The old dictum “use it or lose it” has been applied countless times to trade-mark law (…and French as a second language) for the very good reason that it neatly sums up the ongoing requirement to put registered marks into actual commercial use in order for trade-mark rights to be maintained. A registered trade-mark is not a guaranteed ironclad bundle of rights. It is vulnerable to an attack (usually by a competitor) based on non-use.
In Canadian trade-mark law, these attacks are known as Section 45 proceedings. As the court recently summed it up: “Unlike other pieces of intellectual property, if a trade-mark is not used, it may be expunged from the register.” Under Section 45 of the Trade-Marks Act, the registered owner of a trade-mark can be compelled to provide evidence that the trade-mark was in use in Canada at any time during the previous three years. No evidence, no trade-mark.
In the recent case of Medos Services Corporation v. Ridout and Maybee LLP, 2013 FC 1006, the court reviewed a Section 45 challenge to the mark MEDOS. The trade-mark owner asserted its rights by tendering evidence such as various bills, receipts and correspondence, none of which convinced the court.
The burden on the trade-mark owner is not very high: The proceeding is ”simply an opportunity for the registered owner to show, if he can, that his mark is in use or if not, why not.”
Invoices or receipts which do not show the mark are of no use in Section 45 proceedings. The evidence must show “use” of the registered mark for sales of the specific products or services listed in the registration.
It is not enough to show correspondence with a supplier or customer which might lead to future sales. There must be evidence of actual sales.
The court said: “Evidence of use can take the form of a single commercial transaction in the ordinary course of business.”
Keep track of your trade-mark use and maintain accurate records. The well-prepared trade-mark owner will be able to fend off a Section 45 challenge with relative ease. The unprepared owner will have a much harder time, and as in the MEDOS case, may face expungement of the mark.