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Trade-Marks Guide (page 9 of 13)
Use in Canada (section 45 proceedings)
Another responsibility of the owner is to use the trade-mark in Canada. If the trade-mark is not in use, the registration is liable to be expunged from the Register of Trade-marks by either the Registrar of Trade-marks or the Federal Court. Summary expungement proceedings may be instituted by the Registrar, either on his or her own initiative at any time during the life of the registration, or at the request of a third party upon payment of the prescribed fee, after three years from the date of the registration. The procedure begins when the Registrar issues a notice to the registered owner asking him or her to provide evidence showing use of the trade-mark in Canada during the preceding three years or proof of special circumstances excusing non-use. Failure to reply to the Registrar's notice will result in expungement of the trade-mark registration.
Once the Registrar has received the necessary evidence, the registered owner and the requesting party have an opportunity to submit written arguments and to make representations at an oral hearing. After a final decision to expunge, amend, or maintain the registration is handed down, it may be appealed to the Federal Court of Canada.
In view of the complicated nature of these proceedings, parties are advised to use the services of a registered trade-mark agent.
For more information, you may visit the the web page on section 45 proceedings, or call the Trade-marks Opposition Board (TMOB) directly at 1-819-997-7300 or toll-free at 1-866-997-1936 and ask to be transferred to TMOB.
Transfers
A trade-mark is a form of property. You can sell, bequeath, or otherwise transfer your rights to this trade-mark to another party through a transaction known as an “assignment.” In order to avoid ownership disputes, you should formally notify the Office of the Registrar of Trade-marks of changes in ownership.
The Office should also be informed of other transactions affecting ownership of a trade-mark such as a change of name or business mergers.
Marking requirements
Canada's Trade-marks Act does not include any marking requirements. However, the following symbols are commonly used by trade-mark owners to indicate registration:
- R (registered)
- TM (trade-mark)
- SM (service mark)
- MC (marque de commerce)
Note with respect to precious metals: The Precious Metals Marking Act, which applies to trade-marks registered in Canada, states that you must file a trade-mark application for the trade-mark that you use on the goods that you sell if you wish to stamp a quality mark, for example, “10K gold,” on your goods. The quality mark itself is not mandatory.
Policing your trade-mark
It is your responsibility to monitor the marketplace and to take legal action if you find that someone has used your registered trade-mark without permission, or if you come across a trade-mark or a trade name that is confusing with your mark.
Preventing imitation by competitors is not the only reason for policing a trade-mark. If your business is successful, your mark may be in danger of becoming a generic term. For example, if consumers start saying “North Pole” when they mean any ice cream, in the same way that the trade-mark “zipper” is now used to denote all slide fasteners, your trade-mark may no longer be distinguishable from others.
