When “use” is not trademark “use”

Law sometimes hinges on subtle distinctions that are not obvious, and can lead to surprising results.  The meaning of the word “use” for trademark purposes, for example.

A key principle of trademark law is that a business must actually “use” its trademark to keep its trademark registration alive, or to enforce its trademark rights against others.

But the legal concept of “use” for trademark purposes is narrower than most would suspect, and can result in a surprising loss of trademark rights for a business.

For example, a trademark on the side of a building, or on a business card, or on letterhead is not “use”.

A couple of recent cases in the Federal Court and the Federal Court of Appeal remind us of this.

It is common to register a corporate name as a trademark.  That’s fine if it is actually used as a trademark – but mere use as a corporate name is not enough to amount to trademark use.

Similarly, mere use of the trademark within an email or other text is not enough if it looks like the rest of the text.  It must somehow  look different than the rest of the text.

For example, if your company name is Abcd Widgets Inc, and your trademark is ABCD, the use of Abcd Widgets Inc. is not use of the trademark.  ABCD must be used independently.  And in text, using abcd is not use, but using ABCD may be, as it looks different than the surrounding text (unless, of course, the rest is in all caps as well.)

Cross posted to Slaw

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