For more information on the brand license, please contact a member of our company`s brand group. On the contrary, there must be factual evidence that the trademark holder directly or indirectly controls the character or quality of the goods or services used for the trademark. Moreover, the nature of the evidence sufficient to show that the owner of the parent company`s trademark has the necessary control is inconsistent and depends to a large extent on the facts of each case. It is therefore desirable to have a simple written licensing agreement between the owner of the parent company`s trademark and its subsidiary, or any other closely related company, indicating the nature and extent of the control exercised by the parent company in order to ensure the character or quality of the goods/services provided. Such an agreement should provide: (a) that the products/services offered by the taker comply with the standards, specifications or instructions approved by the parent company, and (b) a periodic inspection of the licensee`s actual premises and/or samples of the product sold to ensure compliance with those standards, specifications or instructions that the owner would actually exercise. In order for a trademark holder to prevent the removal of a trademark registration or assert its rights, an oral or written licensing agreement must be entered into between the trademark holder and the trademark user. Common ownership of the company is not enough. However, while there is evidence of a licensing agreement that states that a subsidiary has the right to use a trademark in Canada, federal courts such as the Trademark Opposition Board in Sobeys Capital Inc/ Edrnred, a limited company, 2012 TMOB 86, have always found that “organizational structure per se,… does not support the inference that the trademark holder controls the character or quality of the goods and services used in relation to such a licence. It is therefore desirable to enter into a simple written licensing agreement between the owner of the parent company`s trademark or another closely related company demonstrating the nature and extent of the control exercised by the parent company to ensure the character or quality of the goods or services provided. Such an agreement should provide that a duly developed licensing agreement can be invoked in a constitution or opposition procedure, therefore reducing the costs and risks associated with the subsequent attempt to prove later that the parent company`s trademark holder has the necessary control over the use of its trademark in Canada and can help to effectively maintain the focus on key issues. In order for a mark to be used for the benefit of the parent company by a subsidiary or other closely related company, it is necessary to demonstrate that the owner of the parent company`s trademark retains control over the character or quality of the services provided by the brand.
The fact that the company in which the use is claimed is a wholly owned subsidiary of the trademark holder or is, moreover, closely linked to the trademark holder, is not sufficient on its own to prevent a declaration or to benefit a party claiming its use.