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Deviating Trademark Use

Departing from the precise form of a trademark as registered is not a wise practice unless it is carefully planned and implemented by obtaining new trademark registration(s). From a branding perspective consistency is frequently an important element of the brand expression. From a legal standpoint a large number of decisions consider this recurring issue. The problem in these decisions is that it's difficult in some cases to determine how significant the deviation must be to destroy the validity of the mark.


The Federal Court of Appeal has said that cautious variations can be made without adverse consequences if the same dominant features are maintained, and the differences are so unimportant that an unaware purchaser of the goods would not be misled. Maintenance of the identity and recognizability or commercial impression of the registered mark is of vital importance.


The Federal Court of Appeal has also confirmed that the use of a trademark with another trademark or a prefix may not be use of the trademark but use of a new mark. In the leading case, it was found that use of the composite trademark CII HONEYWELL BULL did not constitute use of the registered trademark BULL. The Court said that the practical test to resolve a case of this nature is to compare the trademark as registered with the trademark as used and determine whether the differences are so unimportant that an unaware purchaser would be likely to infer that both, despite their differences, identify goods having the same origin. The comparison must be decided adversely to the interest of the trademark owner unless the mark was used in such a way by the owner that the mark did not lose its identity and remained recognizable despite the difference between the form in which it was registered and the form in which it was used.


Using a variant of a registered mark can provide potential grounds for expungement of the mark. To avoid these problems, a trademark should be used in the form in which it is registered. Alternatively, a separate registration should be obtained for the variant.


If you have questions, please contact me at mckeown@gsnh.com.


John McKeown

Goldman Sloan Nash & Haber LLP

480 University Avenue, Suite 1600

Toronto, Ontario M5G 1V2

Direct Line: (416) 597-3371

Fax: (416) 597-3370

Email: mckeown@gsnh.com


These comments are general in nature and not intended to provide legal advice as individual situations will differ and should be discussed with a lawyer.

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