You have to use it, or you’ll lose it, when it comes to trademarks. When licensing, you have to use it and control use of it, or you’ll lose it.

A trademark owner (Licensor) can grant permission to another individual or corporation (Licensee) to use their trademark on mutually agreed terms and conditions. Historically, trademark licensing was impossible because it was considered false or deceptive representation to consumers that the goods or services were emanating from a source other than the owner. Currently, trademark licensing is permitted without risking trademark rights as long as the Licensor remains in control of the nature and quality of the goods or services sold in association with the trademark (Canadian Trademarks Act s. 50).

Canadian courts recently considered the issue of determining the necessary amount of control that a Licensor must have over the final product or services of the Licensee to maintain their rights in the licensed trademark. In Milano Pizza Ltd v 6034799 Canada Inc, 2023 FCA 85, the Federal Court expunged a trademark registration for the MILANO PIZZERIA design mark because the owner and licensor, Milano Pizza, did not remain in sufficient control of its licensees’ use of the trademark. Specifically, the court found that it was detrimental to Milano Pizza’s trademark rights that they exercised little to no control of the character or quality of the services, “including the finished pizza products and the speed at which or how food orders [were] filled”.

Based on this decision, trademark owners need to assess that they assert sufficient control when licensing their marks. Specifically, licensors need to pay close attention to the way that the trademark is used and to the quality of the finished products or services offered by licensees. What constitutes sufficient control of a trademark will vary based on the goods and services, and their respective industries.

Considerations for Trademark Licensing:

Protect your trademark rights by considering the following trademark licensing strategies.

  1. Execute a written trademark license agreement with specific standards and follow-up control (e.g., regular inspection of goods and services)
  2. Give public notice of your trademark licenses, namely the trademark [insert mark] is owned by [insert name] and used under license.
  3. Exercise control over your trademark licensees’ use of your trademarks.

Click here for the full Milano Pizza Ltd v 6034799 Canada Inc, 2023 FCA 85 decision.


This article is provided for informational purposes only and is not legal advice. For further information or assistance in filing a trademark application or a request for expedited examination, please contact us by phone (416) 847-0054 or by email at

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