Padcon Ltd. v. Gowling Lafleur Henderson LLP, 2015 FC 943 (Kane, J.)
August 5, 2015
Ken McKay of Sim Lowman Ashton & McKay LLP for the Applicant Padcon Ltd.
Jennifer McKay of Perley-Robertson, Hill & McDougall LLP for the Respondent Gowling Lafleur Henderson LLP
This Federal Court decision confirmed the Registrar’s expungement of a trademark that had not been used in its registered form, nor directly in association with the services for which it had been registered. The significance of the decision is twofold: first, the Court used the occasion to examine the extent of permissible deviation from a mark as-registered; second, the analysis highlighted the Court’s distinction between Canadian and U.S. tests for assessing permissible deviation.
The mark in question was THE OUTRIGGER STEAKHOUSE AND BAR. Pursuant to Section 45 of the Trademarks Act, Gowling Lafleur Henderson LLP (“Gowlings”) had filed for expungement of that mark in association with restaurant, bar and pub services. In particular, it challenged the trademark owner, Padcon Ltd. (“Padcon) to demonstrate use.
Padcon had licensed the use of the trade-mark to Shoeless Joe’s Sports Grill chain of restaurants. But the only evidence of use submitted by Padcon was of restaurant menu items containing the term OUTRIGGER in their names, such as the “Outrigger ® Seafood Topper” and “Outrigger Salad.” Padcon had argued that these contexts were sufficient evidence of use, because the omitted words were descriptive and not significant.
The Registrar had disagreed and had granted Gowlings’ section 45 challenge, agreeing that there was no evidence of the entire mark being used (“THE OUTRIGGER STEAKHOUSE AND BAR”) and that even the term “OUTRIGGER” was used only in association with specific menu items and not with restaurant services overall.
On appeal to the Federal Court, new evidence submitted by Padcon was considered redundant and not material. Thus, the FC did not need to conduct a de novo review of all the evidence.
On review of the Registrar’s decision, based on the original evidence, the Federal Court found the Registrar’s conclusion to be reasonable, that is, that the mark was not being used as registered, and that deviation was material.
By: Ruth M. Corbin, LL.M., Ph.D., Corbin Partners Inc.