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Intellectual Property

Have You “Used” Your Product Yet?

By April 8, 2013No Comments

A client of mine recently inquired whether they were able to sign the Declaration of Use, which is the last step in the registration process for applications filed on the basis of proposed use.  That is, they had not yet begun to sell the products yet in Canada, but would eventually and wanted to file for their trade-mark ahead of time.  This basis for filing an application is a popular choice, and allows protection for your trade-mark prior to its entry into the marketplace.

This particular client had produced the product in its final form, but hadn’t yet sold it to anyone.  In order to qualify for “use”, sales must be made of the product in the “normal course of trade”.  This means that the product can’t simply be gifted or given out as a promotional item.  It also means that most likely, one single sale to an employee wouldn’t be convincing enough to qualify as “normal trade”.

Normal trade depends heavily on the nature of the business involved.  One couldn’t manufacture advanced engineering parts and simply offer them for sale at the front counter, and “luckily” one employee purchases a part for his machinery.  Likely these parts must commence sale through distributors in order to qualify for use.  Most smaller consumer goods, however, could qualify for use just from a “front counter” display and sale.  For these products, having them available for sale at the front counter or office, despite their eventual sales through distributors, could result in sales (even to employees), and could qualify as “use” to move a trade-mark through to registration.  Remember to keep all invoices and discuss the matter with your trade-mark agent prior to signing the Declaration.

For more information on trade-marks, please contact me.


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