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I've made an application for University students, and the University's trademark is 'XYZ'.

Is it OK for me to have the name of the app in the store listing to be "App Name for XYZ". The actual app will have no uses of the trademark, is used only in the store name and is free to download. Is this fair use?

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I'm renaming XYZ to the Toronto University just for more clarity and less possibility of confusion due to name. I'll also be calling the app name to be "Students info."

Say you wanted to create an informational app for students of Toronto University. Since the Toronto University name is trademarked, you have to respect their rights pertaining to the usage of the trademark. Since you don't list too many details, I'll try to give more of a general overview.

The registration and use of trademarks in Canada is governed by the Trade-marks Act, RSC 1985, c T-13. Similar to copyright, the owner of a trademark is entitled to exclusive rights regarding its usage. However, there are exceptions to where usage of a trademark does not infringe on the owner's rights. §20 outlines when a trademark is infringed, as well as two exceptions.

Relevant to your case, is §20(d):

Infringement

20 (1) The right of the owner of a registered trade-mark to its exclusive use is deemed to be infringed by any person who is not entitled to its use under this Act and who

(d) manufactures, causes to be manufactured, possesses, imports, exports or attempts to export any label or packaging, in any form, bearing a trade-mark or trade-name, for the purpose of its sale or distribution or for the purpose of the sale, distribution or advertisement of goods or services in association with it, if

  • (i) the person knows or ought to know that the label or packaging is intended to be associated with goods or services that are not those of the owner of the registered trade-mark,

Since your app is intending to be associated with the trademark owner's institution, you would not be infringing a trademark.

However, trademarks are fairly complicated. Since you are identifying a project to help target your audience, it would likely be considered fair use.

But remember, I'm not a lawyer.

  • "Fair use" is a copyright defence - it is not a defence for trade mark infringement. Further, "fair use" is a US concept - Canada has a "fair dealing" defence for copyright but it is much more limited. – Dale M May 20 '16 at 7:13
  • @dale there is a fair use trademark defence in the US. Statutory fair use of trademarks is limited to nominative use. The term is also used to refer to judicially recognized parody tests for non-confusion. – user3851 May 20 '16 at 8:28

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