At the request of Miller Thomson LLP (the Requesting Party), the Registrar of Trademarks issued notices under section 45 of the Trademarks Act in respect of Registration Nos. TMA873,050 for the trademark BEHAVIOUR (the Word Mark) and TMA873,051 for the trademark
(the Design Mark), collectively referred to as the Marks, to Behaviour Inc. (the Owner), both registered in association with the following services:
Business management consultation services provided to businesses and charitable organizations in the fields of sponsorships, digital or social media design and execution, brand design and creation, public relations, consumer and market research, the design and implementation of strategy plans and management projects, marketing activities and the launching of new brands and products, and interior retail space and merchandise display design.
In Miller Thomson LLP and BEHAVIOUR INC., 2023 TMOB 182 (CanLII), the Registrar of Trademarks maintained the registrations for the Marks in respect of all services.
The affidavits submitted by the Owner were considered by the Board to clearly demonstrate ubiquitous display of the Design Mark during the Relevant Period.
The Hearing Officer noted that that certain evidentiary materials showed only the stylized version of the word BEHAVIOUR from the Design Mark and noted that, because the dominant feature of the Design Mark is the stylized version of the word BEHAVIOUR, such that the trademark, even if used without the finer graphic details, retained its identity, and remained recognizable, use of the stylized word was considered to constitute use of the Design Mark as registered.
With regard to use of the Word Mark, the Hearing Officer referred to the well-established principle that a registration for a word mark can be supported by use of that mark in any stylized form and in any colour and therefore found that use of the Design Mark, and more particularly its dominant feature, the stylized word BEHAVIOUR, also constituted use of the Word Mark.