Trademark Series: Deviations!

By Richard Stobbe

The adage “use it or lose it” captures the essence of the ongoing requirement to put a trademark into commercial use. If you abandon your mark, you effectively give up your trademark rights. The corollary is to “use it as registered, or lose it” Not quite as catchy, but just as important.

The Federal Court decision in Padcon Ltd. v. Gowling Lafleur Henderson LLP 2015 FC 943 reminds us of this. In this case, a trademark owner obtained a registration in 2006 for the mark THE OUTRIGGER STEAKHOUSE AND BAR in association with “restaurant, bar and pub services”. When challenged, the trademark owner could only show use of the word OUTRIGGER alone, together with the ® symbol, on its menus and on some related promotional materials. 

Are deviations permitted? When the court considers a mark-as-used against the mark-as-registered, it will consider the following test:

…The practical test to be applied in order to resolve a case of this nature is to compare the trade mark as it is registered with the trade mark as it is used and determine whether the differences between these two marks are so unimportant that an unaware purchaser would be likely to infer that both, in spite of their differences, identify goods having the same origin.

That question must be answered in the negative unless the mark was used in such a way that the mark did not lose its identity and remained recognizable in spite of the differences between the form in which it was registered and the form in which it was used.

The court decided that use of OUTRIGGER alone on menus and promotional materials did not constitute evidence of use of the mark-as-registered: THE OUTRIGGER STEAKHOUSE AND BAR. The registration was expunged.

Lessons for business?

  • Review your marks-as-used, and compare against your marks-as-registered.
  • Consider developing brand guidelines to ensure that your organization, and others who might be authorized to use your trademarks, are in compliance with the guidelines.
  • If you already have brand guidelines, ensure that there are clear lines of responsibility for enforcement.

Calgary – 11:00 MT


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