what's the use? a comparative view of trademark use requirements: canada, mexico, and brazil ...

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What's the Use? A Comparative View of Trademark Use Requirements:

Canada, Mexico, and Brazil

April 25, 2014

Matthew P. Hintz Servilla Whitney LLC, Iselin, NJ


What's the Use?: Canada

Canada !First to use

!Registration not required to establish rights in trade-mark (or trademark)

!Benefit to use pre-filing


Grounds to file application to register trademark in Canada under Trade-Marks Act Section 30(a) include:

!Use in Canada

!Proposed use in Canada



Application based on use includes: !Date when applicant used mark in association

with goods in Canada !Use defined as:

A trade-mark is deemed to be used in association with wares if, at the time of the transfer of the property in or possession of the wares, in the normal course of trade, it is marked on the wares themselves or on the packages in which they are distributed or it is in any other manner so associated with the wares that notice of the association is then given to the person to whom the property or possession is transferred.

!Proof of use not required



Application based on proposed use includes: !Statement applicant intends to use trademark

in Canada !Proposed trade-mark defined as:

mark that is proposed to be used by a person for the purpose of distinguishing or so as to distinguish wares or services manufactured, sold, leased, hired or performed by him from those manufactured, sold, leased, hired or performed by others

!Declaration of use required before registration will issue




Declaration of use extensions of time !Due before the later of 6 months from

allowance, or 3 years from application filing date

!Failure to file declaration of use is abandonment

!Proof of use not required !No divisional applications



Declaration of use extensions of time !Up to 3 years from 1st deadline !6 month extension with some reason !1 year extension if government approval

needed !After 3 years from 1st deadline !Need significant & substantive reason !Extension either 6 months or 1 year



Post-registration !No mandatory filing for proof of use !Cancellation action (Section 45 proceeding)

possible if no use of trademark 3 years before action initiated !Registrant must prove use or justify non-

use in Canada !Non-use justified by government policies,

import restrictions, other circumstances (not economy/market)



Renewal of trademark

!Term is 15 years from registration date

!No proof of use required

!No declaration/oath required




Country Registration Application Basis

Proof of use for

registration

Post-registration

filing Renewal

Cancellation due to

non-use

Canada First to Use Use & Proposed use No No No declaration/oath No proof of use

3 years before initiation of action


Economic Action Plan 2014, introduced Mar. 28, 2014, would amend Trade-Marks Act, including:

!Remove use requirement for registration !Registration term reduced to 10 years !Divisional applications allowed !trade-mark to trademark; wares to goods



Mexico !First to file !Registration required !Exception:

Trademark registration may not be enforceable against senior user of non-registered mark before filing date of registered trademark or date of first use in application

What's the Use?: Mexico


Grounds to file application to register trademark under Mexico Industrial Property Law !Use or intent to use in Mexico not required !If trademark in use, date of first use in Mexico

may be claimed !Proof of use not required !Effective use: goods/services covered by

mark available in Mexican market in an amount and manner reasonable for those goods/services; exports



Post-registration !No mandatory filing for proof of use !Cancellation action possible if no use of trade

mark 3 years after registration !Best evidence of use: invoices, shipment

orders with date, name of registrant, mark and goods !Non-use excused due to import

restrictions, government policies !Cure lack of use




!Term is 10 years from application filing date


!But attorney of record must state under oath that trademark is in use, and use not interrupted for three or more years





Proof of use for

registration

Post-registration

filing Renewal

Cancellation due to

non-use

Mexico First to file Date of first use if mark in use

No No Oath No proof of use 3 years after registration


Brazil

!First to file

!Registration required

!Exceptions

What's the Use?: Brazil


!Exception (Article 129) !Preferential rights for senior party for non-registered

use at least 6 months before junior party files trademark application

!Senior party entitled to examination of trademark application before junior partys application

!Exception (Article 126) !Special protection for well known trademarks without

registration !Owner must file application to register if well known

trademark if asserted



Grounds to file application to register trademark under Brazil Industrial Property Law

!Use or intent to use in Brazil not required




Post-registration !No mandatory filing for proof of use !Cancellation action possible if no use of

trademark 5 years after registration !Use with all goods/services on registration !Best evidence of use: evidence, invoices,

catalogs, import permits, etc. !Non-use excused due to import restrictions,

government policies !Cure lack of use




!Term is 10 years from registration date


!No oath/declaration required




Proof of use for

registration

Post-registration

filing Renewal

Cancellation due to

non-use

Canada First to Use Use & Proposed use No No No declaration/oath No proof of use

3 years before initiation of action

Mexico First to file Date of first use if mark in use

No No Oath No proof of use 3 years after registration

Brazil First to file N/A No No No declaration/oath No proof of use

5 years after registration



What's the Use?

Thanks for traveling with me

Matthew P. Hintz, Servilla Whitney LLC, Iselin, NJ 732-815-0404, [email protected], @mhintzesq

Special thanks to Pierre Robichaud, Andrews Robichaud, Ottawa, Canada,

[email protected] Andra Possinhas, Bruenbaum, Possinhas & Teixeira, Rio de Janeiro, Brazil,

[email protected]

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