Use – the concept of “use” in Canadian trademark law

“Use”: a fundamental concept

Goods

In Canada, a trademark is used in association with goods if, at the time of any sale of the goods the trademark is clearly marked on the packaging of goods or a bill of lading that accompanies them.

Services

A trademark is used in association with services if, at any time when the services are advertised, the trademark is used in performance or advertising of the services.

Use – or Proposed Use

When an applicant files an application to a Canadian trademark, the applicant may:

a) Already be using the trademark in Canada; or

b) Propose to use the trademark in Canada at a later date.

A trademark cannot be registered until the trademark is used in Canada by the applicant. Accordingly, when a Canadian trademark application is filed on the basis of ‘proposed use’ (equivalent to ‘intent to use’ or ‘ITU’ in the United States), ultimately (assuming all other hurdles to registration of the trademark are overcome in prosecution) before the trademark can be registered, the applicant must file a Declaration of Use. The date of first use in a Declaration of Use must be after the date that the application based on proposed use was filed (i.e. an applicant cannot file based on proposed use, and then later claim use prior to the date of the application)

No evidence filed

In Canada, no evidence is filed with the Declaration of Use.

Extensions

After allowance, up to 5 extensions, each of 6 months duration, for filing the Declaration of Use can be sought.