This practice enables the applicant to extend the statement of wares or services at any time in accordance with paragraph 41(l)(c), and, as long as the statement is for wares or services of the same general class, the applicant may claim the date of first use as specified for the general class in the initial registration. See sections II.7.1.2 and II.7.2.2 of this manual for details.
II.5.6.1 Use of a Trade-mark
The concept of use is important in order to establish a person's right to registration of a trade-mark and to ensure maintenance of that registration once obtained. See paragraph 18(1)(c) and section 45. Section 2 defines "use" in relation to a trade-mark to mean "any use that by section 4 is deemed to be a use in association with wares or services."
Subsection 4(1) states that "a trade-mark is deemed to be used in association with wares if, at the time of the transfer of the property in or possession of the wares, in the normal course of trade, it is marked on the wares themselves or on the packages in which they are distributed or it is in any other manner so associated with the wares that notice of the association is then given to the person to whom the property or possession is transferred."
As the words "normal course of trade" imply, the use must be by way of a normal commercial transaction.
This provision requires that, at the time of the transfer of the property in or possession of the wares in the normal course of trade, the trade-mark be marked on the wares or on their packaging or be in any other manner so associated with the wares that notice of the association is then given to the person to whom the property or possession is transferred.
See the following cases:
- Gordon A. MacEachern Ltd. v. National Rubber Co. Ltd. (1963), 41 C.P.R. 149.
- Union Electric Supply Co. Ltd. v. Registrar of Trade Marks (1982), 63 C.P.R. (2d) 179.
The word "trade" in subsection 4(1) contemplates some payment or exchange for wares supplied. Free distribution of promotional material or advertising gimmicks displaying the mark may not be considered trade use.
See the following cases:
- C.I.S. Ltd. v. Sherren (1978), 39 C.P.R. (2d) 251 at pp. 257-258.
- Joseph E. Seagram & Sons Ltd. v. Corby Distilleries Ltd. (1978), 42 C.P.R. (2d) 264 at pp. 267-268 following Hospital World Trade Mark [1967] R.P.C. 595 at pp. 598-599.
- Ports International Ltd. v. Registrar of Trade Marks (1983), 79 C.P.R. (2d) 191 at p. 193.
Subsection 4(2) states that "a trade-mark is deemed to be used in association with services if it is used or displayed in the performance or advertising of those services."
This implies that services are in fact being provided or offered in Canada. Consequently services that are advertised in Canada must actually be performed in Canada.
See the following cases:
- Porter v. Don the Beachcomber (1966), 48 C.P.R. 280 at p. 287
- Marineland Inc. v. Marine Wonderland and Animal Park Ltd. (1974), 16 C.P.R. (2d) 97 at p. 109.
There is no definition of "services" in the statute. Consequently, the statute makes no distinction between primary, incidental or ancillary services. From the case law it would seem that as long as some members of the public — some consumers or purchasers — receive a benefit from the activity, it is a service.
See the following cases:
- Kraft Ltd. v. Registrar of Trade Marks (1984), 1 C.P.R. (3d) 457.
- Carling O'Keefe Breweries of Canada Ltd. - Les Brasseries Carling O'Keefe du Canada Ltée trading as Carling O'Keefe Breweries v. Anheuser-Busch, Inc. (1985), 4 C.P.R. (3d) 216.
Subsection 4(3) states that "a trade-mark that is marked in Canada on wares or on the packages in which they are contained is, when the wares are exported from Canada, deemed to be used in Canada in association with those wares."
This provision requires that the trade-mark be affixed in Canada to the wares or their packaging when the wares are exported from Canada.
It has been stated that in the context of the Trade-marks Act as a whole, the words "exported from Canada" must be taken to mean "sent from Canada to another country in the way of commerce," or "transported from Canada to another country in the course of trade."
See the following cases:
- Molson Companies Ltd. v. Moosehead Breweries Ltd. (1990), 32 C.P.R. (3d) 363 at pp. 372-373.
- National Sea Products Ltd. v. Scott & Aylen (1988), 19 C.P.R. (3d) 481.
Where wares and services are stated to be used in association with a trade-mark, the examiners may, upon examining the application and material filed, be led to the inference that the mark is not actually being used as a trade-mark or is being used as a trade-mark, but not as stated in the application. If, for example, an application is filed for a trade-mark based upon use in association with the wares "rakes" and for the services of promoting the sale of such rakes, the examiners should enquire whether the use of the mark in association with the services complies with subsection 4(2).
In the same manner, an application may be filed for use of a trade-mark in association with restaurant services. If the same application contains a statement of use of the mark applied for in relation to menus and serviettes, the examiners should inquire if the applicant sells menus and serviettes in the normal course of trade in association with the mark applied for. If the applicant is not offering the wares for sale in the normal course of trade, the claim of use of the mark in association with wares should be deleted.
Additionally, an applicant may apply for wares such as a letterhead, business cards or signage, but, although the trade-mark may be displayed on these items, they are not likely to be for sale to the public. Accordingly, the examiners should question whether such use falls within the parameters of "use" as described in section 4 of the Trade-marks Act.
II.5.7 Applicant's Statement of Claim of Entitlement — Paragraph 10 of Form 1 — Paragraph 30(i)
A final consideration is whether or not the applicant is satisfied "that he is entitled to use the mark in Canada in association with the wares or services described in the application." This can be looked at as a type of contract between the applicant and the public, establishing that all information and supporting evidence, including revisions or additions of same, have been submitted in good faith, and that the application as it stands is approved by the applicant. The examiners can then proceed with the examination of the mark.