Use of a trademark only by a licensee will not consider "use" by the proprietor unless registered

20.2.11

Use of a trademark only by a licensee will not consider "use" by the proprietor of the mark unless the licensee is registered as a registered user

The trademark Registrar has ruled based on the Supreme Court precedent, that since the proprietor of a registered trademark did not actually use the trademark on its own, but rather licensed the use to his licensee, without registering the licensee at the Trademark Gazette, the use by the licensee could not consider to be use by the proprietor. Therefore, the registered trademark can be canceled based on lack of use.

The Registrar has also ruled that a use of a trademark only as a company name may consider use for the requirement of section 41 (cancellation of a mark in lack of use) only if the name of the company is affixed on the products listed in the trademark registration.

Decision from February 20, 2011 – of Oz v. Of Tene (application for cancelation of the trademark no. 169322 "Of Tene – Mifaley Basar").