Two recent non-use cancellation decisions from the Trade-marks
Opposition Board provide useful guidance on the sufficiency of use
in Canada to owners of trademarks covering "restaurant
services", as well as bar, lounge or other food and beverage
services. Specifically, mere display of a mark on a menu, without
clearly associating it with the registered services, or display
that suggests a food/beverage menu item, as compared to the
services, may not be enough to maintain the registration.
In Gowling Lafleur Henderson LLP v. Padcon Ltd, 2014
TMOB 125 [Padcon], the Board stated at para. 17:
the mere appearance of a trade-mark in
a restaurant, even on a menu, does not necessarily constitute
display of that trade-mark in association with the services
performed in that restaurant. A menu in a restaurant is akin to a
catalogue in a retail store. With respect to catalogues, a
distinction is made between trade-marks displayed in association
with particular goods appearing in that catalogue and trade-marks
being displayed by the retailer, such as its store name or slogans.
The former is generally display in association with wares; the
latter is generally display in association with services.
In Padcon, the word OUTRIGGER was displayed with a
single menu item and not at the top of the menu pages or "set
apart from the wares in a way that would prompt customers to
associate OUTRIGGER with the licensee's restaurant
services" (para. 15). This was found not to be display
of the mark in association with restaurant services. The
registration in Padcon was ultimately expunged. Not only
was the display of the mark on menus found not to be in association
with restaurant services, but the Registrant was also not using the
mark as registered (i.e. as THE OUTRIGGER STEAKHOUSE AND BAR).
However, in Ridout & Maybee LLP v. SIR Royalty Limited
Partnership, 2014 TMOB 112 [SIR Royalty], the mark
ARMADILLO TEXAS GRILL appeared both on interior walls, within the
Registrants' LOOSE MOOSE restaurant, as well as in several
menus from the relevant period as a menu section heading and as a
menu item, e.g. the heading "ARMADILLO TEXAS GRILL" with
four menu items below the item ARMADILLO TEXAS GRILL® NACHOS.
Although the registrant conceded it was arguable whether
"ARMADILLO TEXAS GRILL® NACHOS" on one of the menus
constituted display of the mark in association with wares or with
restaurant services, the Board ultimately found that the display of
the mark on multiple menus during the relevant period along with
the display of the mark on the interior wall constituted use in
association with restaurant services.
The hallmark case on this point is McDonald's Corp v.
Phil's Industries of Canada Ltd. (1983), 81 CPR (2d) 260
(TMOB) [McDonald's], where the opponent in that case
relied on the display of the mark FILET-O-FISH on a menu board and
point of purchase display signs to support a claim or prior use of
"restaurant services". The Opposition Board found that
the display of the mark on a menu board was not appropriate
evidence of use to distinguish the opponent's services but
instead was use on goods, namely a fish sandwich.
In Oyen Wiggs Green & Mutala v. Aimers (1998), 86
CPR (3d) 89 (TMOB) [Aimers], the display of the mark LOS
ANGELES WINGS & Design on a menu was accepted as use in
association with "restaurant services". However, unlike
in SIR Royalty, as the Board Member in that case pointed
out, the trademark was also the name of the restaurant and the
manner of the display was not described in the Aimers
Adding to the small body of case law, both SIR Royalty
and Padcon suggest that for owners of Canadian trademark
registrations for "restaurant services", mere display of
the mark on a menu may not support "use", if challenged,
either during opposition or in a non-use proceeding. Instead, the
specific manner of the mark's display will be important. If the
mark is not used in a traditional manner, e.g. on exterior or
interior signage to clearly indicate the "name" of the
restaurant, mere display on menus, particularly if such display
seems to refer to menu food/beverage items, may not be construed as
"use" in association with restaurant services. Specific
facts, of course, will be important – for example, prominent
display of the mark with a menu section title, and/or long term
display of the mark may be sufficient.
These cases will apply to claims of "use" to support a
trademark application (at least until Canada's trademark laws
are amended to eliminate a use requirement for registration), and
will continue to be relevant to any claim of use in opposition,
cancellation or expungement proceedings.
The content of this article is intended to provide a general
guide to the subject matter. Specialist advice should be sought
about your specific circumstances.
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A recent Saskatchewan Court of Queen's Bench decision allowed a court-appointed receiver to sell and transfer intellectual property rights free and clear of encumbrances, finding that a license to use improvements of an invention was a contractual interest and not a property interest.
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