TGI Friday's of Minnesota, Inc. v. Canada ( Registrar of Trade Marks )
A-189-81
Stone J.A.
22/4/99
7 pp.
Appeal from Trial Division decision ([1982] 1 F.C. 241) upholding Registrar of Trade Marks decision to expunge trade mark "Friday's" from register under Trade Marks Act, s. 44-Trade mark registered on May 4, 1973 in name of Friday's Ltd. of which Herman Lindy president, major shareholder-In 1977, company assigned trade mark to Lindy who became "registered owner"-Notwithstanding assignment, company continued to make use of trade mark to exclusion of Lindy even though company not "registered user" under Act, s. 49-According to Trial Judge, phrase "used in Canada" in s. 44 requires use of trade mark by registered owner unless actual user of trade mark "registered user" under Act, s. 49, as such person "permitted" to use trade mark-Appellant arguing legislation amended to recognize use of trade mark by company as sufficient to satisfy "use in Canada" requirement of s. 44-Phrase "and is deemed always to have had" in Act, s. 50(1) intended to declare law not only for future but for past, should be applied accordingly unless some obstacle in way of doing so-Company used mark under oral licence from Lindy or under arrangement tantamount to oral licence-Mark remaining under Lindy's direct or indirect control-Appeal allowed-Trade Marks Act, R.S.C. 1970, c. T-10, ss. 44, 49-Trade-Marks Act, R.S.C., 1985, c. T-13, s. 50 (as am. by S.C. 1993, c. 15, s. 69).