'Use' It Or Lose It: Demystifying Trademark Use And Its Impact On Your Rights

• Published date: 30 May 2025
• Subject Matter: Intellectual Property, Media, Telecoms, IT, Entertainment, Trademark, Advertising, Marketing & Branding
• Law Firm: Osler, Hoskin & Harcourt LLP
• Author: Ryan Howes, Ryan Holland and Daniel Hnatchuk

All businesses employ some form of branding and marketing strategy and will inevitably encounter trademark law. There are few words in Canadian trademark law that carry more weight than "use." It may appear a deceptively simple word, but an understanding of this fundamental concept is essential to protecting your brand, steering clear of costly conflicts and being well positioned when unavoidable conflicts do arise.

"Use" has long been the driving force behind defining, enforcing and maintaining trademark rights. The importance of understanding and actioning "use" has never been greater, as underscored by recent amendments to the Trademarks Act. A detailed overview of these legislative changes is available in our previous Osler Update.

The goal of this Update is to demystify the concept of "use" in Canadian trademark law and to encourage and empower businesses of all stripes to proactively harmonize marketing campaigns and long-term branding and growth objectives with the legal imperative for proper trademark "use."

When does 'use' matter?

As the Supreme Court of Canada observed, "in trade-marks the watchword is 'use it or lose it'".¹ The question of whether a person has "used" a trademark is frequently relevant, including when

1. acquiring trademark rights (without registration). The Trademarks Act defines a "trademark" as "a sign or combination of signs that is used or proposed to be used by a person for the purpose of distinguishing or so as to distinguish their goods or services from those of others". To acquire rights in a trademark (without filing and obtaining a Canadian trademark registration), the trademark must be used by the owner for the purpose of distinguishing their goods or services from those of others.² Use is a necessary condition for an unregistered trademark to be valid and enforceable as a trademark.³
2. obtaining trademark registrations. Although the 2019 amendments to the Trademarks Act removed the historical requirement to declare use before a trademark can be registered, use continues to be relevant to trademark registration Paragraph 16(1)(a) of the Trademarks Act provides that an applicant is not entitled to register a trademark if, at the filing date of the application or the date of first use of the trademark in Canada, whichever is earlier, it was confusing with a trademark that had been previously used in Canada or made known in Canada by any other person.⁴ Prior use of a confusing trademark by third parties can thus prevent brand owners from obtaining the broader protections afforded by registration. It remains the best practice for businesses to begin using a prospective trademark as early as feasible.
3. maintaining registered trademarks. If the owner of a registration ceases to use the registered trademark in Canada, the registration can be expunged (cancelled) for non-use Cancellation proceedings under section 45 of the Trademarks Act can be initiated by any person, upon request and payment of the prescribed fees, against any registration that is at least three years old. If such a...