As sad as it is to see the end of Canada’s oldest retailer, it’s nice to know that the Hudson Bay Company’s huge portfolio of trademarks, including BAY DAYS and those iconic stripes, is staying in Canada. Many of those trademarks have become more than just trade source indicators. They’ve become part of the Canadian identity. But the new owner of the portfolio, Canadian Tire, will need to do more with those trademarks than just own them. It will also need to use them and it will need to start doing so soon.
To maintain rights in a registered trademark in Canada, the owner of the trademark or a licensee needs 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.
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.
