BAY DAYS Coming Soon to Canadian Tire?

In a much anticipated $30M deal, the coveted brand assets of Hudson’s Bay Company (HBC) are set to find a new home with another Canadian iconic retailer, Canadian Tire Corporation (CTC). The HBC coat of arms and legendary Stripes, along with BAY DAYS and other assets, will now join Canadian Tire’s family of homegrown brands, preserving a legacy of Canadian retail heritage.

As sad as it is to see the end of Canada’s oldest retailer, it’s reassuring to know that HBC’s expansive trademark portfolio will remain in Canada. Many of these trademarks have long outgrown their worth as simply trade source indicators. As such, they’ve become part of the Canadian identity. To preserve that identity, CTC will need to do more with those trademarks than just own them. It will need to use them, and it will need to start doing so soon.

The concept of “use it or lose it” in trademark law

To maintain rights in a registered trademark in Canada, the owner of the trademark or a licensee is required to use it in the way that “use” is defined in the Trademarks Act. This “use or lose it” principle, which we’ve written about before, is foundational to trademark law. You can’t just hoard trademarks and wait to sue others for using them in the way you can with patents.

If a trademark owner can’t prove, when challenged to do so, that its registered trademark has been used in the past three years, then the registration will be invalidated. While non-use can be excused if the owner can prove that special circumstances existed that made it impossible or impractical to use the trademark, mere business or marketing decisions (e.g. to prioritize some brands over others) will not count as special circumstances.

BAY DAYS or bust

Finding ways to put hundreds of newly acquired trademarks to use in the next 36 months could be a tall challenge for Canadian Tire’s marketing department. So, as weird as it will be to pay for BAY DAYS promotions with your Canadian Tire money, we should expect to see all sorts of things like this in the coming months. If we don’t, then expect to see trademark opportunists start circling like vultures over the HBC trademarks that don’t get put into use.

Frequently asked questions about trademark use in Canada

What happens to trademarks when a company is sold?

When a company is sold, its brand assets and their registered trademarks normally transfer to the buyer. The buyer gains the legal rights to use the marks, but they must actively use them in the marketplace to keep those rights.

What does “use it or lose it” mean in trademark law?

Under Section 45 of the Trademarks Act, if a registered trademark hasn’t been used in Canada for the past three years, anyone can ask the Registrar to issue a notice requiring proof of use. If no proof is provided, the mark may be removed from the register. In short, if you’re not using it, you can risk losing it.

Can trademarks be challenged if not being used in Canada?

Yes. Anyone can start a Section 45 proceeding to challenge a trademark that hasn’t been used in the last three years. This is a common strategy in competitive industries where unused marks might block new branding efforts or are simply up for grabs.

What counts as “use” of a trademark in Canada?

“Use” typically means that the mark is shown in connection with the sale or advertising of goods or services in normal trade in Canada. This can include use on packaging, labels, websites, or promotional material, but it must be genuine commercial use, not just token efforts.

Why does Canadian Tire have to rush to use the HBC trademarks?

To preserve their rights. With trademarks gained in the deal, Canadian Tire must show active use or risk losing valuable brand assets. This could involve launching legacy campaigns, product tie-ins, or new branding that keeps the trademarks relevant in the eyes of the law.