Federal Court Confirms Difference in US and Canadian Approaches to Acceptable Deviations from Use of Mark As-Registered

On August 5, 2015, the Federal Court (Court) issued a decision in Padcon Ltd v Gowling Lafleur Henderson LLP, 2015 FC 943, dismissing the appeal of Padcon Ltd (Padcon) from a decision of the Registrar of Trade-marks expunging its registration for the mark THE OUTRIGGER STEAKHOUSE AND BAR for non-use.  In this decision, the Court addressed (among other issues) the extent of permissible variation of a mark from that registered (Padcon had made use of a modified mark - simply OUTRIGGER).

Under US law, use of a different mark from that registered can be considered use of the registered mark provided that the two marks convey the same “continuing commercial impression”.  Padcon argued that this standard has been accepted in Canadian law as well and that its use of OUTRIGGER shared a continuing commercial impression with the mark as-registered.  The Court rejected this argument, finding that the applicable test in Canada is the seemingly higher standard of identity and recognisability: “dominant features” of the mark as-registered must be maintained and any difference must be “so unimportant as not to mislead an unaware purchaser.”

This decision serves to remind traders in Canada to be cautious when deviating from the mark as registered.  Modified marks risk a finding of non “use” of the registered mark within the meaning of the Trade-marks Act and have been characterized by Canadian courts as “playing with fire” (para 81).