Opinions, insights, and news
Opinions, insights, and news
What can you do when you want to use or register a trademark that someone else has already registered but who, you suspect, is no longer using it? This was the issue recently facing one of Shift Law’s clients. They had been using the trademark, BROADVIEW, in association with their financial services for years. But, when they went to register it, they discovered that it was already registered for financial services in Canada by a large U.S. institution. While they suspected that the U.S. company might not be using the trademark in Canada, the registration was a problem nevertheless. It was blocking their own application to register BROADVIEW and posed an infringement risk.
Ultimately, Shift Law persuaded the Register of Trademarks on behalf of its client to invalidate the existing BROADVIEW registration on the basis of the “use it or lose it” principle: Shift Law v. Jefferies Group, Inc., 2014 TMOB 277. The Register of Trademarks agreed with Shift Law's submissions that the registrant’s evidence of use of the trademark in Canada was not sufficient to maintain the registration. This cleared the way for Shift Law's client to register their own BROADVIEW trademark and to continue using it without the risk of getting sued.
The “use it or lose it” principle is fundamental to Canadian trademark law. It means that the owner of a registered trademark must continue to use the registered trademark in Canada (either directly or through a licensee) to maintain rights in it. This keeps un-used trademarks from cluttering the trademarks register and preventing others from using them or confusingly similar trademarks. In other words, it clears the register of “dead wood”.
In Canada, unlike some other places, the Trademarks Office will not clear “dead wood” on its own initiative. Our Trademarks Office will only act upon a request from a third person, under Section 45 of the Trademarks Act, asking the Registrar to require the owner of a registered trademark to furnish evidence that the trademark has been used in Canada in the preceding three years. If the owner fails to provide satisfactory evidence of use (or a satisfactory excuse for non-use) then the Registrar will “expunge” the registration or else limit it to those goods or services with which the trademark has be used during the relevant period.
The person who makes a Section 45 request is often a company that wishes to adopt and then register the registered trademark or a confusingly similar trademark for its own commercial purposes. But in some cases, for any number of reasons, that company does not want to be identified by the owner of the registered trademark. In such a case, the company can ask its law firm to make a Section 45 request in its own name since “any person” can make a Section 45 request.
In Shift Law v. Jefferies Group, Inc., 2014 TMOB 277, we made the Section 45 in our own name out of concern that, if the client made the request, this might cause the owner of the registered trademark to sue the client for infringing the registered trademark. The client had been using BROADVIEW for years so the last thing it wanted to do was to wake a sleeping giant.
The registrant of the BROADVIEW trademark did not simply roll over and surrender the registration. Instead, they took the position that they had used the trademark in Canada based on the evidence they filed that the trademark had appeared on their website during the relevant period in association with their financial services. The Registrar disagreed with the registrant that this constituted use of the trademark in Canada, referring specifically to Shift Law’s submissions that there was a “conspicuous absence of any reference to Canada throughout the evidence: not in the descriptions of where the Broadview business operates, not in the exhibited information sheets, and not even in the third party media articles” (paragraph 15).
Since the Registrar found that any use of the registered trademark on the registrant’s website was not use of the trademark in Canada (there being no references to Canada on the website or in the materials accessible through the website), and since the registrant’s only evidence of use was on or through its website, the Registrar ordered the BROADVIEW registration to be “expunged” pursuant to Section 45.
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