2016 is fast drawing to a close. Looking to the next year, some trademark owners undoubtedly are considering “refreshing”/modernizing trademarks. This is all well and good so long as the trademark owner takes the proper steps to protect the result of its initiatives as a recent case in the Federal Court reminds us.

Trademark Tools Inc., hereinafter, “TT” owned a registration on the mark:

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for, inter alia, tools such as hammers, screw drivers and wrenches, registered November 18, 2010. The registration claimed use in Canada since 2003 and included the following colour claim: Colour is claimed as a feature of the trade-mark … A white rectangular bar with narrow red bands at the top and bottom thereof, the white band displaying the word LOGIX, the ‘L’, ‘G’ and ‘X’ being black and the ‘O’ and ‘I’ being gray, with a red umlaut over the ‘O’ and the dot over the ‘I’ being red; the top red band displaying the letters LGX in black.

Sometime later, TT “slightly updated” (the words of its affiant in a non-use cancellation action) to the trademark shown below:

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On December 19, 2014, a Section 45 non-use action was initiated against the above registration. Three times the trademark owner requested extensions of time to file responsive evidence, the third request being refused by the Registrar of Trademarks. The Registrar then expunged TT’s registration on September 22, 2015.

Within two months, TT appealed the decision of the Registrar to the Federal Court and filed an affidavit as evidence that its mark was used in the relevant period. All this effort was to no avail. The registration remained expunged for non-use for the following reasons:

  1. some of the goods sold under a modified mark were not included in the list of goods in the registration.
  2. other goods were sold in association with a substantially different mark wherein, inter alia, distinctive punctuation was absent; different colours were used (red was gone, green was in), and the word LOGIX was displayed horizontally.

The decision of the Court was rendered August 26, 2016. Perhaps anticipating this result, TT applied for the mark LOGIX on June 9, 2016 on the basis of use in Canada since 2003. Had it done so earlier and/or filed an application for the updated version when it started to use it (or even better in anticipation of future use), perhaps it likely would have been spared the expense it suffered when subjected to the non-use proceeding.