Trademark Decisions

New evidence on appeal still fails to show evidence of use of the mark as a trademark
Illico Communication Inc. v. Norton Rose S.E.N.C.R.L., 2015 FC 165

Illico has unsuccessfully appealed from a decision of the Register of Trademarks, who expunged the registration of the trademark ILLICO COMMUNICATION for a failure to provide evidence of use of the mark for the registered services over the relevant three-year period.

The registered services consisted of “Publishing graphics, corporate graphics and promotional and communication graphics, specifically advertising, magazines and signs, design of Internet showcases and photographs, and related services, specifically writing, translation and proofreading”. Illico filed what it called evidence of use for each of the services, except for translation. The Registrar found that the evidence showed that the mark was being used as a company name, but not as a trademark in association with services. Also, some of the services were found to have never been offered to third-parties, but was only performed for Illico's benefit.

New evidence was filed on appeal and so the Court reviewed the case de novo. Even with this new evidence the Court was unable to find that the mark was being used in conjunction with the registered services. Rather, the Court found that another related mark was used with the service, the mark was being used as the name of the business and not as a trademark, or the use fell outside the three-year period. The Court ordered the expungement of the mark.

(Note: this decision was rendered on February 9, 2015, but the English translation was only recently released.)


Chantal Saunders

Beverley Moore

Adrian J. Howard


Intellectual Property