Use it or Lose it (Trademark Registration)

Jul 08, 2021


Trademark can be a unique word, name, symbol, design, or the perfect combination of all the above. Trademark law protects and distinguishes the goods and services of manufacturers and indicates the source of goods to protect the brand. To protect the brand under trademarks, one has to register the brand under the trademark registry. Even after registration, the brand might get removed from the trademark registry through section 45 of the trademark act. Section 45 act specifies that if a particular trademark was not in use in the past three preceding years since the time of registration, removal of the trademark is possible from the trademark registry. But trademark owners can challenge section 45 for protecting brand name on dispensing the proper evidence of use of the trademark in the past three years for the goods and services listed in the trademark application.

Now let us focus on knowing what kinds of evidence are required to challenge section 45?

AT&T intellectual property II, L.P v Lecours, Herbert, 2017 FC 734, a well-known trademark, whether AT&T had shown sufficient trademark protection documents for trademark use for the trademark GO PHONE covered under trademark registry for prepaid telecommunication service and wireless voice messaging service. Registrar of Trademark associated at lower level rubbed the registration by finding that AT&T served the target customers of the United States not for Canada over the previous three years. Registrar also found promotions and other advertisement services to Canadian customers in submitted evidence. Still, there was no evidence of services offered for Canadian customers, and the Canadian customers had to leave Canada to the United States to avail themselves of services. So as per the registrar, AT&T did not constitute use of the trademark in Canada.AT&T appealed at the federal court against the registrar's decision. As per the Federal opinion, Canadians had to purchase the required hardware for setting up the GO PHONE account in theThe United States was not relevant and had to be still purchased from time to time to avail of prepaid services. Though AT&T could not show the necessary evidence of GO PHONE sales in Canada, the federal provided the evidence to AT&T and said Canadians could purchase GO PHONE in Canada and allowed AT&T to maintain its trademark registration.

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