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 BARin
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
...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
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
Lessons for business?
Review your marks-as-used, and compare against your
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.
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.
To print this article, all you need is to be registered on Mondaq.com.
Click to Login as an existing user or Register so you can print this article.
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.
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).