A trademark is used in association with goods, according to Section 4, if, at the time of transferring the property in or possession of such goods, it is marked on the goods themselves or on the packages in which they are distributed or it is in any other manner so associated with the goods that notice of the association is then given to the person to whom the property or possession is transferred.
If a trademark is used or shown during the provision or marketing of services, it is considered to be utilized in connection with such services.
When goods are exported from Canada, a trademark that is registered there is used in Canada to identify those goods. This trademark may also be registered on the packaging in which the goods are packaged.
These provisions also include the definition of a trademark and the need that it be utilized to differentiate between products or services that are produced, sold, leased, hired, or provided by the brand owner and those that are produced, sold, leased, hired, or provided by third parties.
Two things must be proven in order to demonstrate the “use.” First, was the trademark connected to the products or services? Second, was the mark utilized as a trademark to separate or identify the trademark holder’s goods from those of third parties?
A trademark must be used, not just a simple general or descriptive term or name. A trademark registration may be invalid because the mark is no longer distinctive if it becomes so well-known that customers refer to the products or services in question by it.
To be considered “usage” of the trademark, the text or presentation of the trademark often has to be set apart from the nearby text. This implies that unless the mark is differentiated from the surrounding language, usage in an email address or as part of a company name will not constitute trademark use.
In accordance with the Act’s provisions, there are several fundamental business-oriented trademark usage guidelines that must always be followed:
- Whenever possible, add a trademark to a generic term that characterizes a good or service;
- A specific trademark should be accurately and consistently reproduced so that customers see it, in the same manner, each time they see it;
- The use of a trademark notice is permissive but prudent;
- A trademark should always be distinguished from surrounding text by capital letters or the like;
- It is not advisable to utilize variations or abbreviations of a trademark without first weighing the implications for the brand and getting particular protection; and
- For each good or service, the mark is registered with, accurate sales records should be kept of the sales or services supplied in relation to the mark. This will allow the brand owner to demonstrate that the mark is being utilized.
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