Official marks are an exotic species in the world of trademarks and a purely Canadian invention. They will soon become more vulnerable than ever due to the coming into force at some point in 2023 of a new provision of the Trademarks Act allowing third party challenges.
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Trademark Owners and Franchisors Beware: in Milano Pizza Ltd. v. 6034799 Canada Inc., Lack of Licensor Control Leads to Invalidation of Trademark
In its recent Milano Pizza Ltd. v. 6034799 Canada Inc. decision, the Federal Court ordered the expungement of a trademark registration because the plaintiff did not exercise sufficient control over the use of the trademark by its licensees. This decision provides a helpful reminder of the dangers of relying on verbal agreements instead of written trademark licenses, and the need for trademark owners to maintain control over their licensees.
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