Can’t have your steak and eat it too – expunging TM’s for deviated use

Justice Kane dismissed an appeal from the Registrar of Trade-Marks expunging Padcon’s trade-mark for “THE OUTRIGGER STEAKHOUSE AND BAR” pursuant to section 45 of the Trade-marks Act in Padcon Ltd.  v. Gowling Lafleur Henderson LLP, 2015 FC 943.

Padcon licensed the use of the trade-mark to Shoeless Joe’s but the only evidence of use of the mark was the presence of the word “Outrigger” beside menu items such as the “Outrigger Salad” or the “Outrigger Seafood Topper”. The Registrar found that the mark was not displayed in a way that “indicated that it should be considered in association with the broader restaurant services.”

Padcon submitted new evidence on appeal, including a menu, BBQ contest notice, and a combination menu and notice with reference to a “Outrigger Surf and Turf”, but Justice Kane held that this would not have changed the Registrar’s decision:

[60] There is nothing in the new evidence that would materially affect the Registrar’s decision regarding the use of the mark as registered. The new evidence includes a menu, stated to be typical of menus in the relevant period. However, as noted above, the menu shows only one reference to “Outrigger Surf and Turf” and does not demonstrate multiple menu items bearing the mark, which the applicant described as signature or feature dishes. The Registrar had noted that if multiple menu items had been displayed in close proximity his conclusion may have been different. However, the new evidence does not show multiple menu items; the same menu item is noted only once on the new exhibits.

A copy of the decision can be found here.