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Trademarks: Use it or lose it – and prove it!
The Medium

You may be surprised to learn that even after your trademark is registered, it can be expunged from the Trademarks Register. One way is through Section 45 of the Trademarks Act (“Act”). Section 45 of the Act authorizes expungement of trademarks that have not been used in the preceding three years on the goods or services for which the mark is registered.

Any person can initiate a Section 45 challenge. A registered owner faced with a Section 45 proceeding must furnish evidence of use of the trademark in the previous three year period for each of the goods and services listed in the registration.

The question becomes: How much and what kind of evidence of use of the trademark is necessary to defeat a Section 45 challenge?

In the case AT&T Intellectual Property II, L.P v Lecours, Hebert, 2017 FC 734, the issue was whether AT&T had filed sufficient evidence showing use of the trademark, GO PHONE (the “Mark”). Services covered by the registration included prepaid telecommunications services and wireless voice messaging services.

At the lower level, the Registrar of the Trademarks expunged the registration finding that the services offered over the previous three years were targeted to customers of the United States, not Canada. The Registrar found that while the evidence showed use of the Mark in the promotion and advertisement of the relevant services, there was no evidence that the services were offered in Canada to Canadian customers. The customers had to leave Canada to purchase the services which, according to the Registrar, did not constitute use of the Mark in Canada.

AT&T appealed the Registrar’s decision. On appeal, the Federal Court held the evidentiary threshold necessary to demonstrate use of trademarks in a Section 45 proceeding is low. In the Court’s opinion, the fact that Canadians had to purchase the hardware required to set up a GO PHONE account in the United States was not relevant, given that prepaid services still had to be purchased from time to time and the Mark was displayed on AT&T’s website during these transactions.  

Even though AT&T was not able to produce documentary evidence of sales in Canada, or promotional materials and advertisements for Canada in the relevant three-year period, the Court held AT&T provided sufficient evidence establishing that Canadians could make subsequent GO PHONE purchases from Canada.  

The Court noted that there is a distinction between affidavits simply stating use, which is insufficient, and affidavits providing facts from which a conclusion of use can be drawn, which is sufficient. AT&T’s affidavit, while not containing direct evidence to establish use, was sufficient to allow the Court to conclude that use had occurred in Canada. The appeal was allowed and AT&T maintained its registration for the Mark.

Issues regarding use of trademarks are common and can arise before or after a trademark is registered. Field Law’s Trademark Group advises clients on this and other issues arising for trademarks in Canada and the United States, both defensively to protect their own marks and offensively to attack the trademarks of third parties.