Modified Marks Raise Risk Of Trade-Mark Registration
A recent decision of the Registrar of Trade-marks in a
section 45 (summary cancellation) proceeding offers a warning
to trade-mark owners to exercise caution when embarking upon
modifications to a registered trade-mark, or when using that
registered trade-mark in association with other words or
images. In certain cases, if the modifications are
significant, a new trade-mark filing may be warranted.
Summary cancellation proceedings enable the Registrar of
Trade-marks to issue a notice requesting that the registered
owner of a trade-mark furnish the Registrar with evidence (by
way of affidavit or statutory declaration) showing use of the
trade-mark in Canada at any time during the three-year period
immediately preceding the date of the notice. If the
trademark is not in use (and if there are no special
circumstances justifying its non-use), the trademark will be
In Laboratoires UMA, S.L. v. American Health and
Beauty, the mark at issue was AHBAI & Design.
While a variation of the mark was, indeed, in use, the
Registrar had to determine whether the differences between the
mark as used and the mark as registered were so substantial
that it could not be said that the registered mark was actually
in use. In determining this issue, the Registrar looked
to see if the "dominant features" of the registered
trade-mark had been preserved.
In this case, the hearing officer found that the mark as
registered had two dominant features, namely the design element
of a profile in black of a woman's head with two white
stripes running through her hair and the word AHBAI.
Both of these features were different in the version of the
mark currently in use. In the mark as used, the white
stripes were missing from the woman's hair, which, in
the view of the hearing officer, changed the image sufficiently
that the first dominant feature of the mark was no longer
present. In addition, the mark as used featured not only
the word AHBAI, but also the words "AHBAI MEMBER" and
"THE PROUD LADY," and additionally included a
rectangular border. The hearing officer found that the
border visually and conceptually fused the additional wording
with the original design of the mark and the word AHBAI.
While a trade-mark may be used in combination with
additional material, in this case the hearing officer found
that dominant features of the mark had become subsumed into the
additional material, to the degree that the mark as used could
not be considered use of the registered mark. Therefore, the
registered trade-mark was ordered expunged for non-use, despite
the fact that a variation of that mark was currently in use by
the registered owner.
Use Of Trade-Mark On In-Store Display Units Constitutes Use
Of Trade-Mark In Association With Wares
The decision of the Registrar of Trade-marks in Riches,
McKenzie & Herbert LLP v. Parissa Laboratories Inc. is
notable for its discussion of the issue of when a mark is
technically being "used" as a trade-mark, in
situations in which the trade-mark is not actually displayed on
the wares or their packaging.
At the request of Riches, McKenzie & Herbert LLP (the
Requesting Party), the Registrar of Trade-marks forwarded
notice under section 45 of the Trade-marks Act to
Parissa Laboratories Inc. (the Registrant), the owner of the
trade-mark THE BARE ESSENTIALS, which is registered for use in
association with hair-removal products.
The Registrant's evidence indicated that the
trade-mark was not used on the wares, packaging or
invoices. The mark was, however, prominently featured on
in-store displays and point-of-sale pamphlets distributed
alongside the wares in retail locations, as well as on the
Registrant's website. The design of the display
unit was virtually identical to the packaging of the wares and
was in close proximity to the wares being displayed. The
Registrar of Trade-marks found that the effect of the display
was such that purchasers could not help but notice the
association between the trade-mark and the wares listed in the
registration. Therefore, this constituted use of the
trade-mark within the meaning of the Trade-marks Act,
as notice of the association between the mark and the goods had
been given to consumers.
The Requesting Party also failed in its argument that THE
BARE ESSENTIALS had been used for advertising services or as a
slogan and would therefore not be recognized as a
trade-mark. Section 45 proceedings are summary in nature,
and it is not open to the Registrar to evaluate whether a mark
will be perceived as a trade-mark. The sole question to
be answered was whether the in-store displays constituted
sufficient association with the wares to constitute use, and
this question was answered in the affirmative.
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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