Use it or Lose it

If you are successful in having a trademark registered, you need to make sure that you continue to use the mark following registration. Any trademark owner who stops using their mark for a period of 3 years in absence of special circumstances risks losing their mark by having it expunged by the trademarks office. Keep in mind that any party can ask the trademarks office to send a notice to a trademark owner requiring the owner to produce evidence that they have been using their mark within the preceding 3 years. In determining what constitutes special circumstances justifying non-use, the trademarks office will consider the following questions:  

• How long has the mark been in non-use?
• Were reasons for non-use beyond the trademark owner’s control or was non-use a deliberate decision?

In April of this year, the Federal Court of Appeal decided that mere plans for future use of a mark do not explain non-use, and cannot amount to special circumstances justifying non-use. In Scott Paper Ltd. v. Canada (Attorney General), the owner of a trademark had stopped using the mark for 13 years, but had a serious intention to resume using the mark shortly. Since non-use of the mark was deliberate, there was no defence to expungement.