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.)
Presumably as well the ‘use’ will depend on what the trade mark is for. Using a TM in offering goods to the public will be different, at least some of the time, from using it in offering services. Use in correspondence to promote the engagement of the services could be use, while a mere description of goods by reference to it might not be.
One of the interesting questions that technology has presented is whether a business that buys a Google Keyword for a competitor’s TM – so that a search for the goods or services produces an advertisement for that business – is ‘use’ that infringes the rights of the TM’s owner.
Case law in the US has gone different directions on this one. I don’t know if Canadian courts have faced that question, or how they have decided, if so.
Yes, decided for the post not to get into the differences in “use” between goods and services, and how it ties into the use description.
On the adwords issue, a Canadian case earlier this year said use of adwords in itself is not trademark infringement. See http://www.cba.org/CBA/sections_ip/IP_CLS_2015June/Metatag.aspx
See also 2011 BCCA 69 affirming a finding that use of keywords was not misleading based on how searchers (in this case perspective students) were used to using the internet. (In particular the difference between organic and paid search results was relevant).