Co-authored with Adam Haller
Now that spooky season is over, it is the perfect time to check your trademark portfolio for “mutant” trademarks that may still be lurking.
Companies frequently update their brands and logos. Over time, small changes can add up, and a trademark being used in the market may deviate significantly from, and no longer constitute use of, the trademark as originally registered.
This disconnect between the trademark as used and as registered can make the trademark registration: (i) vulnerable to cancellation for non-use; (ii) vulnerable to expungement for abandonment; and (iii) harder to enforce in opposition or infringement proceedings.
How far is too far?
A trademark is used as registered when it maintains its identity and when it remains recognizable despite any differences between the version used and the version registered.[1] A trademark remains recognizable when the “dominant features” of the trademark are preserved and when any differences are so unimportant as not to mislead an unaware purchaser, do not stand out, are clearly descriptive, or suggest distinct trademarks.[2]
Decisions from the Trademark Opposition Board (TMOB) over the past year reveal that “mutant” trademarks typically fall into one of two categories: (1) where the registered trademark is used in its entirety combined with other matter; and (2) where the registered trademark is not used in its entirety.
1. Where the registered trademark is used in its entirety combined with other matter:
The TMOB will consider whether the registered trademark is distinct from the added elements. In the following examples from cases over the past year, the TMOB found that added matter was set apart from the registered trademark by:
- spacing, such as where additional elements are on a different line or separated from the registered trademark;
- different fonts, sizes, and colours;
- the ® symbol to highlight the registered trademark; and
- descriptive words or minor design elements which do not take away the identity of the registered trademark.
On the other hand the TMOB has found that a trademark is not used as registered where the registered trademark did not stand out from the surrounding material.
Registered: | Used: | TMOB Finding: |
 |  | Used as registered[3] |
JACOBS & CO |  | Used as registered[4] |
SKUNK BRAND |  | Used as registered[5] |
JUICY |  | Used as registered[6] |
ampersands |  | Used as registered[7] |
SEA CHANGE |  | Used as registered[8] |
ALBERTA |  | Used as registered[9] |
UNIFLOOR AQUA |  | Used as registered[10] |
UNIFLOOR | | Not used as registered[11] |
2. Where the registered mark is not used in its entirety:
The TMOB will consider whether the dominant features are sufficiently maintained such the mark remains identifiable. In the following examples from this past year, the TMOB found that the trademark was used as registered where:
- the dominant features were maintained;
- missing elements of the registered trademark were minor;
- fonts and sizing made the dominant features stand out or did not make the mark lose its identity; and
- only the arrangement of the mark changed.
On the other hand, the TMOB has held that a trademark was not used as registered where:
- the dominant features were lost;
- the trademark used different fonts, layouts, and other additional elements; and
- the ideas suggested by the trademarks changed.
Registered: | Used: | TMOB Finding: |
 |  | Used as registered[12] |
SKUNK BRAND |  | Used as registered[13] |
 |  | Not used as registered[14] |
 |  | Not used as registered[15] |
 |  | Not used as registered[16] |
SESAME | SESAME STREET | Not used as registered[17] |
Conclusion:
Even seemingly minor changes can lead to a finding that a trademark is no longer being used as registered – risking the owner’s ability to maintain and enforce the registration.
As you finish your Halloween clean-up, take a moment to reflect on your trademark portfolio and consider whether any of your trademarks have “mutated” beyond recognition.
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[1] Canada (Registrar of Trade-marks) v Compagnie International pour l’informatique CII Honeywell Bull (1985), 4 CPR (3d) 523 (FCA).
[2] Promafil Canada Ltée v Munsingwear Inc, 44 CPR (3d) 59 (FCA); Nightingale Interloc Ltd v Prodesign Ltd (1984), 2 CPR (3d) 535 (TMOB); 88766 Canada Inc v National Cheese Co (2002), 24 CPR (4th) 410 (TMOB).
[3] PKF Chambers Inc. v PKF Trade Mark Limited, 2025 TMOB 98.
[4] Smart & Biggar LP v 2817334 Ontario Inc., 2025 TMOB 16.
[5] Fasken Martineau DuMoulin LLP v Zoe International Distributing, Inc., 2025 TMOB 46; Fasken Martineau DuMoulin LLP v Zoe International Distributing, Inc., 2025 TMOB 45.
[6] Fasken Martineau DuMoulin LLP v Zoe International Distributing Inc., 2025 TMOB 48; and Fasken Martineau DuMoulin LLP v Zoe International Distributing, Inc., 2025 TMOB 50.
[7] Lavery de Billy, LLP v Spencer Xiong, 2025 TMOB 119.
[8] Gowling WLG (Canada) LLP v Sea Change Corporation, 2024 TMOB 195.
[9] Prowse Chowne LLP v Alberta Distillers Limited, 2024 TMOB 214.
[10] Unifloor Trading Inc. v Quickstyle Industries Inc., 2025 TMOB 7.
[11] Unifloor Trading Inc. v Quickstyle Industries Inc., 2025 TMOB 8.
[12] Borden Ladner Gervais LLP v JAWHP, LLC, 2025 TMOB 5.
[13] Fasken Martineau DuMoulin LLP v Zoe International Distributing, Inc., 2025 TMOB 45.
[14] Fit Foods Ltd. v Glanbia Performance Nutrition Limited, 2025 TMOB 82.
[15] Gowling WLG (Canada) LLP v Pret A Manger (Europe) Limited, 2025 TMOB 69.
[16] A. Nattermann & Cie. GmbH v Familiprix Inc., 2024 TMOB 220.
[17] Sesame Workshop v Advanced New Technologies Co., Ltd., 2025 TMOB 41.