North Brewing Company Ltd. v DLA Piper: What is use of a trademark?

In the recent decision of North Brewing Company Ltd. v DLA Piper (Canada) LLP, 2023 FC 1188, the Federal Court clarifies the extent to which variations of a registered trademark will constitute use of the mark by the owner in cancellation proceedings pursuant to section 45 of the Trademarks Act.

In this case, the Registrant, North Brewing Company Ltd., had a trademark registration for the word mark NORTH BREWING in association with the goods “Brewed alcoholic beverages, namely, beer, ale, lager, malt liquor; Promotional items, namely, beer glasses, mugs, bottle openers, key chains, clothing, namely, shirts, hats, jackets, and pants.”

Justice Fuhrer began her analysis on the issue of use with the leading and often cited test from Registrar of Trade Marks v CII Honeywell Bull, [1985] 1 FC 406 (“Honeywell”) to determine whether use of a modified version of a registered trademark constitutes use of the mark:

“The practical test to be applied in order to resolve a case of this nature is to compare the trade mark as it is registered with the trade mark as it is used and determine whether the differences between these two marks are so unimportant that an unaware purchaser would be likely to infer that both, in spite of their differences, identify goods having the same origin.”