A Guide to Trade-marks: Other Procedures

• Expungement of a trade-mark registration
• Assignment
• Marking requirements
• Policing your trade-mark

Expungement of a trade-mark registration

The registration of a trade-mark provides the registered owner with a very valuable right, namely, the exclusive right to the use throughout Canada of the trade-mark in respect of the registered wares and/or services. However, in order to keep such a right, the registered owner must fulfill some responsibilities.

One responsibility is that the registered owner must pay a renewal fee every 15 years. Failure to pay such a fee on time will result in the expungement of the trade-mark registration.

Another responsibility of the owner is to use the trade-mark in Canada. If the trade-mark is not in use, then the registration is liable to be expunged either by the Registrar or by the Federal Court. Summary expungement proceedings may be instituted by the Registrar either of his own volition at any time during the life of the registration, or at the request of a third party upon payment of the prescribed fee, after three years from the date of the registration (see section 45 of the Trade-marks Act). The procedure before the Registrar begins when the Registrar issues a notice to the registered owner asking him to furnish evidence showing use of the trade-mark in Canada or special circumstances excusing non-use. The registered owner must furnish evidence, since failure to reply to the Registrar's notice will result in the expungement of the trade-mark registration.

IMPORTANT - The notice will be issued to the registered owner and his representative for service at the addresses shown on the registration page. Please note that if you have failed to notify the Registrar of a change of address, the Registrar is not responsible for any correspondence not received by the registrant or its representative for service or its agent.

Once the Registrar has received the evidence, the registered owner and the requesting party have an opportunity to submit written arguments and to make representations at an oral hearing. The whole procedure can take as long as one and a half to two years. After a final decision is rendered to either expunge, amend or maintain the registration, it may be appealed to the Federal Court of Canada.

In view of the complicated nature of section 45 proceedings, the parties are advised to use the services of a registered trade-mark agent.

For more information refer to section 45 of the Trade-marks Act, or call l (8l9) 997-7300.

Assignment

A trade-mark is a form of property. You can sell, bequeath or otherwise transfer your rights to it to another party through a transaction called an "assignment." You should formally notify the Trade-marks Office of such changes in ownership so that the Office can amend its records accordingly. This is done to avoid ownership disputes.

There are no prescribed forms for notifying the Trade-marks Office of an assignment, but you must send evidence of the change, together with the prescribed fee.

Other transactions can affect the ownership of a trade-mark, for example a change of name, a merger, etc.

Marking requirements

Canada's Trade-marks Act does not contain any marking requirements. However, trade-mark owners often indicate their registration through certain symbols, namely, R in a circle (registered), TM (trade-mark), SM (service mark), MD (marque déposée) or MC (marque de commerce). Although the Act does not require the use of these symbols, it is advisable to use them. The symbols TM, SM or MC may be used regardless of whether the trade-mark is registered. The R in a circle, or MD, on the other hand, should be used only if the mark is registered.

Canada's Precious Metals Marking Act states that you must file a trade-mark application for the trade-mark used on the wares, if you wish to stamp a quality mark (e.g. 10K gold) on your product. The quality mark itself is not mandatory.

Policing your trade-mark

One of the functions of the Trade-marks Office is to prevent anyone else from registering a mark that is the same as or confusingly similar to your mark. It does not, however, keep an eye out for cases of infringement. It is your responsibility entirely to monitor the marketplace and, if you find someone using your registered trade-mark or a mark or a trade name that is confusing with your mark, to take legal action. Someone who infringes on trade-mark rights may be accountable to you by way of an injunction, i.e., an order to cease the infringing activity and/or damages.

Preventing imitation by competitors is not the only reason to police your mark. If your business is a smash success, your mark may be in danger of becoming a generic term. Believe it or not, too much familiarity can be a bad thing.

If consumers start saying "Northpole" when they mean any ice cream, your trade-mark may no longer be distinguishable from others. Such was the fate of trade-marks such as "Zipper," "Escalator," "Cellophane," and "Dry Ice." Who remembers that the correct terms are "slide fastener" and "moving staircase"? This is why some companies are very vigilant about policing their marks, and preventing improper use of their trade-marks in any kind of communication.

A Guide to Trade-marks
| Table of Contents | Introduction | Making sure your Trade-mark can be Registered | The Trade-mark Registration Process | Other Procedures | For More Information | Fees | Appendix A - Twenty Common Questions About Trade-marks | Appendix B - Format of the Application | Appendix C - Your Trade-mark Application | Glossary |