Bulldog Bag Ltd. made, not surprisingly, bags. Specifically, they manufactured plastic and paper bags under the brand name “Marathon”. They registered the word “Marathon” as a trade-mark in Canada for “plastic bags and covers” and “paper bags”.
The problems for Bulldog began when it started printing its trade-mark on the bags themselves. Sometimes they used “Marathon Packaging Ltd.” In other cases it was “Marathon PkgTM”. In none of the cases did they just use “Marathon”.
Bulldog was challenged to prove they were actually using their registered trade-mark. As we discussed in Part 1 of this series, use of a trade-mark is mandatory to maintain its validity. If it was found Bulldog was not using the trade-mark, they could lose it and, allowing someone else to grab it.
As it turned out, that’s what happened. The case was heard by a hearing officer at the Canadian Trade-marks Office and it was decided that Bulldog had not used the mark as registered. In particular, there was nothing to set off “Marathon” from the other words and nothing used to bring home the fact it was a trade-mark and not just part of a business name. Thus, the officer held there had not been use and the registration was expunged.
The Bulldog case has been questioned and in some cases distinguished on its facts but it raises a serious issue: any continued deviation from the precise wording of a trade-mark can threaten its status. It might be that a minor revision will not affect the use, although Bulldog’s change itself was not that significant. Nevertheless, your goal is to minimize uncertainty and risk as much as possible, especially where it could nullify a trade-mark or lead to unwanted court challenges. You will want to err on the side of safety.
So what should you do? The easy answer is use the trade-mark exactly in the form registered. If it is an unregistered mark, you want to use the mark consistently in exactly the same fashion time after time.
This seems like a no-brainer. Why doesn’t everyone use the proper form? Most of the issues we’ve seen have resulted from people trying to fit the trade-mark into a particular graphical look or style. The full registered mark might not fit in the space allotted, for example, or it might look more “balanced” without part of it. Whatever the reason, it’s a good case for reminding your marketing department or anyone else tasked with displaying the trade-mark that they don’t have free rein to change it.
We cannot overstate the importance of use, and use in a consistent manner, when dealing with trade-marks. The consequences of not doing so are extreme and possibly fatal to the trade-mark protection. It is another reason that companies with value in their trade-marks put detailed guidelines in place for use of a trade-mark. This is especially so if you are allowing third parties to use your mark.
As mentioned above, this problem is more pronounced for registered trade-marks. In the next instalment we will talk about some of the things you should consider for your trade-mark before you register it.