Trademark registrants take note – a recent decision from the Trademarks Opposition Board (“TMOB”) serves as a reminder of the importance of using your registered trademark as it is registered.

In Gabriel Meets Apparel Inc. v Perry Ellis International Europe Limited, 2025 TMOB 201, a Section 45 summary expungement proceeding was initiated against Perry Ellis’ trademark registration. The trademark registration in question was for the design of Perry Ellis’ “Original Penguin” design (the “Registered Mark”).

Perry Ellis filed evidence of use in association with certain goods in the registration. The design shown in Perry Ellis’ evidence showed use of a penguin design (the “Penguin Mark”) that differed from the Registered Mark. The Requesting Party argued that “the [Registered Mark] is a caricature of a penguin in a squat posture more akin to a baby penguin, while the [Penguin Mark] is a caricature of an elongated adult penguin…the head, beak, and limbs of the penguins in each design are turned in opposite directions.”

The TMOB reviewed the law on trademark deviation and noted that “where the trademark as used deviates from the trademark as registered, the question to be asked is whether the trademark was used in such a way that it did not lose its identity and remained recognizable in spite of the differences between the form in which it was registered and the form in which it was used”. The TMOB concluded that “[w]hile the direction of the penguin’s head differs, the penguin’s head remains oriented in profile and, as such, I consider this difference to be minor” and that “any evidenced use of the [Penguin Mark] constitutes use of the [Registered Mark].”

This case is a reminder that, despite some variation being permissible, trademark registrants should take care to use their trademark as registered to avoid loss of rights.

A copy of the decision is available here.