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What is Deviating Trademark Use?

A recent decision of the Federal Court deals with section 45 proceedings and whether the use of a variant of the registered trademark by the registrant would establish the use of the registered trademark.

It has been often said that the practice of departing from the precise form of the trademark as registered is an objectionable and dangerous practice that can lead to the invalidity of the registration. However, it remains to be seen how significant the deviation must be to destroy the validity of the mark. Cautious variations can be made without adverse consequences if the same dominant features are maintained and the differences are so unimportant as to not mislead an unaware purchaser of the wares.


Applicant is a marketing company that sells and distributes Italian food products in Europe, the Middle East, the Far East, and North and South America. The Applicant is the owner of a trademark registration relating to the words LE DELIZIE ZARA for use in association with a variety of goods, including meat and meat products, preserves, rice, flour products, a variety of beverages, and pizza and breadsticks.

Pasta ZARA is a leading Italian exporter of pasta and the second largest pasta manufacturer in Italy. During the period that was relevant, Pasta ZARA was the exclusive worldwide licensee of the LE DELIZIE ZARA mark.

A section 45 proceeding under the Trademarks Act was commenced on December 12, 2012, requiring the Applicant to show its use of the mark in Canada during the three-year period preceding the date of the notice.

The Applicant submitted a document showing the use of its mark, but the Hearing officer found the document to be inadmissible because there was no evidence that the document had been sworn or declared before a Commissioner for taking oaths. In addition, part of the document was in Italian, and the Applicant did not provide a translation or explanation of the document that indicated it has been properly sworn. Absent any admissible evidence; the Hearing officer decided that the registration should be expunged.

The Applicant appealed from this decision and, as it was entitled to do, filed new evidence.

Because of the absence of evidence before the Hearing officer and filing the new evidence, the judge conducted a de novo review.

The onus was on the Applicant to show the use of its mark in association with the goods it was registered in association with and that the use by Pasta ZARA satisfied the requirements of the Act concerning licensing.

The procedure under section 45 is meant to be simple and expeditious. The registrant needs to establish only a prima facie case of use during the relevant period. Unfortunately, in practice, this is not always the case, and the evidence can be carefully scrutinized.

In this case, there was no issue that a trademark had been appropriately used in association with the goods and that the arrangements with Pasta ZARA satisfied the requirement for licensing. The primary issue was whether the form in which the Applicant used the mark showed the use of the mark as registered. The mark as displayed on packaging appeared as follows:

On this issue, the practical test to be applied is to compare the trademark as registered with the trademark as used and determine whether the differences between the two marks were so unimportant that an unaware purchaser would likely conclude that both, despite their differences, identify goods having the same origin. However, the Supreme Court of Canada has said for a trademark identified only in a textual form, the registrant should be entitled to use the words of the mark in any size and with any style of lettering, colour or design.

The Judge decided the case in favour of the Applicant. He concluded that the new evidence meets the threshold to demonstrate use in a section 45 proceeding, and the display of the mark on the packaging constituted use of the mark because the differences were unimportant and fell within the entitlement of the registrant to use the words in a different font, style, and colour. The elements of the trademark have been preserved, so the mark as used maintained its identity and remained recognizable as the registered mark.

The Judge was not persuaded by the Respondent’s argument that the Applicant had not used their mark because the display on the packaging was too different from the mark as registered. The owner of a registered word mark – where it is only the words that are registered – is entitled to display it in any font, design, or colour. There was nothing added or deleted from the words as registered, and the display is not likely to mislead a casual consumer. The elements of the trademark have been preserved, and the mark as used maintains its identity and remains recognizable as the registered mark.

If you have questions, please contact

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:

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

A version of this article originally appeared on the Lawyer’s Daily website published by LexisNexis Canada Inc.

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