While all brand owners desire to protect their trademarks, many do not regularly create or maintain detailed records of their use of their marks. A best practice that may pay dividends for your business, and help to protect your trademark rights, is trademark record keeping. With a proper record keeping system in place, it should become easier to register your trademarks, maintain your trademark registrations and enforce your trademark rights.
When is evidence of trademark use required?
There are many instances during the trademark lifecycle when the Trademarks Office, an administrative body or a court may review evidence of trademark use. If that evidence has been diligently gathered and recorded, it may greatly improve your likelihood of success in registering your trademark or preventing others from infringing your rights, as the case may be.
Although evidence of trademark use is not generally required during the trademark application process in Canada, there are instances where such evidence may be required. For example, trademark examiners will request such evidence for non-traditional marks (e.g., 3D marks) or when the applied-for trademark is alleged to lack distinctiveness. The latter issue has become more prevalent over the past several years ever since examiners were empowered to refuse applications on the basis of “non-distinctiveness”. Thus, if your applied-for trademark consists of a geographical name or contains elements describing characteristics or qualities of the associated goods or services, be prepared to show how you have used the trademark before the filing date to establish the mark’s distinctiveness.
Even if an examiner does not request evidence of trademark use, you may have to file such evidence if someone opposes your trademark application. Strong, unequivocal, and well-organized evidence of trademark use may help to persuade the Trademarks Opposition Board that the trademark is registrable.
It is important to continue diligent record keeping even after your trademark is registered. Under Canadian practice, a trademark registration may be cancelled, or amended to remove goods and/or services, on the basis of non-use three years after registration. In such “cancellation” proceedings, the relevant period is the three-year period immediately preceding the date on which the proceeding is commenced. In the absence of exceptional circumstances excusing non-use, you must show use of the registered trademark during this period in order to maintain your registration, in whole or in part. Diligent record keeping of trademark use is critically important to defending these proceedings.
If your company ships its goods or offers its services outside Canada, it must keep records of its international business practices. Many Canadian brand owners that do business abroad apply to register their trademarks in foreign jurisdictions, including in the U.S., where, five years after registration, a registered trademark owner must file with the U.S. Patent and Trademark Office (USPTO) a declaration and specimens showing how the registered trademark is used in the U.S., failing which the registration will be cancelled. A separate declaration may be filed at this time to make the registration “incontestable”, so that it cannot be challenged for invalidity. Additionally, every ten years, trademark owners must renew their U.S. trademark registrations, and file specimens showing how their trademarks are used in the U.S. Maintaining comprehensive records of trademark use is also important to maintaining your U.S. trademark rights.
Finally, evidence of trademark use is also important to enforcing your trademark rights. In many cases, the nature and quality of the evidence that you file in a contentious proceeding will affect your likelihood of success. For example, if a competitor applies to register a confusing trademark, your demonstrating prior use of your mark in Canada may lead to the refusal of the competitor’s application. You may also wish to challenge a competitor’s use of a confusing trademark in a Canadian court. In such enforcement proceedings, evidence of trademark use may assist a claimant in establishing that (i) its trademark is recognized as such, and valid, (ii) its trademark is distinctive of its goods and/or services, (iii) it has developed a reputation and goodwill in the mark in the relevant geographical area(s), and/or (iv) it has used its mark in the relevant geographical area(s) since a particular point in time. Furthermore, a recent amendment to the Trademarks Act now requires owners of registered trademarks to show use of such marks before they may rely upon their registered rights in enforcement proceedings. Therefore, whether you are challenging a competitor’s application for, or unauthorized use of, a confusing trademark, your filing evidence of trademark use is necessary to best position yourself for success.
What does evidence of trademark use look like?
Section 4 of the Trademarks Act defines trademark “use” in Canada. For goods, a trademark is deemed to be used “if, at the time of the transfer of the property in or possession of the goods, in the normal course of trade, 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”. Therefore, a trademark owner should collect and catalogue, and maintain a database of, samples showing how the trademark has been displayed on its products, their packaging, on signage at its points of sale, and/or on its e-store and website, over time. Sample invoices, displaying the trademark itself and/or showing sales of the marked products over the years, complete with SKU numbers corresponding to the marked products, are also helpful.
For services, a trademark is deemed to be used “if it is used or displayed in the performance or advertising of those services” in Canada. Therefore, a trademark owner should keep detailed records of its brochures, pamphlets, papers, print and online advertisements, social media activity, signage, employee nametags and uniforms, company vehicles and any other business, advertising or marketing materials on which its trademarks appear. Photographs showing the owner’s attendance and exhibition at sales events and trade shows are also helpful. We also recommend keeping track of any material updates to the owner’s website that change how its trademarks are displayed in association with the advertisement of its services.
Documenting the extent of use is just as important as documenting any instances of use, as a trademark owner may need to demonstrate that its trademark is distinctive of its goods and/or services, and/or it has developed a reputation and goodwill in the mark (see above). Therefore, it is important to maintain sales records, as well as records of website traffic, circulation figures for brochures, pamphlets, papers, print and online advertisements, and consumer engagement, including followings, impressions and interactions, on social media and email (i.e., listserve records). Evidence of consumers’ attendance at sales events and trade shows are also valuable. If your goods or services are promoted by third parties, consider asking them to provide regular reports including circulation or engagement metrics to which they have access.
In some cases, it may be necessary to prove the distinctiveness of a trademark within a certain geographical area, to either register an allegedly non-distinctive trademark or enforce one’s unregistered, common law rights in an area in which a competitor is infringing such rights. Maintaining records showing that your goods and/or services are available across Canada will assist in such cases. For this reason, we recommend tracking the above information by province and territory, where possible.
Next steps
Now that you know when and why you may wish to adduce proof of trademark use across Canada, consider the following tips, to begin (or improve) your record keeping practices to ensure that such proof is always close at hand:
- identify the different trademarks that you are using, including variations of such marks;
- create an electronic file for each trademark, where you can store information about the mark itself (e.g., when it was first introduced in each province or territory, with which goods and/or services it is or has been used, and digital and/or physical samples showing how the trademark is or has been used);
- review your use of the marks, making note of the goods and/or services with which they are used, how and where the marks appear at the time of the transfer of the property in or possession of the goods, or how and where the marks appear in the course of performing or advertising the services, and collect samples along the way to keep for your files;
- review your accounting and inventory management software to see whether you can search for and track your sales by goods/services, associated marks, and geographic region;
- take regular screen captures of your website, social media pages, posts and profiles, and mobile applications showing your online use of your marks; and
- develop policies and procedures to ensure that you continue to capture the commencement and continued use of your marks at regular intervals, by month, year, and/or geographic region where possible.
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