In 88766 Canada Inc. v. Barlow, Menard & Associates, the Registrar of Trade-Marks had to determine whether a registered trademark had been used, by the registered owner, during a certain three-year period. If not, the trademark registration would be expunged. The evidence submitted showed that the registered trademark, THE TRADEMARKER & DESIGN, had been used on a newsletter which was distributed free-of-charge via the Internet to a trademark agency's clients and potential clients.

While the primary reason for rejecting the evidence was that the use of the registered trademark had not been by the registered owner, the hearing officer went on to add that even had that not been the case, the trademark would have been expunged, for the evidence did not constitute "use" (as defined in the Trade-marks Act) of the trademark in association with periodical publications.

The hearing officer noted that there was no evidence that the trademark had been used "in a commercial context" in association with the publication. The free distribution of the publication was not done with a view to gaining profit through, for example, the sale of advertising space or in anticipation of securing orders and sales of the publication, and thereby acquiring profits from it.

The hearing officer concluded that the publication bearing the trademark was used in the context of a service for keeping clients informed of changes in various trademark procedures, rather than in association with publications in a commercial context.

The requirement for a direct profit-making motive is consistent with the 1995 decision of the Federal Court in Gowling, Strathy & Henderson v. Royal Bank of Canada. In that decision, the Federal Court found that the internal circulation of a bulletin by the Royal Bank of Canada did not constitute use of the registered trademark INFORMACTION in association with the wares set out in the trademark registration, which were described as "printed publication[s], namely a consumer services bulletin relating to banking published from time to time."

If a free publication cannot be directly linked to trade or profit, its distributor should consider protecting the distinctive features of the publication by means other than a trademark registration for wares. Options which could be explored include investigating whether the trademark registration should encompass services as well as wares. Moreover, if the distributor is a university or qualifies as a "public authority" under Section 9(1)(n)(iii) of the Trade-marks Act, it can request that the Registrar of Trade-marks publish notice of its adoption of an official mark in the Trademarks Journal. Otherwise, a "logo" or symbol (or even design of the publication) could qualify for registration as an "artistic work" under the Canadian Copyright Act, which could provide a means of deterring unauthorized reproduction.