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Permission to use a trademark must be registered to ensure that there is no misleading of the public

October 27, 2021
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A company sought to revoke the registration of an existing trademark because the trademark owner has not used it directly, but only through another company which has no corporate connection to her and for which no permission for use has been recorded.

The Trademarks Registrar denied the application and held that the trademark could not be revoked due to lack of use. A trademark that has not been used for a period of at least 3 years can be revoked in order to correctly reflect the commercial reality, prevent the existence of marks that have lost their relevancy in the registry and allow the general public to use them. Use of a trademark can be any commercial action from which the public can understand that the mark is related to a particular commodity and a trademark owner may make use of the trademark directly or permit another to make use of the mark, provided that such permission is registered. Registration is required to ensure that it does not mislead the public or serve any other unworthy purpose. Here, the trademark owner is the presenter of the products, and uses her name to give the products bearing her name their value. Thus, the trademark owner made use of the mark, in her role as presenter, and also gave another company the permission to do so, a permission which was not recorded, but was likely to be easily recorded as it is not misleading and was given in good faith. In light of these circumstances, it cannot be determined that there was lack of use which justifies the revocation.