Section 4(1) of the Canadian Trade-marks Act (”TMA”) 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.” Moreover, a trademark is also used on wares in Canada if the trademark is marked on the wares or on the packages in Canada, and the wares are exported from Canada [see Section 4(2) TMA].
In order to establish and maintain your rights in a trademark, whether the mark is registered or unregistered, requires that you use the mark in association with wares and/or services. One advantage of the trademark registration system is that you are permitted to file an application based on proposed use of a trademark and your rights to that mark will commence on the date the application is filed, without having to show use of the mark. However, before the mark can be registered, you will need to use the mark in association with the applied-for wares and/or services, and sign a declaration to that effect. Also, to maintain the registration so that it may withstand challenges from third parties, you will need to continue to use the mark, at least periodically during each subsequent three year period.
Therefore, to use a mark in association with wares, you must actually sell the wares in the normal course of trade and the trademark must be marked on or directly associated with the wares. Advertising the wares in association with the mark is NOT sufficient.
Remember, register what you use and use what you register.
This means that any use of a trademark during the startup phase of a company, when no goods or services are being sold, does not count. Therefore, it is very important during this period that businesses apply to register any trademarks they intend to use once the business starts operating. The trademark application will ensure that your right to use the mark is reserved for at least three years until you develop some sales.
Finally, it is also very important that you control the use of your trademark by other market participants (clients, licensees, competitors, editors, etc). Quickly react to any improper use of your trademark by trademark explaining to offenders how to use the mark correctly, writing warning letters, cease and desist letters, etc.
Now, once you are selling your goods and providing services, how should you properly use your trademark to ensure that your rights in and to the mark are demonstrated and maintained? Keep in mind that a trademark is used for the purpose of distinguishing your goods and services from those of others. Therefore, it is important to use your mark in such a way that you create an association in the mind of the consumer, between your business, your trademark and your goods and/or services.
To do this, you need to educate the consumer by drawing attention to your trademark when they buy your goods or use your services. You should always use your trademark as a proper noun and set it apart from any surrounding text or design material. For example, when the words corresponding to your trade-mark appear in the text of a letter or in descriptive material in a catalogue or brochure, you should always set them off by placing them in all capital letters, such as COMBAT or some other stylized form such as COMBAT, that is different from the surrounding text. You should always follow your trademark by the generic term, such as COMBAT baseball bats. In addition, you should also mark the words with a raised ™ or a (TM) at the end. Once the trade-mark is registered, the (TM) may be replaced by the “R” in a circle ®.
If your trademark consists of ordinary English words and has the capability of being used in a descriptive sense, knever use it in that manner. For example, if your trademark is LEADING EDGE never say “Our company is at the leading edge of the software industry.” Such use may tend to dilute the distinctive nature of your trademark, diminishing its ability to distinguish your goods and services from those of others. Never alter a trademark or pluralize it or use it in the possessive form (unless the mark itself is possessive). Never use it as a verb or an adjective.
With respect to services, a trademark is deemed to be used in association with services if it is used or displayed in the performance or advertising of those services [see Section 4(2) TMA]. Hence, advertising is sufficient for services, however, the services must actually be available in Canada for such use to count.
In my last article I gave a brief primer on trademarks for small businesses. At the end of that article I made the following statement, “… it is important to remember that to maintain your rights, the trademark must always be maintained, protected, and correctly used. Your mark’s strength, and therefore its value, is directly linked to public perception. This is why I tell all my clients – register what you use, and use what you register.” In this article I will elaborate on that statement.
When your trademark appears on your letterhead, or on your website, or on signage in your place of business, or on any wares you sell in association with the trademark, you should also seek to set it off from any surrounding text or design material by using a different style or size of font and a different colour, if possible. Preferably, you should also mark your trademark in the same manner described above.
Related Topics: