The 'Jus' of Use: Trademarks in Transition

30(2) Intellectual Property Journal 217 (2018)

Osgoode Legal Studies Research Paper Forthcoming

54 Pages Posted: 17 May 2019

See all articles by Bita Amani

Bita Amani

Queen's University - Faculty of Law

Carys J. Craig

Osgoode Hall Law School, York University, Toronto

Date Written: April 16, 2018

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

Suggested Citation

Amani, Bita and Craig, Carys J., The 'Jus' of Use: Trademarks in Transition (April 16, 2018). 30(2) Intellectual Property Journal 217 (2018), Osgoode Legal Studies Research Paper Forthcoming, Available at SSRN: https://ssrn.com/abstract=3374472

Bita Amani

Queen's University - Faculty of Law ( email )

Macdonald Hall
Kingston, Ontario K7L 3N6 K7L3N6
Canada

Carys J. Craig (Contact Author)

Osgoode Hall Law School, York University, Toronto ( email )

4700 Keele Street
Toronto, Ontario M3J 1P3
Canada
416 736 5189 (Phone)
416 736 5736 (Fax)

HOME PAGE: http://www.osgoode.yorku.ca

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