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socrateaser
socrateaser, Lawyer
Category: Intellectual Property Law
Satisfied Customers: 37958
Experience:  Retired (mostly)
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Do I need to consider this?: --------- Original Message

Customer Question

Do I need to consider this?:
--------- Original Message ---------
Subject: Trade-mark: KLEINERT'S Design; Our Reference: R29180; Registration No.: TMDA29180; Your Reference:(###) ###-####FRN/CA
From: "Ash, Stuart C"
Date: 5/4/16 10:09 am
To: "*****@******.***"
Cc: "Miller, Suzanne"
Dear Sirs:
Re:
Canadian Trade-mark Registration
http://www.gowlings.com/images/inprotech/17183.jpg
Trade-mark
:
KLEINERT'S Design
Owner
:
Kleinert's Inc.
Registration No.
:
TMDA29180
Our Reference
:
R29180
Your Reference
: (###) ###-####FRN/CA
Our records show that the above referenced Canadian trade-mark registration is due for renewal on or before September 3, 2016.
There is no requirement to prove that the mark is in use at the time of renewal. However, you should be aware of Section 45 of the Trade-marks Act which provides for summary cancellation of registrations which are not in use in Canada. Section 45 Proceedings are usually only initiated by third parties who have an interest in the registration being cancelled. However, if such proceedings are initiated, in order to maintain the registration, the mark must be shown to be in use in Canada by the registered owner (or a licensee) in the normal course of trade in association with the wares and/or services listed in the registration at some time during the three year period immediately preceding the date of the Section 45 Notice or the registrant must establish special circumstances to explain non-use of the mark. Please advise if you would like further information in this regard.
If you wish us to effect renewal, please let us have your instructions as soon as possible. Our fee for renewing the registration and reviewing and forwarding the Renewal Certificate is $850 which includes the Trade-marks Office fee. If we do not hear from you, we will not renew the registration. If the registration is not renewed it will be expunged.
When providing us with renewal instructions, please let us know if there has been a change in the trade-mark owner's name or address, or if the trade-mark has been transferred to another entity. A change of name or assignment need not be recorded with the Trade-marks Office prior to renewal but should be recorded without delay.
The statement of wares and/or services in the registration should also be reviewed to ensure that it adequately encompasses the wares being sold or services being offered in association with the mark. In Canada, it is possible to extend the wares and/or services of an existing registration. Please advise if you would like further information in that regard.
A trade-mark can be licensed for use by third parties provided that the owner has, pursuant to the license, direct or indirect control of the character or quality of the wares and/or services in association with which the licensee is using the mark. Where public notice is given of the fact that the use is licensed and of the identity of the trade-mark owner, it will be presumed, unless the contrary is proven, that the use is licensed by the owner and the character or quality of the wares and/or services is under the control of the trade-mark owner. We would be pleased to provide you with more information on licensing your trade-mark in Canada and to make recommendations with respect to particular situations.
We look forward to hearing from you.
Stuart Ash
Partner (###) ###-####***@******.***
Submitted: 7 months ago.
Category: Intellectual Property Law
Customer: replied 7 months ago.
Posted by JustAnswer at customer's request) Hello. I would like to request the following Expert Service(s) from you: Live Phone Call. Let me know if you need more information, or send me the service offer(s) so we can proceed.
Customer: replied 7 months ago.
My US trademark is live so do I have to submit proof of use in Canada as written in the letter?
Expert:  socrateaser replied 7 months ago.

Hello,

Please permit me to "cut to the chase." Canada is not a member of the "Madrid Protocol" (MP) which is the trademark treaty that permits a trademark registered in one MP nation to be enforced in another nation. Canada has been considering signing the MP for several years, but as of this writing, it hasn't occurred.

Consequently, if you need current trademark enforcement in Canada, then you must renew your registration.

I hope I've answered your question. Please let me know if you require further clarification. And, please provide a positive feedback rating for my answer (click 3, 4 or 5 stars) -- otherwise, I receive nothing for my efforts in your behalf.

Thanks again for using Justanswer!

Expert:  socrateaser replied 7 months ago.

Addendum: You asked if you had to submit written proof of use in Canadian commerce with your renewal application. The answer is: "no." You need the proof if a Section 45 proceeding is commenced to cancel your trademark.

I apologize for not addressing the question directly.

I hope I've answered your question. Please let me know if you require further clarification. And, please provide a positive feedback rating for my answer (click 3, 4 or 5 stars) -- otherwise, I receive nothing for my efforts in your behalf.

Thanks again for using Justanswer!

Customer: replied 7 months ago.
Where do I rate your response
Expert:  socrateaser replied 7 months ago.

There should be 5 blank stars on the webpage. If you can't find them, please tell me how many stars you want to rate, and I'll send your reply to customer service.

Thanks again for using Justanswer.

Expert:  socrateaser replied 6 months ago.

Hello again,

I see that you have reviewed my answer, but that you have not provided a rating. Do you need any further clarification concerning my answer, or is everything satisfactory?

If you need further clarification, concerning this matter, please feel free to ask. If not, I would greatly appreciate a positive feedback rating for my answer (click 3, 4 or 5 stars) – otherwise, I receive nothing for my efforts in your behalf.
Thanks again for using Justanswer!

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