The 'Jus' of Use: Trademarks in Transition

Abstract

Changes to Canada's Trade-marks Act will soon permit, for the first time, the registration and enforcement of unused trademarks. Far from a mere legal technicality or practical exigency, this shift fundamentally alters the nature of trademarks and the trademark system. Traditionally, it is the use of trade indicia in the marketplace that determines title and acquisition of trademark rights; use that defines the scope and duration of rights; and use that gives rise to claims of infringement. By virtue of the "Jus of use", the trademark system has remained, over time, reasonably true to its rationale, encouraging and rewarding honest economic activity and fair competition. This article examines the implications of removing use as a precondition of trademark registration. Not only will the statutory amendments present stark practical problems likely to disadvantage weaker commercial actors, but they will undermine the basic tenets of Canada's trademark system, casting doubt on its historical justifications and its constitutional legitimacy. If this reflects the international trajectory of "trademarks in transition", it also gives rise to an overarching concern: with the global shift towards a right-by-registration system, consumer protection rationales increasingly cede to market efficiency concerns, as the trademark further (d)evolves from source signifier to simple commodity.

Keywords: Trademarks, trademark registration, trademark use, division of powers, freedom of expression, international trade

JEL Classification: F13, F23, F42, F68, K19, K29, K39, O34, O38