Justine Whitehead and Hilary Furness -
In Canada, and most countries around the world, trademarks which are not being used in association with the goods and services with which the marks were registered are vulnerable to expungement for non-use. In Canada, challenges can be brought under section 45 of Trade-marks Act, which provides for summary expungement of a trademark if, upon request of the Registrar of Trade-marks, a trademark owner is unable to provide evidence of use of the trademark in Canada during the previous three years, in the normal course of trade and in association with the goods and/or services set out in the registration. This expungement can only be avoided if the owner proves special circumstances that justify temporary non-use of the trademark.
Technological changes are revolutionizing the methods by which certain goods and services are sold to consumers. At one time, products such as books, music recordings and computer games could only be sold to consumers as tangible items. Now, of course, these items are routinely made available through various electronic means, and in some cases, the business model has moved from distribution of goods to the offering of on-line services. But what happens to trademark registrations when evolving technology has changed the manner or medium by which the identified goods and services are offered for sale to consumers?