Canada: Lessons From Recent Summary Cancellation Proceedings

Modified Marks Raise Risk Of Trade-Mark Registration Expungement

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 expunged.

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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