Atticus Canada Inc v Atticus Management LLC, 2014 TMOB 196
Atticus Management LLC suffered the deletion of “investment advice” from the list of services covered by its Canadian registration of the trade-mark “ATTICUS” (TMA675,808) (“the Mark”) in proceedings under Section 45 of the Trade-marks Act initiated by Atticus Canada Inc.  The registered owner filed evidence of trade-mark use consisting of a certificate of its name change to Atticus Management LP,  financial reports displaying the Mark addressed to Canadian clients,  copies of license agreements allowing Atticus Capital LP to use the Mark,  and a plain business card displaying the Mark.  Such evidence was taken to demonstrate use in association with financial services more generally, but not in association with investment advice, [10,11,13] and there was a failure to file any evidence of special circumstances excusing non-use of the Mark. 
Atticus Management LLC had registered the Mark for (1) Financial services, namely investment fund management, and (2) Financial services, namely investment fund management, hedge fund services, investment fund services, investment management and investment advice.  The evidence, which was furnished by a witness for Atticus Management LLC, was taken to demonstrate use for each of the registered services during the relevant period except for investment advice. [10, 11, 13]
The financial reports on their own were considered to demonstrate evidence of use of the Mark in association with all of the registered services except for investment advice.  The reports could not demonstrate use in association with investment advice as the reports were merely passive reporting. 
The license agreements on their own similarly do not demonstrate use of the Mark in association with investment advice, but furthermore they were not taken to demonstrate use in association with any of the registered services. “In my view, these license agreements on their own do not constitute evidence of continued use of the Mark in Canada during the relevant period in association with ‘investment advice’, much less any of the registered services.” 
Since the business card displayed only the Mark, the witness’s name, contact information and New York address, it did not contain enough information to be considered advertising of investment advisory services, especially since there was no evidence that the cards were distributed in Canada. 
The certificate of name change was not discussed in the analysis, but it is difficult to see how it could constitute evidence of investment advice.
The registration was thus amended to delete “investment advice” from the list of services. 
In this case we see two interesting distinctions that the Board draws in terms of constituting use. In line with Desjardins Sécurité Financière v Sun Life Assurance Company of Canada (2006), 50 CPR (4th) 154 (TMOB), the management of existing accounts, even by merely passively sending financial reports to clients, can constitute use for financial services more generally.  However, the Board draws the line at investment advice, which would seem to require more active participation on the part of the Registrant.
Most importantly for intellectual property practitioners is the Board’s decision that merely licensing out a trade-mark does not constitute use – for any service. The Board did not consider evidence (or it was not led) as to whether or not Atticus Capital LC, to whom the Mark was licensed, was performing or advertising investment advisory services in Canada. If evidence was simply not led, then the impact of this decision is less severe. However, if later Board decisions read this case as strictly meaning that licensing out a trade-mark does not constitute use, and do not consider the licensee’s use, then maintaining trade-mark protection for licensed marks could become problematic.