One of my favourite tools in the arsenal of Canadian trade-mark practitioners is the initiation of summary expungement proceedings. It is one of the most aggressive things you can do in the field but carries with it very limited risk.
In brief, summary expungement proceedings are a simplified administrative proceeding in Canada wherein, upon payment of the requisite fee, the Registrar shall issue notice to the Registrant requiring the Registrant provide evidence of use of the trade-mark within the previous three years or justification why such use has not occurred. Failure to satisfy the Registrar results in the expungement of the registration.
Finding out if a Trade-mark is Still in Use
This is a tool that we often recommend when a trade-mark registration has been cited against an application (or there are concerns that such a citation could occur) and we can find no immediate or obvious signs the trade-mark is clearly still in use. To be clear, we generally regard any ambiguity with respect to whether or not the trade-mark is still in use as reasonable grounds for initiating summary expungement proceedings.
Firstly, it represents an immediate threat to the registration. Failure to respond to the proceedings results in the registration’s automatic expungement. And it is relatively risk-free in that, while the Requesting Party has the option to continue to participate in the proceedings after they have been initiated, there is no obligation to.
No cost awards. No automatic withdrawal mechanisms. Just fire and, if you feel like, forget.
It also represents a great alternative to private investigations. What better person to investigate the use of a trade-mark than the owner of the registration, under threat of expungement, reviewing their own records to present you with evidence of their own use. If they succeed, you now have a very reliable sense of where their trade-mark rights begin and end. If they fail, the registration is no longer a concern. It is as close to a win-win bet as you can make.
Know Your Rights
Trade-mark law is about protecting and enforcing your intangible property rights. It is not only important to know where your property rights begin and end but to also know the rights of your neighbors or potential neighbors. And while threatening their rights might seem unneighbourly, there is little room for passivity in the “use it or lose it” world of trade-mark rights.
So do not think of summary expungement as an attack on their rights. Think of it as a firm way of saying, “Hello, I’m your neighbor. And as a good neighbor, I’m just making sure I know where your lawn begins and ends.” Just like a cat… or a Viking.