Canada

The Canadian trademark system is based on use. There must be the use of a trademark for a registration to issue. No evidence of use is required during the application but may have to submit evidence of use if the application is opposed. A person who has used a trademark can also enforce their rights in the mark in the absence of registration.

Use of a trademark is essential to the maintenance of a registration. Section 45 of the Canadian Trade-marks Act provides that, after three years of registration, the Registrar may, upon request, issue a notice requiring the registered owner to show that the trademark has been used in association with the goods or services listed in the registration. In the absence of exceptional circumstances, failure to demonstrate the use of the registered trademark for the registered goods or services in the three years preceding the date of the Registrar’s notice will result in the removal or expungement of the registration.

What the owner of a registered trademark provides evidence of use varies depending on whether the trademark is associated with goods or services. The Trade-marks Act distinguishes between the use of a trademark in association with goods and use of a trademark in association with services. According to s. 4(1) of the Trade-marks Act, there is the use of a trademark in association with goods if a trademark is applied to the goods or their packaging at the time of transfer of possession or property of the goods, in the normal course of trade. This means that in order for there to be the use of a trademark in association with goods, the trademark must appear on the goods themselves, or on the packaging, tags or other forms of labels applied to the goods, at the time of sale of the goods in the normal course of trade.

In responding to a notice under section 45 of the Trade-Marks Act, the registered owner will have to produce evidence of the use of the trademark such as an affidavit or statutory declaration. The affidavit or statutory declaration should include evidence of the sale of the registered goods in Canada, and images, such as photographs, showing the trademark applied to the goods, or specimens of packaging, tags or other labels bearing the trademark. When responding to a notice under section 45, the registered owner should explain in his affidavit, what the normal course of trade for his business is. However, token sales or one-time sales made simply to establish the use of a trademark, would not be considered as being in the normal course of trade.

Section 4(1) of the Trade-marks Act provides that there is also use of a trademark in association with goods if the trademark is associated to the goods in any other manner such that notice of the association of the trademark to the goods is given to the consumer at the time of transfer of property or possession. For example, a trademark appearing on a point of purchase display would be considered as being used in association with the goods displayed.

The concept of use in association with services is more permissive. Section 4(2) of the Trade-marks Act provides that a trademark is deemed to be used in association with services if it is used or displayed in the performance or the advertising of the services. The term “service” has been interpreted broadly and, while the services must be offered in Canada, the performance of ancillary services may be enough to maintain a registration. For example, use of a trademark for “reservation services” was found sufficient to support a registration for “automobile rental and leasing services”. It is important for the trademark owner to explain how the services are offered and performed in Canada.

China

Non-use cancellation serves a very important role in China trademark practice. The legal ground for filing non-use cancellation is based on Article 49(2) of the Chinese Trademark Law. Where a registered trademark becomes a generic name of the commodities for which it is approved or a registered trademark has not been used for three years consecutively without a proper reason, anyorganizationn or individual may apply to the trademark bureau for revocation of the registered trademark.

Any party may simply file a non-use cancellation with the China Trademark Office (CTO) to demand de-registration or cancellation of the mark by stating that the mark has not been used for over three years from the registration date. The CTO often accepts the filing without requiring any additional evidence. Within two months from the acceptance of the case, the CTO will issue a notice of presenting evidence to the registrant, requiring the presentation of evidence ofthe use of the trademark within two months. If the trademark registrant fails to provide evidence or otherwise the evidence is insufficient to prove the use of the trademark, the CTO may issue a decision to cancel the trademark registration. The decision of the CTO is subject to two levels of judicial review, by Beijing IP Court and Beijing Higher Court.

Proof of trademark use includes:

Products or product photos bearing the subject mark.
Product packages, or photographs of product packages, bearing the subject mark.
Product orders, sales contracts, relevant invoices, shipping documents, where documents are in a chain to show the consistency of each transaction.
Advertising materials featuring the subject mark such as advertisements, product catalogues, magazines, newspapers, exhibition attendance evidence, etc.
Evidence certifying the subject mark’s fame such as awards.
If the mark has been authorised to be used by licensees, evidence of the use of the subject mark by the licensees, and relevant license agreements.
To enhance the effectiveness of the documents, proofs should form a chain of evidence, and the evidence of use should be substantial to avoid being cancelled on for non-use.

Trademark use for goods include:

The trademark is affixed to the goods, packaging of goods, containers, and labels;
The trademark is used in transaction documents relating to the sale of goods (such as sales contracts, invoices, bills, and receipts); and
The trademark is used in advertisements and promotions through media.

Trademark use for services include:

The trademark is directly used in the service premises;
The trademark is used on documents related to the services;
The trademark is used in advertisements and promotions through media; and
the trademark is used in exhibitions or trade fairs.

Contribution Magdalena A K Muir