Trademarks Summary - Craig 2004
1. UNDERSTANDING TRADEMARK LAW ....................................... 4
A. Introduction to the Trademark Scheme ......................................................... 4
Articles - An Overview of Intellectual Property - Henderson ..................................... 4
Article - Jacoby - Psychological foundations of trademark law. ................................ 5
B. Rationalizing the Protection of Trade Identity................................................ 5
Ladner and Posner articles ...................................................................................... 5
2. THE COMMON LAW OF PASSING OFF ...................................... 6
A. General Principles......................................................................................... 6
(i) Classic Passing Off ............................................................................. 6
Powell v. Birmingham Vinegar Brewery Company  - pg. ................................ 6
ii) Extended Passing Off .......................................................................... 6
Warnink v. J. Townend v. Birmingham Vinegar Company  - pg. 39 ................ 6
(iii) Proof of Misrepresentation ............................................................... 7
Institut National des Appellations d'Origine des Vins et Eaux-de-Vie v Andres
Wines Ltd. (1990) - pg. 45 ....................................................................................... 7
(iv) Need to show misrepresentation...................................................... 8
Cadbury Schweppes Ltd. V. Pub Squash Co. Ltd. (1981) - pg................................. 8
(v) Grey Marketing .................................................................................... 9
Consumers Distributing Ltd. v. Seiko Time Canada Ltd. (SCC)(1984) ..................... 9
(vi) Getup ................................................................................................ 11
Reckitt and Coleman Products Ltd. v. Borden (1990) (UK) - pg. 68 ....................... 11
(vii) Who needs to be confused? Who is the customer? .................... 14
Ceiba-Geigy v. Apotex Inc. (1992) (SCC) - pg. 89 ................................................. 14
B. Reputation and Evidence - Re: Passing Off ................................................ 16
(i) Goodwill Crosses Borders. ............................................................... 17
Orkin Exterminating Co. Inc. v Pestco of Canada Ltd. (1985) (C.A.) ...................... 17
Ray Plastics Ltd v Dustbane Products Ltd (1994) (Ont. C.A.) ................................ 18
Walt Disney Productions v Fantasyland Hotel Inc. (1996) 67 C.P.R. (3d) 444 (Alta.
C.A.) ...................................................................................................................... 19
(ii) Reputation and what P needs to prove ........................................... 20
W & H Ventures Ltd. v Manitoba Lotteries Corp. (1999) 4 C.P.R. (4th) 180 (Man
Q.B.) ...................................................................................................................... 20
Kisber & Co. v Ray Kisber & Associates Inc. (1998 (Que. C.A.) -pg. 125 .............. 20
C. The Relevance of a Common Law Field of Activity ..................................... 22
Walt Disney Productions v. Fantasyland Hotel Inc. (Alberta Ct. of Appeal) (1996) -
pg. 171 .................................................................................................................. 22
McCullough v. Lewis A. May Ltd. (UK) (1947) - pg. 134......................................... 22
Harrods Ltd. V. Harrodian School (1986) (UK) - pg. 140 ........................................ 24
Visa case International Service Association v. Visa Motel Corp. (1983)(BC Supreme
Ct.) ........................................................................................................................ 25
3. STATUTORY TRADEMARK: REGISTRABILITY &
REGISTRATION ............................................................................. 26
A. Names of Surnames: s. 12 (1)(a) ................................................................ 28
Registrar of TMs v. Coles Book Stores (1974) - pg. 179 ........................................ 30
Galanos v. Registrar of TM (1982)- pg. 181 .......................................................... 30
Gerhard Horn Investment Ltd. v. Registrar of TM (1983)(Fed. Ct. TD) (pg.
190)(Craig does not entirely agree with this case) ................................................. 31
B. Clearly Descriptive or Misdeceptive s. 12(1)(b)........................................... 33
(i) Deceptive Mark: ................................................................................. 33
Deputy Attorney-General of Canada v Biggs Laboratories Ltd (1964), (Exc. Ct. of
Canada) ................................................................................................................ 33
(ii) Deceptive origin of goods: ............................................................... 33
Atlantic Promotions Inc. v. Reg. of T.M. (1984), (FCTD) ........................................ 34
(iii) Descriptive: ...................................................................................... 34
Pepsi-Cola Co. of Canada Ltd. V Coca-Cola of Canada Ltd.  (SCC)-pg. 214
Home Juice Co. v Orange Maison Ltee. (1970)(S.C.C.) -pg. 216 .......................... 35
John Labatt Ltd. v Molson Cos. Ltd. (1987), 19 C.P.R. (3d) 88 (F.C.A.) ................. 35
S.C. Johnson & Son v Marketing International Ltd. (1970), (S.C.C.)-pg. 220 ........ 37
Abercrombie & Fitch Co. v Hunting World Inc. (1976) (American case)-s. 12(1)(c)
C. Acquired meaning or Secondary Meaning s. 12(2), s. 32 ........................... 41
Canadian Shredded Wheat Co. Ltd. v Kellogg Co. of Canada Ltd.  -pg. 23341
Shredded Wheat Trap: .......................................................................................... 41
Carling Breweries Ltd. v Molson Companies Ltd. (1984) 1 C.P.R. (3d) 191
(F.C.T.D.) .............................................................................................................. 42
Jacoby On Secondary Meaning[p248] ................................................................... 42
D. Confusing with a Registered Mark - s. 12(1)(d), s. 2, s. 6 .......................... 43
Benson & Hedges (Canada) Ltd. v St Regis Tobacco Corp. (1968) 57 C.P.R. 1
(S.C.C.) ................................................................................................................. 44
Molson Companies v John Labatt Ltd. (1994) 58 C.P.R. (3d) 527 (F.C.A.) ............ 45
Weetabix of Canada Ltd. v Kellogg Canada Inc.  F.C.J. No. 953 ................. 46
(i) Relevance of fame - nature of trade - s. 6(5)(d), s. 15 ..................... 47
McDonalds' Corp. v. Coffee Hut Stores Ltd.  (FCA) .................................... 48
Miss Universe, Inc. v Bohna  1 F.C. 614 (C.A.) ........................................... 50
Pink Panther Beauty Corp. v United Artists Corp.  3 F.C. 534 (C.A.)............ 51
Toyota Jidosha Kabushiki Kaisha v Lexus Foods Inc., (2000) 9 C.P.R. (4th) 297
E. Obscene or Immoral: ss. 12(1)(e), 9(j) - absolute bar to registration ........... 55
Miss Universe, Inc. v Bohna  (F.C.T.D.) - pg. 310 ....................................... 55
In re In Over Our Heads, Inc. 16 U.S.P.Q.2D (BNA) 1653 (1990)-pg. 312 ............. 56
Harjo v Pro-Football, Inc. (1999)(US)..................................................................... 56
Kimberly A. Pace, The Washington Redskins Case and the Doctrine of
Disparagement: How Politically Correct Must a Trademark Be?, (1994)22 Pepp. L.
Rev. 7 .................................................................................................................... 57
F. Connection to an Individual ......................................................................... 57
(i) Trademark Act, ss. 12(1)(e), 9(k), 9(l) ............................................... 57
Carson v. Reynolds (1980) (Fed. Ct. TD) .............................................................. 57
Fawcett v. Linda Lingerie (1984) - pg. 337 ............................................................. 58
Jean Cacharel v. Reitmans Canada (1984)(TM Opp. Board) - pg. 341 .................. 59
Baron Philippe de Rotschchild S.A. et al. v. Casa de la Habana Inc. et al. (1987)
(Ont. H.C.) - pg. 343 .............................................................................................. 59
ii) The Common Law Right of Personality ........................................... 59
G. Functionality ............................................................................................... 60
Pizza Pizza Ltd. v. Registrar of TM ........................................................................ 62
Mennan v. Calumet Manufacturing (1991) ............................................................. 63
Remington Rand Corp. v. Phillips Electronics (classic case)(1995)(FCA) .............. 64
I. Entitlement s. 16, 17, 18(1)(c) ...................................................................... 65
(i) Used in Canada - basis for entitlement ............................................ 67
Lin Trading Co. Ltd. v. Kabushinki Kaisha (1998) (FCA) - pg. 419 ......................... 67
Citrus Growers Association Ltd. V. William D. Branson Ltd. (1990) (FCTD)........... 68
(ii) “In the Normal Course of Trade” ..................................................... 69
Sequa Chemicals Inc. v. United Color and Chemical (FCA)(1993) ........................ 69
(iii) “As a Trademark” - when is it relevant use as a TM? ................... 70
British Petroleum Co. Ltd. v. Bombardier Ltd. (1971) (FCTD) ................................ 70
(iv) Made Known in Canada s. 5 ............................................................ 70
Robert Wian v. Mady (Exch. Ct. of Cda) (1965) - pg. 436 ...................................... 70
Valle's Steak House v. Tessier et al. (1980)(FCTD) - pg. 445 ................................ 71
4. Expungement s. 57 ..................................................................... 72
A. Loss of Distinctiveness .............................................................................. 73
Aladdin Case Industries Inc. v. Cdn. Thermos Products Ltd. And Registration of TM
(Exch. Ct. of Canada) (1969) -pg. 450 - risk of genericism .................................... 73
Heintzman v. 751056 Ontario Ltd.(1990) (FCTD) .................................................. 74
B. Abandonment s. 18(1)(c) ............................................................................ 75
Promafil Canada Ltee v. Munsingwear Inc............................................................. 75
C. Non-Use s. 45 ............................................................................................. 75
Adams v Société des Produits Nestle (1996) 72 C.P.R. (3d) 100 (TM. Bd.) ........... 76
McCain Foods Ltd. v Chef America Inc. (1996) 71 C.P.R. (3d) 103 (FCTD) .......... 77
5. ASSIGNMENT & LICENSING TRADEMARKS s. 48 and s.50 .... 78
Breck's Sporting Goods Co. Ltd. v Sportcam Co. Ltd.  1 S.C.R. 527 ............ 79
Dynatec Automation Systems Inc. v Dynatech Corp. (1995), 64 C.P.R. (3d) 101 .. 80
6. INFRINGEMENT ......................................................................... 81
A. Confusing Usage ........................................................................................ 81
i) Similarity of Marks .............................................................................. 82
Pepsi-Cola Co. of Canada v. Coca-Cola Co. of Canada (1940) ............................. 82
Mr. Submarine Ltd. V. Amandista Investments Ltd. (Mr. Subs 'n Pizza) (1987)-pg.
537 ........................................................................................................................ 83
B. Bona Fide Use Defence - Exception s. 20(1)(b).......................................... 84
i) Accurate Descriptions ........................................................................ 85
Bagagerie SA v. Bagagerie Willy Ltee (1992) ........................................................ 85
Guccio Gucci S.P.A. v. Meubles Renel Inc. (1992) ................................................ 86
C. Concurrent Use - s. 21 of the TM Act ......................................................... 86
Kayser-Roth Canada Ltd. v. Fascination Lingerie Ltd. (pg. 565) ............................ 86
D. Comparative Advertising ............................................................................. 87
Clairol International Corp. v. Thomas Supply Equipment Co. Ltd. (1968) - pg. 570 88
Eye Masters Ltd. Ross King Holdings Ltd. (1992) - pg. 581 .................................. 91
Futureshop Ltd. V. A & B. Sound Ltd. (1995) (pg. 584) .......................................... 91
E. Dilution ........................................................................................................ 92
Source Perrier S.A. v. Fira-Less Marketing Co. Ltd. (1983) (FCTD) - pg. 589 ........ 92
1. UNDERSTANDING TRADEMARK LAW
o Trademarks are concerned with brand name logos and business names that are
used in relation to products or services in the market place.
o This law protects the right to control that brand name and that logo.
o Some people rather refer to trademarks as industrial…not protected as an
o We are protecting the way a mark is understood by the public. We are rewarding
the way the brand has developed a commercial value in the market place. We
are rewarding a commercial enterprise or use of a brand.
o Something can have both trademark and copyright protection attached. Eg.
Logos. Who made it and who used it as a brand in the market place? Trademark
tries to identify the trade source of a product.
o Trademark law tries to prevent confusion for customers about the brand. It tries
to protect the identifying function of that mark.
o Must ask about the way that the source of the product want to be recognized and
received by the public.
Re: Barbie case where the song Barbie girl was used. Appeal was denied to Mattel.
A. Introduction to the Trademark Scheme
Trademark (defn): a symbol or indicia of the source of the wares. Trademark law allows
the person to have a claim to the symbol or indicia.
Articles - An Overview of Intellectual Property - Henderson
o Trademark was not granted by state but granted through the use of the mark through
the market. Later a parallel system was developed which is more formal for
registering and protecting trademarks. The protection from trademark from common
and also through statutory regime. The stat regime did not displace the common law
rights and it still exists.
o The "R" beside words means that it is a registered trademark and the "TM" means
that we think that this is trademark but not necessarily a registered right but this
warns people that the think they have right (this is a common law example) while the
"R" symbol is a statutory right.
o Common law: "Passing off" this is the common law action for which we are
concerned. This is the root or origin of all trademark law. The D passes them self off
as the P. Ex. Trader A is thinking about how he should represent himself in the
marketplace and he decides that the best way to do this to pretend that he is trader B
and B is already in a good place etc. They think that they can get a chunk of B's
market. So then B has a passing off claim against A. If public believes that product
came from Trader B then you have action. This is also referred to as free riding.
o There has been a Trademark Act since 1868 and codified what was already at
common law. The Act operates along with common law allows traders who have
used a particular mark in association with their product to secure registration for that
o So you do not have to rely upon the common law in order to protect mark such as
Herbal Essences. There are some advantages to common law but you do not
displace what other protection you would have at common law. If for example your
registration was not valid you can still argue at common law and you can win an
action. It is usually wise to bring an action under both realms.
o The federal office responsible for registration is Canadian Trademark office which is
part of Canadian Intellectual Ppty who is governed by Industry Canada. There is an
opposition board who opposes registration.
o One of the important things to remember is that this is not public law but rather
private so the parties in a case are private parties. The key concepts in both
systems are the same. Notion is like the use of a trademark and what does it means
for a mark to be confusing and how do we determine that? Distinctive? This is the
key to what trademark is (under both systems)
Article - Jacoby - Psychological foundations of trademark law.
o We really care about the source in the part about what it tells us about the qualities
and characteristics of the source. "These are the things we want you to think it
reps" - this makes the mark more powerful. It makes people want to buy and pay a
premium for it.
o The whole idea of brand marketing is premised upon the fact that there is protection
for trademarks. Is the mark helping us to become more efficient as consumer and
what power does it have over what we buy?
o The cognitive network - the way the brain operates. Networks - nodes (nodes are
meanings and feelings) and links. It is a process of activation which will activate one
node and then another and so son. Some nodes have more spokes coming off
them than others. Ex. "I'm loving it"
B. Rationalizing the Protection of Trade Identity
Ladner and Posner articles
o It is eco efficient - it would be inefficient for all us to only have first names.
o When you can communicate a lot through a name then there is efficiency in
language and communication.
o Encourages producer to maintain consistently good quality. So it does generate an
incentive for the producer to make a good product. They will benefit from real
purchasers. The producer with brand name would lose it two ways - the reduction in
sales and loss of value of the brand. Are brands truly efficient?
o Does buying expensive powerful brand that is not worth it take out the efficiency that
Ladner and Possner talk about.
o Economic Rationale
o Trademark protection encourages owners to maintain a quality product
o Reduces consumer search costs and helps consumers identify products
o Prevents others from infringing on built up good will
o Traditional Rational perspective
2. THE COMMON LAW OF PASSING OFF
A. General Principles
(i) Classic Passing Off
Powell v. Birmingham Vinegar Brewery Company  - pg.
F: Yorkshire Relish sold in glass bottles. D sells glass bottle relish with Y/R embedded in
I: Whether a consumer could be misled looking at both products?
H: For P. Yes, consumer would be misled. Although there are limits on the rights that
TM law protects, the words Yorkshire Relish do signify the producer.
It still has distinctive force and indicates the source of the product.
This case signifies the tension that exists between allowing for competition and
the protection of T/M law. You can compete as long as you don‘t create
confusion vs how TM can be an obstacle to competition.
ii) Extended Passing Off
Warnink v. J. Townend v. Birmingham Vinegar Company  - pg. 39
Facts: Advocaat - eggs and spritz but no wine it. The other one had wine in it and they
said that it was Advocaat. The P had 75% of the market. They showed that they were
responsible for the popularity of the drink. They had generated a lot of goodwill that was
attached to the Advoccat drink and the D were trying to benefit from the good will as
though it belonged to the same category of good.
Issue: Advocaat was a drink with recognizable quality and while an expert would be able
to distinguish b/w the two could a regular person could confuse the two as which was
o The scenario presented an opportunity for court to identify the right and interests of
passing off in general. The purpose is not to see classic form of tort - it should not be
separate kind of action - that classic scenario is one classic instance of a wider
category of tort.
o The first stage that allowed Lord Diplock to make the transition to extended form was
in recognition as to what does the right protect?
o That realization or recognition opens door to all different ways the right can be
infringed. The court talks about the Spalding case and the champagne cases and it
makes it clear that the basis of the ppty right is ppty in the goodwill attaching to the
mark and not ppty by itself.
o The point was if there is anything that is ppty interest we should not be misled to say
that the subject of the ppty is not the mark but in the goodwill and reputation of the
business and that goodwill is attached to the mark.
o Is the goodwill we are protecting and D not allowed to free ride. We are protecting
rights of PP as entrepreneur. The only issue is the creation of reputation and
goodwill. If the right is in the goodwill then you can extend the nature of the misrep?
o You don't have to misrep by misusing other's name and attaching to product. It
should be something that can result in confusion and result in harm to P's goodwill. If
the ppty interest is in the P's goodwill then the harm we are concerned with here.
o “A substantial reputation and goodwill has been developed , over half a century or
more, by the name “Advocaat” as that of a drink with recognizable qualities of
appearance, taste, strength and satisfaction.” it was a distinct and recognisable
species of beverage” – may be slight difference between the different manufactures of
Advocaat; but same class of product. Establised 5 prong test for extended passing
(iii) Proof of Misrepresentation
Institut National des Appellations d'Origine des Vins et Eaux-de-Vie v
Andres Wines Ltd. (1990) - pg. 45
Facts: had been selling sparkling wine under the name "champagne". There was
something that had to say Canadian Champagne and there is nothing hat D had not
done this according to that directorate. It was selling product as Cdn. champagne.
Held: But now meaning of champagne has been diluted by misuse over the years so we
have no misrep. The passing off action has to fail.
o " The 'Passing off' has been extended beyond its original meaning which involved the use
of another's TM or name so as to make one's own goods appear to be the product of that
other; it now encompasses many other aspects of unfair trading and would the use of the
word 'champagne' so as to induce the customer to believe that what was being sold was
indeed the esteemed product from the Champagne region"
o Most important element missing here is misrepresentation. It is the basis for the
passing off action.
o The court finds this is missing b/c term champagne no longer means champagne
from champagne region in France. Cdn. champagne has become known as a distinct
product and not French and unlikely to be confused. It has also to build up its own
reputation and clientele and goodwill exist in Cdn. Champagne.
o If this action had been brought many years before then you would have had different
o Passing off is based upon reputation and goodwill; thus the ability to succeed
depends on the geographical extent of the reputation or goodwill (e.g. restaurant
name in Moncton may only have local reputation; and thus only protection in this
Summary of cases:
o Extended passing off extends to forms of misrep that a trader may make and that
could be harmful to the traders and it allows the harmed trader to bring action against
party that misreps it products. Under classic form the only form was that they repped
his goods as those of another. Extended included any misrep that would be material
to customers and possibly harm P's trade with it customers.
(iv) Need to show misrepresentation
Cadbury Schweppes Ltd. V. Pub Squash Co. Ltd. (1981) - pg.
Facts: P developed an entire market for its soft drink ―Solo‖ by aggressive and creative
promotion; D deliberately set out to ―cash in‖ on this market by copying the taste of the
plaintiff‘s drink for its own ―Pub Squash‖ and running imitative television commercials
o Damage resulting from misrep is called passing off. This is what we are looking for in
this case. It reminds us that the concern is not really with protecting the brand and
the market that the entrepreneur has created but the goodwill that has attached.
o pg. 49 "Test applied by Powell J. in the instant case was to inquire whether the consuming
public was confused or misled by the get-up, the formula or the advertising of the
respondent's product into thinking that it was the appellant's product." Need for the
defendant to be able to compete in the market and the protection of the market are at
odds with each.
o In order to maintain the appropriate balance - was the consuming public confused or
misled by the formula, advertising of the respondent's product into thinking it was the
appellant's product? If the P was in a position to prevent the D to use the same
marketing formula no matter what then obviously that would create a monopoly in
those themes so that would look more like a pure ppty right in those themes and
those images as opposed to the goodwill.
o Has the goodwill been harmed by a misrep? In other words: if it were ppty right then
it would have been invaded if they took images etc. If it was the goodwill then it
would only be harmed if there was confusion in the market. If there is not confusion
then it is just competition but if the public becomes confused as to the source of the
product then we have a possible tort. We have to ask if the person used the
images and ads in a way that has confused the public?
o Passing off is not concerned with protecting the labour that was invested in making
that market - it is protecting the goodwill that attaches to that product and to the
manufacturer of that product. - it protects against passing off and confusion.
Held: The Court found that there was no confusion. When they looked at how the
consumers were actually responding to these products there was actually no confusion
to the product - they had 26 witnesses - this is a question of fact not a question of law
and this requires serving evidence, witnesses - they applied test of the ordinary
reasonable consumer - the critical issue is that consumers were led into believing that
pub squash was in fact the P's product - the answer was NO.
o It is important to know that courts do actually bear in mind - they put realities of
marketplace - pg. 50 "for one must take into acct the nature of the marketplace and the
habits of ordinary purchaser...it is not uncommon to display similar products next to each
other or in close proximity and the purchase of a soft drink is often a casual connection"
The cans were clearly different. If you were just to examine you would be able to see
this but those does not get rid of this issue. The Court realizes that buying a soft
drink is a casual transaction.
o Should you put those things together the Ds deliberately tried to capitalize upon the
Ps efforts in the market and the D had steeped into the Ps market in order to exploit
but what he did not do was try to step into the Ps shoes - the intention was to take
adv of the Ps market but it was not the intention to pass themselves off as the P.
o You are just taking adv there was no infringement b/c there was no confusion - the D
was in his right to exploit the P's market. pg. 53 "It is only a plaintiff can establish that
a D has invaded his 'intangible property right' in his product by misappropriating
descriptions which have become recognized by the market as distinctive of the product that
the law will permit competition to be restricted"- the harm flowed from successful
competition and did not flow from consumer confusion. Here preserving the
competition meant not protecting the Ps investment vs. the D's activity - nothing
wrong with how competition was carried out.
(v) Grey Marketing
Consumers Distributing Ltd. v. Seiko Time Canada Ltd. (SCC)(1984)
Facts: They have product into Cda but not entitled to sell in Cda. Seiko watches are
made by Hattori in Japan and are marketed in Cda. by Seiko Cda. in turn to authorized
dealers. [see picture on case] distributor diverter gave it to the Defendant in this action.
Now Seiko Time Canada is not the only person with Seiko watches in Cda. Watches are
being sold by Consumers and they do originate from Hattori and are in their original
packages. By the time they are at the SCC there is an interlocutory judgment the D's
were restrained from saying that they were an authorized or as though they had an
international guarantee for the watches. Because Consumers would not be purchasing
from authorized dealer the warranty would not apply. So those are the terms of the
injunction and the D is not allowed to do this. At trial the Court had made an additional
order which was to prevent or enjoin the d to sell Seiko watches. You can carry on
selling them but you cannot give out warranty protection and say that you are authorized
dealer. What they are fighting about here is whether Consumers Distributor is allowed to
sell at all.
Just by continuing to sell the product they would be passing off. The passing off
that we are looking at is kind of complicated. It is either classic or extended.
The product that Seiko Time Cda. was not just the watch and that the product
included - the watch, the service, instructions, the warranty and the after seal
service - they said they were selling a "package".
The reputation that Seiko Time Cda. had achieved came from the fact that Seiko
offered all of these elements to the consumer. The argument is that CD is that it
would cause confusion and damage the goodwill of the Seiko by selling watch
w/o those other elements.
The CA defined this product as a "different product". This would fit into classic
form of passing off. Consumers might believe that they were getting the whole
"package" as if it came from Hattori. The extended form - pg. 57 "It is nonetheless
one of a class entitled to make use of the distinctive name "Seiko' as descriptive of its
product and this is a valuable part if the goodwill which has been generated to the P
by the method of marketing which it has employed"
The CA found that D could not go on selling Seiko watches w/o trading on
goodwill. Pg. 58 " would permit deception of the public"
The conclusion they are talking about is that if defendants are allowed to sell w/o
saying they have warranty that they can sell watches. They said they could not
The SCC says there is no evidence to suggest that this is the case at all. On pg.
58, they consider the results of not allowing the watches to be sold "Following
consequence if only Seiko Time Canada sold the watches:
1. The Cdn. Public would be deprived of the right or option to buy Seiko watch
on the alternative basis to not have the warranty
2. A monopoly would be established by the application of the doctrine of
If they were prevented from selling them at all then that would cause a
monopoly. It would be as if they were granting a patent. The bottom of 58 -59
"The common law principles relating to commerce trade generally proceed on the basis
of a recognition of perceived benefits to the community from free and fair
competition" - should not interfere with competition. The starting point is not
protecting ppty interest but rather it is free competition.
It doesn't see anything here that looks like a passing off action. Consumers is
selling the same product. The additional selling techniques ARE NOT the
subject of a monopoly so in some ways the court is saying the competition will
win out protection here.
Competition is in the "public interest" - At the very least you need Pg. 61 " ...attn
should be drawn to the fact that the passing off rule is founded upon the tort of deceit
and while the original req'ment of intent to deceive died out in mid-1800s, it remains
that confusion in the minds of the public be a likely consequence by reason of the
sale by the D of a product not that of the P's making under the guise or implication
that it was the P's product." At the very least we need confusion then that is what
we should be concentrating on. The difference b/w the products is a difference
b/w warranties but otherwise they are the same watch. The public is aware of
this after the injunction is complied with. It is not pretending to be one of the
class of authorized dealers.
They are selling same product and that is all they are claiming to do and that is
true. An example is on pg. 64 - "A better analogy here would be to the buyer of a
Chevrolet from an authorized dealer or source, who then sell the car w/o any status of
dealership from the manufacturer. Assuming title to the car was lawfully acquired
and that no misrepresentation of the condition of the vehicle and the right of
warranty was made would be a duly authorized dealer of the manufacturer itself, or
anyone else, have recourse to injunction to prevent sale of the car..." Once thy comply
with injunction they are not misrepping so there is no action. If they want to pay
for better service and warranty then that is the choice that they are entitled to
On the bottom of pg. 66 "An initial misrep calculated to injure the business of
goodwill of a trader in the same market, or which may be a reasonably foreseeable
consequence, and which causes damage to the trader. I am unable to find this record
any misrepresentation during the 2nd period, which is essential to found a right in
the respondent to enjoin the appellant generally from selling of Seiko watches in any
manner whatsoever. The appeal court seemed to be going with classic. More
convincing is the extended action.
What kind of labour are we rewarding? In this case Hattori was not involved or
bothered by the activity of CD. Hattori is not suffering and has received money
for the product and therefore they benefit from this but the only person who
loses is Seiko Time Canada.
The court accepted Lord Diplock's five prong test on pg. 65. This is important b/c
when it looks at it again they accept the 3 prong test.
Reckitt and Coleman Products Ltd. v. Borden (1990) (UK) - pg. 68
Facts: Squeezy lemons. In this continent they are "real lemons" and they have green
cap. In Europe they are called "Jif". This is important b/c mark is important in "relevant
area". Jif lemon is the popular brand of lemon juice in the UK since the mid-50s. A
substantial part of the population has associated bottle with Jif lemon juice. Jif lemons
were not the people who originally had the idea to market lemon juice in squeezy bottle -
they just bought the company that made it up. The Ds had the idea of marketing their
lemon juice in BR in squeezy plastic lemons. The P had begun to sell Jif lemon in bottle
so it could compete with D so the D tried to market their juice in the squeezy bottle.
There was an injunction granted.
Issue: Whether the lemon shape get –up or the trade dress‘ distinctiveness has been
established sufficient to constitute confusion in passing off? Functionality and
descriptiveness vs. distinctiveness are at issue here.
Lord Bridges on pg. 68" ...monopoly in trader itself...would be utterly repugnant".
3 steps in passing off (pg. 71):
1. First, he must establish a goodwill or reputation attached to the goods or services which
he supplies in the mind of the purchasing public by association with identifying get-
up (whether it consists simply of a brand name or a trade description, or the
individual features of labeling or packaging) under which his particular goods or
services are offered to the public, such that the get-up is recognized by the public as
distinctive specifically of the P's goods and services. Craig: Must have been able to
establish goodwill or reputation in association with indicia at issue. The mark that we are
talking about is the badge that they have to show. They have to have goodwill in the
marketplace. It attaches to them b/c it is like that in the midst of the public.
2. Secondly, he must demonstrate a misrepresentation by the D to the public to believe
that the goods or services offered by him are the goods or services of the P. Whether the
public is aware of the P's identity as the manufacturer or supplier of the goods is
immaterial, as long as they are identified with a particular source which is in fact the
P. For example, if the public is accustomed to rely upon a particular brand name in
purchasing goods of a particular description, it matter not at all that there is little or
no public awareness of the identity of the proprietor of the brand name. Craig:
confusion as the factor
3. Thirdly, he must demonstrate that he suffers, in a quia timet action, that he is likely
to suffer damage by reason of the erroneous belief engendered by the D's
misrepresentation that the source of the D's goods or services is the same as the source
as those offered by the P. Craig: The P must demonstrate that he has suffered or is
likely to suffer damage b/c of that confusion. That confusion being that which results from
Here it has to be shown they the shape of the plastic lemon container is
associated in the mind of the public with Jif lemon. Then they would have o
show that the D's packaging would amount to a misrep. Then it would show that
the public would buy D's product and that would cause them harm.
Policy: This case raises issues as to what is distinctive or not and how to balance
We are not concerned with the mark Jif and that s not predominant part of the
getup and the Ds are going to put a label around the cap that says "ReaLemon"
and make sure that it is clear.
The distinguishing guise is capable of performing the kind of distinguishing
function that we are looking for in trademark law. It has come to mean
something to the public\? If that is the case then even with label then it is likely
to confuse and it can be passing off.
The D tries to argue that the use of a squeezy plastic lemon and it is just an idea
and everyone should be able to do so. There is no monopoly in container itself
Neither you or the D are in the business of selling plastic lemons - what were are
concerned with is how the public views those plastic lemon cases and whether
they suggest that the squeezy containers comes from the D.
If you protect the function then you do give a monopoly that is anti-competitive
and therefore not allowing them to compete on equal basis. The Court says this
will not help out here either and they are not protecting functionality of product
but its ability to identify the source of the product.
Along with the functionality they make a descriptiveness argument: you can'
protect the lemon b/c it is descriptive and to what extent can a mark that is
descriptive of the product actually distinguish the source of the pride.
The mark "ReaLemon" cannot be protected under this argument. If we were just
to call it lemon and that would be descriptive and in this case it is visual and not
- this is equivalent to calling product by its name.
Secondary meaning: this means that markets manage to acquire significance
through use and while initially this would have mean this is real lemon juice and
if u use it enough that it b/mes associated with particular source then you have
the assoc that trademarks protects. So even if it began as just meaning lemon
juice now it means selling lemon juice particularly from JIF.
On pg. 77 "the trial judge here has found as a fact that the natural size squeeze pack
in the form of a lemon has become so associated with Jif Lemon Juice that the
introduction of the appellant's juice in any of the proposed get-ups will be bound to
results in many housewives purchasing that juice in the belied that thy are obtaining
Jif juice. Plastic lemon shaped containers have acquired a secondary significance. It
indicated Jif Lemon Juice." Once you have this as a matter of fact then you have
the secondary significance. Just b/c something is descriptive doesn't mean that
it cannot also mean that it can be distinctive of source.
They tried one last argument: they were the only selling at the time and they got
the meaning as default. Court did not pay much attn to this. The get-up that they
are trying to protect is distinctive.
The lemon-shaped containers are associated with Jif lemon. This is stage 1.
Once you have established that there is that reputation then it is quite easy see
that use by someone else would be likely to be confused and likely to cause
Lord Bridges says that it does result in infringement but it managed to show that
- there was no launch of product into the marketplace so they had to simulate
that in order to have evidence.
If product was already in marketplace then they would have real-life evidence. It
cannot get around the fact that people assumed that when they picked it up that
they were picking up Jif lemon juice.
We are asking what context the products are sold in and what response of the
public is likely to be. Lord Oliver says on pg. 73 quoting trial judge pt. 8 "Now,
paying proper attn. to all these matters and placing myself in the position of the
shopper in relation to whom all these matters apply as part of his or her shopping
knowledge and habits. I really have no hesitation in coming to the conclusion that
there is bound to be confusion in the shopper's mind in relation to all 3 marks of the
D's lemon juice" So it is not an argument to say that these ppl are not paying
enough attn or that they are stupid and literate but what it really comes down to
is what is the actual response.
Pg. 79 "...customers have to be taken as they are found" Customers will be deceived
and this will cause them to believe that this is Jif's lemon juice.
This will cause damage or diversion of trade.
Held: On the evidence that was presented the Court could not avoid concluding that
there was confusion and that there was a misrep and this b/me more important than the
monopoly situation. The monopoly exists in order to avoid confusion in the marketplace.
In some ways this b/mes more problematic when the products are descriptive. If
something functional ends up protecting then that would get in the way of
competitors selling the same if ... [??] The concerns do not dissipate just b/c
something becomes distinctive - the concern should still be there - the injunction
does in effect give the P a permanent monopoly in plastic lemons to the extent
that they contain lemon juice - they get this w/o patent protection.
So question here is that the protection for passing off is a limit to free
competition in the market. The Court has to decide what is more important here
- TRYING TO STRIKE BALANCE. WHEN THERE IS CONFUSION
SOMETHIGN COMPETITION HAS TO STEP BACK.
There is an equal right to compete but there is also an equal right to the goodwill
- it is equally important to protect P's right of to goodwill as it is to uphold free
competition. This is situation that tries to work out balance In terms of resolving
these different rights and interests- the things that could help this out is appeal
to higher court- what do we want to encourage in the market - in terms of should
we appeal to public interest as to something to help us make this choice. We are
enforcing P's aright subject to public policy reasons.
The rationale here is not to protect consumer against confusion as much as it
is to protect company's right to ppty. The public interest might lie in competition
and in free and fair competition - we are told competition creates choice and
makes sure that product is available at lowest price. Competition is in everyone's
best interest - this would be one argument - Consumer information assumes that
if we are all rationale and well-informed and o the extent that trademark law
keep up well-informed we should uphold this and this may outweigh public
interest of no monopoly in market.
How the test for passing off has evolved. The SCC case that affirmed test in Ciba-
1. Need to establish goodwill/reputation in market associated with indicia
2. Show misrepresentation (intentional or not)
3. Damage (actual or likely to suffer)
All have to be answered in affirmative in order to have passing off action.
Reckitt also said that rep leading to confusion is ultimately a question of fact -
this means that P needs to have lots of evidence to demonstrate "confusion". If
not on market you have to create simulation if in market then you have show
data, surveys etc.
This are is one of problems in common law b/c once you have statute come in
this is already assumed prima facie.
(vii) Who needs to be confused? Who is the customer?
Ceiba-Geigy v. Apotex Inc. (1992) (SCC) - pg. 89
Facts: We are dealing with kind of medication called metoprolo and is sold by P and we
are talking a bout two oblong shapes - one pink and one blue and this is about
distinguishing guise and getup as the relevant indicator as source.
Issue: Examines this need for confusion in light of the reality of the retail chain. Who is
the relevant party in this chain? Who needs to be confused in order for there to be
misrepresentation? Do customers consist only of physicians, dentist and pharmacists or
are the patients to whom the drugs are dispensed also included?
In that sense there is a helpful discussion as to what get-up means: pg. 98 " the
whole visible external appearance of goods in the form in which they are likely to be
seen by the public before purchase. If the goods are sold in packages, then their get-up
means the appearance of the pack taken as a whole. If they are sold or displayed
unpackaged, then the get-up relied on can only be that inherent in the goods
The Court goes on to note in the next paragraph in the next para that these
things play important role in consumer choice in the market. "The look,
appearance, and the get-up of a product play a crucial role in the purchase
process...what appeals to the eye is crucial" The ability of the getup to convey info
about source is something the law is willing to protect but only to the extent that
the get-up conveys something about the source of the product. If it conveys
lemon juice made by Jif then it would be protected.
In the passing-off situation this means that trader has to avoid creating
confusion by using similar get-up as a competitor in a way that it likely to
confuse. As long as the get-up has acquired secondary meaning.
This means in this case that the particular get-up of its pill is distinctive of source
and therefore when the D tries to manufacture pills that look the same this gives
rise to passing-off action.
The Ds here have managed to acquire license and market the same drug and
they were allowed to do that b/c their drug was allowed to be basic generic drug
so we are dealing with generic drugs wanting to come into market and compete.
It is the same kind of drug and it i interchangeable.
This misrep is as to whether it is the original product from Ceiba Geigy or if it is
from generic company pg. 89 The patient was not a relevant consumer in this
context so if the relevant consumers are only the pharmacist of the doctor the
that person is not likely to be confused by similar get-ups. They should know
what they are prescribing. If we are only dealing with that level then there is no
case here and that is what found at the interim rule, CA until we reach SCC.
The rationale for drawing different levels of consumers is basically that patient
has no direct ruling for choosing product. The patient does not take the drug
from store shelf b/c it is a prescription drug. In that sense they are not the
person making the choice based on the get-up of the pill. Without the direct
connection there is no risk that the patient is confused. There is no poss. of
choice and therefore there is no damage and there is no passing off. To the
extent pharmacists choose is not based on their appearance.
Meanwhile the P is arguing that the Court was wrong to exclude the patent as
the ultimate consumer and there is no reason why the law should allow that
person to be confused.
These are our facts and the analysis is good on pg. 93 onwards.
pg. 94 they confirm 3 necessary components.
The purposes of the passing off action on pg. 95 "Purpose of passing off action is
to 1) Protection of the MAN 2) protection of the customers - in order that the
purchasing public is not enticed to buy A's product when it wants B's product"
And its also says on pg. 95 that "it is clear that however one looks at the passing-off
action, its purpose is to protect all persons affected by the product." - public interest
The rival trader has an interest at stake but so to does the P trade. They have
interest in ownership of goodwill. Goodwill is the drawing powers of the
The Court says competition in the free market is supposed to control price,
quality and availability of goods. It highlights the need to highlight competition in
the ordinary course of business between rivalries but ensures that rivalry does
not encourage dishonesty.
We are not just protecting this for the manufacturer's case but they also have
public interest dimension. On pg. 97 in 2nd last paragraph. One of the questions
still hanging out there is whether public interest at stake is an incidental benefit
that protects from passing-off. For example in terms of incidental it begins
accordingly the power of the Court is to "safeguard the interest of the public.
The next line says that the buyer is the first to be injured and is at the heart of
the matter. The Court also notices that he public might not necessarily be
harmed if they buy another product.
In a context where products are interchangeable they will not be harmed. This is
not the only type of harm the Court recognizes. pg. 98 on the top the court says
"no substitution should be made without the consumer's knowledge. This is the
minimum degree of respect which MAN and merchants should show. "
The Court seems to be saying that the consumer has to be saved from the
deception and that it just not about the rival trader. W/o damage to the rival
trader there would not be any damage.
Gonthier J. expresses that the customer is always right and this is true even in
law and this should be respected.
Once the Court decides that consumer is involved then it goes on to answer
whose confusion is relevant to the action.
Held: The Court finds that the patient is the ultimate consumer and that the confusion
of the patient could lead to an action in passing off even though there is no confusion
with doctors, pharmacists etc.
Quite often by the time the product reaches the consumer there have been so
many exchanges and it is very rare that person buys directly from manufacturere
They say that retailer is not likely to be confused but they are further up the
So these intermediaries are less likely to be misled but question is whether
ultimate consumer is likely to be misled. The more down the chain you go the
more confusion you will likely have.
Pg. 99-100 "There is no question that confusion which is the essence of the tort of
passing-off, must be avoided in the minds of all customer whether-direct - here one
thinks of the retailers - or indirect - in that case the consumers. Proof of reputation or
secondary meaning and of misrepresentation has never been limited by the courts to
direct customers of the person claiming the right." this means that in this case the
patients have to be included on the customers covered by the action of passing-
off. It might be harder for the P to show damage. But the Court seems to accept
that patients have some say in what they get. They will get more generic drug
unless something else is specified.
Consumer can ask to have the brand as opposed to the generic version. On.
pg. 102 "Not including consumer in passing off action, divests him of part of his
rights as an individual. He is deprived of the means of protecting himself as an
informed person." In some sense one of the rights is to be informed actor in the
Because confusion at any level of the chain is relevant to passing off possible
confusion among patients would be enough for patient to succeed. This was the
law in US and UK and it was in Cda. that this had been resisted.
Perhaps this b/c Cda. wanted a strong generic market. This was a blow to
What this means is that better basis would be not on the second prong but to
say on first prong to say that the get-up is not a badge of goodwill or on the
damage issue. This distinctiveness is on the basis of fact.
If Ds found that no one would take drug if it was round and whole then they
would have opposite action. The way you see or do not see the pills at the pint
of purchase is something that the court does not follow up on.
General principles wrap up:
1. Actionable types of confusion could go to confusion about the source of the product
and this would be the classic example of passing off but it could also go to the type
and quality of the product or could go to an affiliation when you are not. (this is
2. We are concerned with confusion among significant proportion of consumers or
potential consumers. The standard is the "ordinary reasonable consumer" Ceiba
Geigy says this applies to all customers whether direct or indirect.
B. Reputation and Evidence - Re: Passing Off
Factors to establish Reputation and Goodwill-How distinctiveness is generally proved
Cases are fact driven and very subjective; factors combine with each other
1. Duration of Use
2. Consistency of Use
3. Type of Use
4. Spontaneous Use by Consumers
In US if go to trial and don‘t have survey then the courts will assume a negative
inference (i.e. don‘t have reputation)
In UK courts don‘t like surveys
In Canada – middle ground – surveys are expensive (>$50,000); thus they are
generally only presented in big cases; and then the cases end up being a battle of
(i) Goodwill Crosses Borders.
Unlike registered trademarks which is limited to Canada; passing off can extend from a
source outside Canada due to a reputation outside of Canada
Orkin Exterminating Co. Inc. v Pestco of Canada Ltd. (1985) (C.A.)
Orkin Exterminating Company – American company which does not carry on
business in Canada wanted an injunction against the Defendant, restraining
them from using its trademarks in Canada.
Orkin has carried on business in the US since 1901; currently the largest pest
control company in the world; highly regarded by its customers for excellent and
Orkin spent substantial sums of money advertising its name, logo and business
in the US through radio, television, newspapers and billboards; also has a
reputation in Canada from:
Canadians traveling n the US
Canadians exposed to Orkin‘s advertising in articles appearing in American
publications which circulate here
Canadians which have used Orkin services in connection with property owned
or rented by them in the US
Pestco of Canada – carries on business in Toronto
Pestco and Orkin are in the same business – providing pest control and
exterminating services to residential and commercial customers
Pestco – the extent of the use of Orkin in Canada was limited to business name
registration and phonebook listing; decided to use Orkin because knew of
Orkin‘s reputation in the US
D argues that any goodwill in Ontario in the Orkin name and logo belong to
Pestco, and that because Orkin has not carried on business in Canada it has no
protectable goodwill here
What kind of relationship does Orkin have to show to the Canadian market
before it has the requisite reputation?
Does Orkin have the necessary goodwill in this marketplace?
What damages have Orkin suffered if any? (Maybe they can‘t expand into the
Held: Judgement for plaintiff – dismissed appeal - injunction allowed.
Disagreed with D – Reputation and goodwill cross boarders – Orkin was entitled
to relief on the basis that it had a reputation in Ontario
D also argued that the plaintiff is not in direct competition with him; thus could
cause no damage
Court: disagreed: ―A plaintiff does not have to be in direct competition with the
defendant to suffer injury from the use of its trade name by the defendant. If the
plaintiff’s trade name has a reputation in the defendant’s jurisdiction, such that the
public associates it with services provided by the plaintiff, then the defendant’s use of
it means that the plaintiff has lost control over the impact of its trade name in the
defendant’s jurisdiction. The practical consequence of this is that the plaintiff is then
vulnerable to losing the Ontario customers it now has as well as prospective Ontario
Court also recognized that intent (defendant‘s bad faith) is a relevant factor to
take into account competing interests; but that it is not a necessity
Court also inferred goodwill and reputation in Ontario for the trademark from the
defendant‘s actions of copying the trademark – why else would the defendant
copy it unless they recognized its goodwill?
Ray Plastics Ltd v Dustbane Products Ltd (1994) (Ont. C.A.)
Facts: Defendant appeals from a judgment awarding plaintiffs an injunction against
passing-off. The parties are competitors in the manufacture and sale of snowbrushes. P
manufactured and sold a new snow brush called the ―Snow Trooper‖ – it was black and
yellow and its appearance was uncommon. D produced a virtually identical product and
as a result Canadian Tire gave all its snow brush business to D. D argued that the trial
judge erred: there was no evidence to support the conclusion that the Snow Trooper had
established any reputation or that its get up had acquired any secondary meaning – no
evidence from consumers or marketing experts and no surveys. In 1982 and 1983, the
plaintiffs introduced and sold a brush of uncommon appearance in its black and yellow
colours. For the years 1984 and following, the defendant, at the urging of a major
purchaser, produced and sold a similar product, a virtual clone
(i) was there an evidentiary basis for the trial judge's finding of reputation or secondary
meaning ? Is the manner (direct or indirect) the goods of the D makes consumers think it
is the P's goods?
Held: the appeal is dismissed.For P. Having regard to the very distinctive get-up of the
Snow Trooper, its sales and its extensive advertising over 2 years and the inference to
be drawn of the intentional copying, the trial judge was correct. Appeal dismissed.
To establish that the goods of the defendant are being sold as those of the
plaintiff, the plaintiff must prove that the potential buyer believes the goods are
the plaintiff's or from the original source. The defendant alleges lack of evidence
to support the finding at trial. There was no survey evidence and no evidence
The trial judge relied upon the product's distinctiveness and the advertising that
had been done.
Advertising evidence: The more distinctive a product, the more easily one can
establish reputation. Having regard to the product and the potential market, the
sales were substantial.
An inference can be drawn from intentional copying that there are prospective
customers to be misled and that means that the product had a reputation. The
trial judge's conclusion was entirely justified. Establishes prima facie case of
secondary meaning, sufficient to shift the burden of persuasion on the defendant
on that issue
Inference may reasonably be drawn that there are prospective customers to be
misled and that the product had a reputation [Orkin]
Walt Disney Productions v Fantasyland Hotel Inc. (1996) 67 C.P.R. (3d) 444
Facts: This was the second of two passing-off actions taken by the appellant against two
different defendants carrying on business at the West Edmonton Mall. The first of the
two actions involved the use of the trade mark FANTASYLAND at an amusement part.
The plaintiff was successful in that action. The present action was against the owners of
a hotel at the mall, operating under the name Fantasyland Hotel. In an interlocutory
decision, the court decided that the two actions would be heard separately. An injunction
against the use of the name had been refused in this second action. The trial judge's
findings of fact were not challenged. "issue estoppel" arose from the finding of passing-
off in the earlier action. The trial judge had referred to the interlocutory decision, whereby
the two actions were ordered to be heard separately, as a "most conclusive
determination". The judgment rendered in the earlier case enjoined use of the
Fantasyland name with an amusement park, "or any part thereof". The appellant argued
that the words in quotation were meant to cover any business activity. The hotel had
opened during the litigation, and continued operation after the decision in that case. This
was argued to be an attempt to get around the decision. Also, the trial judge had referred
to further evidence in the present case in rejecting the allegation of issue estoppel. On
the issue of passing-off, the appellant argued that the use of the name Fantasyland by
the hotel impaired the appellant's goodwill. The goodwill, it was said, was diminished by
the adjacent operation of the hotel. It was alleged that use of the name created the false
impression that the use was authorized or connected with the appellant. The respondent
was "cashing in" on the appellant's goodwill.
Issues: The two issues on appeal were "issue estoppel" and "passing-off". The alleged
Held, the appeal was dismissed.
The trial judge may have been too strongly impressed with the interlocutory
decision, but that was only one of a number of bases for his final decision.
The reasons of the trial judge made it clear that the fact of further evidence was
also only one basis among many for rejecting "issue estoppel". There was no
legal requirement that the hotel not operate during the amusement park litigation.
The judgment roll was the form in which a decision was set out. The roll referred
to the amusement park. The attempt to extend the operation of the injunction to
the respondent through an extension of the words of the judgment roll failed.
As to passing-off, the appellant accepted the finding of fact that the appellant had
no goodwill at large or in the operation of a hotel.
Passing-off required proof of goodwill and misrepresentation or confusion, which
the trial judge found as a fact did not exist.
A belief that the respondent benefitted from the use of the name Fantasyland
was not enough to found the tort of passing-off.
Furthermore, the amusement park was no longer named Fantasyland. The name
Fantasyland was not in the same class as Disneyland.
(ii) Reputation and what P needs to prove
W & H Ventures Ltd. v Manitoba Lotteries Corp. (1999) 4 C.P.R. (4th) 180
Facts: The plaintiff operated a restaurant under the name MICHEL'S BAKERY CAFÉ in
Winnipeg since 1991. The name was used under licence from the registered trade-mark
owner and the plaintiff had registered the name under the Business Names Registration
Act, R.S.M. 1987, c. B110, in 1991. The plaintiff's restaurant was located in an enclosed
shopping mall and had both a sit-down area and a takeout counter. The defendant was
an agent of the Crown and began operating a restaurant business under the name
MICHELE'S RESTAURANT in a casino and entertainment complex in Winnipeg. The
defendant's restaurant was more upscale than the plaintiff's. The defendant did not
register the name under the Business Names Registration Act of Manitoba, but instead
proposed as a public authority to give notice of adoption of the name as an official mark
pursuant to s. 9(1)(n) of the Trade-marks Act, R.S.C. 1985, c. T-13. The plaintiff
commenced an action for passing off and brought a motion for an interlocutory
Held, the motion for an interlocutory injunction should be dismissed.
The plaintiff failed to establish a prima facie case of passing off or a serious issue
to be tried.
The evidence did not satisfy the court of the existence of goodwill or reputation
attached to the goods or services of the plaintiff in the mind of the purchasing
public by association with the identifying name.
While there was some evidence of customers expressing some confusion, there
was no evidence of any loss of business by reason of that confusion, or any
reasonable prospect for loss of business or damages in the future.
In order to assist the plaintiff in obtaining evidence of confusion at trial, the
defendant was ordered to maintain records of all customers who paid by credit
Kisber & Co. v Ray Kisber & Associates Inc. (1998 (Que. C.A.) -pg. 125
From 1970, a family liquidation sales business was conducted under the name
Kisber & Co. Ltd. By 1981, Kisber, the elder of two Kisber brothers, was the sole
owner of the business. Kisber sold his share to his brother in 1981 and moved on
to other business initiatives. He claimed to have continued to carry on a
liquidation business without interruption.
In 1990, Kisber sought to enlarge his share of the liquidation business. S felt that
R was encroaching on his territory. An initial skirmish under the Canada
Business Corporations Act, R.S.C. 1985, c. C-44, to oppose the use of the name
Kisber in two of R's companies was unsuccessful.
S then commenced a passing off action alleging that the Kisber name had
become distinctive of the appellant's liquidation business by virtue of a secondary
meaning and that the respondent's use of the Kisber name was employed in a
confusing manner to illegally profit from the applicant's goodwill.
An initial attempt to obtain an interlocutory injunction was dismissed. Two
advertisements published in December 1992, led to that application. In the
advertisements, the word "Ray" appeared in small lettering and the name Kisber
dominated the graphic layout which was strikingly similar to that of the appellant's
The trial judge dismissed the action, finding that there were differences in the ads
and that any possible confusion arose from inattentiveness on the part of the
public. He found that the Kisber name was not a determining factor in the eyes of
Held, Mailhot J.A. dissenting, the appeal was allowed.
Per Rousseau-Houle J.A., Robert J.A. concurring: The evidence clearly
demonstrated that the Kisber name was closely linked to the appellant's activities
in the field of liquidation sales and auctions and was known or generally
recognized in the market-place. The superior court judge should have recognized
the existence of a reputation and goodwill in relation to the liquidation services
provided by the appellant and recognized by the public.
Although the right to use one's own name in business is clearly established, even
in the presence of some confusion with a competitor, only the honest use of the
name is protected.
The court was not convinced that the Kisber name had acquired a secondary
meaning in the regions where the appellant conducted its business in the sense
intended by the doctrine and the case law (i.e. the exclusivity of a business or
product). Nevertheless, the court found that the appellant had proven that the
respondents sought to mislead the public by the manner in which they used the
Kisber name in the advertisements.
The respondents had acquired the right to conduct business under the name Ray
Kisber and Associates provided they did not cause confusion in the minds of
Since the confusion arose substantially from the advertisements, the injunction
would be limited to measures ensuring the presence of distinctive elements in
advertisements such that: (1) the Kisber name did not appear in dominant
characters; (2) the words Ray Kisber and Associates appeared on the same line;
(3) that they be written in identical characters; and (4) that it be indicated under
the corporate name that it was a company independent from Kisber & Co.
Per Mailhot J.A. dissenting: The general principle which applied was that a
person might honestly use his family name when carrying on business, even if
another person was already doing so under the same name, even at the risk of
some confusion with a competitor.
The secondary meaning of the name Kisber and the risk of confusion between
two Kisbers should be assessed from the perspective of mandating clients and
not the general public which is more or less uninformed.
Proof of secondary meaning was a question of fact and the testimony did not
allow the court to conclude that the name Kisber had acquired a secondary
Confusion in the mind of consumers was of little significance. It was more
relevant to inquire as to the risk of a member of the financial community being
The testimony of two former employees of the defendant who were on bad terms
with their ex-employer was not sufficient to prove that the defendant had acted in
a dishonest manner.
The evidence on the issue of whether Ray undertook not to use the name Kisber
in his liquidation sale business was contradictory.
o We saw that reputation had to stretch into the geographic market - had to be in
the locality of the allegedly infringing activity. The goodwill attached to the
product has to be attached in association with indicia that the P is trying to
protect. The kind of evidence is things like sales figures, advertising expenditures
etc. In the end it is a question of fact to be decided by the Court on the basis of
C. The Relevance of a Common Law Field of Activity
Walt Disney Productions v. Fantasyland Hotel Inc. (Alberta Ct. of Appeal)
(1996) - pg. 171
Issue: Did reputation have to be within the same type of activity as the P. Were they in
same field of activity?
o It seemed in this case that Disney was no able to establish requisite reputation
b/c it was associated with theme parks and not hotels.
o Is this the ratio of this case and if so how does it fit with action of passing-off. We
will be looking at cases that look at this question. Why at one time it was though
that common field of activity was required and now this is not the case.
o It is a relevant consideration but not a requirement. This is going to come into
play when talking about stages? Which stage should it be relevant at?
McCullough v. Lewis A. May Ltd. (UK) (1947) - pg. 134
This is case w/Uncle Mac - he was broadcasting on the BBC.
Everybody loved it - it was a children's show. He had a very well-known
character and reputation and wrote children's books and very well known.
The D is food manufacturer who starts to make half wheat cereal under the
name Uncle Mac's cereal.
So it was marketed towards children and supposed to be children's cereal and
playing on popularity of Uncle Mac's cereal.
Issue: Has the D done anything that invades P's rights?
Held: No common activity - no causes of action
Courts emphasized limits to the rights - pg. 136 "He must show thatthe acts of the
D of which he complains have interfered or are calculated to interfere with the conduct
of his profession, business or selling goods, in the sense that those acts of the D have
led or are calculated to lead the public to confuse the profession, business or goods of
the P with the profession, business or goods of the D. The element of confusion is
essential."- we need to see an invasion of the D ...the court doesn't see that there
has been that kind of invasion - 5th line - "A man is not entitled to
exclusion...reputation in that name and goods which he sells." it is not just a
proprietary right on the name but something more than that.
You need to establish confusion and I don't see how we can get there if there is
nothing to be confused about. Last para on pg. 136 the Court asks the question
that there is nothing to be confused about. "The P sells nothing and the D sells
There is nothing according to the Court that the public could confuse with the D's
cereal. If these were two cereal sellers then there could be confusion but the P
is not selling cereal so there is no confusion and no damage. Before there can
be consideration of the 2nd and 3rd prong the test.
Court here thought there would have to be some common field of activity in
which the P and D were engaged. On pg. 138 in the 2nd last para. "..damage for
passing you have to be able to show a cxn b/w the two businesses such that there
could be confusion and damage".
On the pg. 134 "P is no engaged in any degree in producing or marketing puffed
wheat, how can the D, in using fancy name used by the P be said to be passing off
the goods of the business of the P? I am utterly unable to see any element of passing
off in this case. If I did, I would be extending the scope of the action of passing off,
but I would establishing a new remedy and I am not prepared to do so." the P is not
engaged in any activity of producing so how can the person be passing off. The
judgment stood for the fact that passing off could only occur if there was
common activity between two parties. The realm of customers is the same.
This is an insight as to what rationale for this judgement went off course. There
is still potential for the customer to be confused not necessarily for the same
product. Otherwise he would be creating another cause of action - this was
before the extended form of passing was recognized.
It is important to note that this decision did not last that long in Commonwealth
but lasted long in England. To that extent it was though to stand alone as a
beginning of a chain of cases that have been rejected.
There is nothing in the 3 prong test that requires a common activity.
We are operating in a different commercial reality where endorsements, global
brands are very common and define what we think about successful trademarks.
There tends to be recognition that we have to protect and see that
endorsements are correct and not implied false - this field now creeps into field
of personality rights or publicity rights.
It was this supposed requirement of a common field of activity that was
the greatest obstacle for people to protect these interests.
In the UK where famous people were saying you can't just saying this is Elvis
Pressley soap and it was continued until recently in 2002 that said that Eddie
Ervin said that we should not longer be following Uncle Mac.
There seems to be widespread agreement that common law requirement is just
another factor to be considered in answering second and third prong.
Harrods Ltd. V. Harrodian School (1986) (UK) - pg. 140
Facts: the owners of Harrods (P) and the D have private school called the "Harrodian"
school and claim they use that name b/c the ppty that school is on the old ppty that was
called "Harrodian" club site.
Issue: Whether the use of the word Harrodian suggests that Harrods is associated with
the school event though they are in totally different fields of activity? Does it fall within
trademark interest and the use can result in damage of reputation.
Held: P's have failed on the evidence to establish any real likelihood of confusion.
pg. 152 - Harrodian word
Ps have lost of goodwill in the word Harrodian and also one of the things that
makes case difficult is that P provides lots of goods and services since they
have not used in the word in over 40-50 years.
pg. 141 addresses this issue. This does not mean that their commercial
activities are endless. If what you want is an overlap then you should recognize
that it would be artificial to draw any limits on our field of activity. No, you still
have limits on what you do. You may supply school uniforms but you don't run
It is a different field of activity then the P? If they were to open school then it
would be seen as great departure from their activities.
pg. 148 "fundamental principle of the law of passing off which leads me to reject the
main way in which the P's have put their case before us. 'Harrodian', they submit, is
synonymous with 'Harrod's' is universally recognized as denoting the P's business.
Ds were, therefore, unarguably guilty of misrepresenting their business as that of the
Ps given the huge number of persons who are customers or potential customers of the
Ps it is simple matter to infer that an appreciable number of them will be deceived into
thinking that 'the Harrodian School' is owned by or otherwise connected in some way
with Harrods; and damage is likewise easily be inferred".
The business in which it is associated is not all embracing. To be known for one
is not to be known for everything - even if your mark is very famous in
association with what are you famous with.
This might suggest that the diff field of activity in which the P and D are
operating with is where Judge rejects the action.
Pg. 149 the Court addresses the need of"...compete with any natural extension of
the P's business". We are not basis this on ppl should have opp to expand but
basing it on the right that?? "The absence of common field of activity is not fatal
but not irrelevant either. When used for likelihood of confusion - it is an important
The Court notes that the justice in the last case coined the phrase "common
stage of activity" and stated it as though it meant something but it ws not really a
relavant concern or a requirement for that decision.
And the Court here notes that McCullough decision should be discredited.
The P must prove not an existence of common field but among "Common
customers". Are there customers who are aware of the P who will be misled by
the D's misrep. The next two lines should also be pointed out. But it is not
What this really does is that it seems to move common field of activity from
the first prong down to the second prong. If it was in the first prong then a
case where they had a diff field of activity then the P would lose b/c it would not
pass his test. If you moved it down to misrep and confusion then it b/mes
integrated into question of fact that Court has to answer. It is relevant as a
matter of fact and it is not a question of law.
Pg. 150 - "The proximity of the Ds field of activity to that of the P was a factor to be
taken into account when deciding whether the D's conduct would cause necessary
confusion". If you don't have confusion then you don't have this kind of action.
Another idea that pops up is how famous the mark actually. Is it a household
name? pg. 150 "where the Ps business name is a household name the degree of
overlap b/w the fields of activity of the parties respective business may often be a less
important consideration in assessing whether there is likely to be confusion, but in
my opinion it is always a relevant factor to be taken into account" burden of
proofing likelihood of confusing- the overlap is only tenuous.
Lord decides that there is likelihood of confusion and absence of common field
of activity was of significance is reaching this decision. This is not crux of the
In pg. 152 in the fourth para "commercial reputation for excellence". The customers
of Harrods would be incredulous - he does not think the way school is run would
have any bearing on what people would think about the store. The ultimate
question is whether or not people will be deceived (this is question of fact) -
there was no evidence that court accepted on this issue. "The question is whether
there is a real risk that members of the public will be deceived into thinking that a
school called 'The Harrodian School' is owned or managed by Harrods"
There was no evidence of damage - there is a little twist in story about director
whose wife who owned the school had an affair and it was in the papers all the
time - Harrods said that this is the thing we don't want to deal with and this will
damage the name "Harrods'" in the eyes of the public.
If there is no confusion then there cannot be any damage. In the dissent
someone took a different but is not critical to what we are looking at here.
Sir Michael for dissent takes different view. This highlights the fact that this is a
question of fact.
Visa case International Service Association v. Visa Motel Corp. (1983)(BC
Ds had been leasing portable offices and they designed offices to look like Visa
symbol and they were called visa buildings.
We can see what the D will argue and why it will not work. It says that Visa is
Company and we are operating in different channels of trade and there should
not be passing off here.
The case considers statutory context.
Discussion of confusion - there can be confusion even if wares are not of the
same general class or in the same line of business.
Held: There was passing-off even though no common field of activity - business. It is
worth nothing that mark here is very famous and great brand recognition - likelihood of
confusion is augmented when you bear his in mind.
3. STATUTORY TRADEMARK: REGISTRABILITY &
o Common law co-exists with the Act.
o However there are some instances where the Act offers more assistance for
someone who is trying to assert trademark rights.
Problems with passing off:
P was perceived as being disadvantaged in this process and burdened - even if
they were successful in this then they would have to sue each individually and
Although there is help in the common law it will only be helpful if it is clear and
o We are prepared to recognize registrant's exclusive rights to that mark (prima
facie). They do not have to go through that process of mounting proof for every
action - trials are quicker and less expensive and we can move faster to get
injunctions. There is a hope that there is a deterrent effect.
o This is benefit for trademark owner but it is also supposed to benefit ppl in
competitive trading - if you are trying to be honest then it is easier to avoid
trampling on someone else's rights.
o The tort has no intent requirement.
o A registration system allows other traders to look at the register and compare
their proposed marks to those that already exist.
o It is a way of helping people from duplicating. In light of these general benefits.
The first trademark act was enacted in 1868.
o Even if you mark is not well-known or widely used you can still have protection
under the Act.
o As we know passing off requires that the symbol that u want to protect has been
in the market before you can claim protection whereas when we are dealing with
registered trademark system you can file application to register mark before you
even you use.
o The application can be made on proposed use. The "use" is still based on usage
so the registration will be complete only once you use it.
o U have to show that you used it and not that the use of it allowed it to get
recognized. The registration is valid across Cda. expect for some small
o This can be compared to passing off b/c like common law it can only be
protected it the locality where the reputation is.
o Registration also increases the scope of protection that you are entitled to claim.
In other words it is not just about how easy it is to demand protection but it is also
about what KIND of protection you are going to be offered.
o In registration system the kind of protection you get goes further than what is
available to you at common law. Some people think that this makes trademark
look like PPTY.
o All D had to do in the common law was to take steps to distinguish their product
in order to avoid liability. You make sure there is no confusion in consumer minds
then there is no tort but under the Act there are different causes of action.
o s. 19 "exclusive right" in respect of those wares.
o This protects the mark for the whole range of goods or services for which it is
registered w/o proof of confusion or damage. ex. if you registered something for
soft drink product then someone else cannot use the same mark even if there is
NO CONFUSION. It does not require confusion or damage.
o The concept of confusion really enters in s. 20 of the Act. Here the trademarks
owners rights are infringed if "confusing mark" - it can be use of same mark for
different wares but also similar marks. If you are using confusingly similar mark
then...s. 20. And the third head of infringement is s. 22 - "depreciating goodwill" -
at least doctrinally passing off is not supposed to prevent mark from being
diluted. It would not be enough to say that Barbie is all-American girl but you
have to be able to show confusion or misrep.
o If you are relying on passing of you would only be able to bring into provincial
courts but if under the act then you can bring into federal courts.
o The action is based on act and then you say in the alternative this is passing off
action (this is P's strategy)
o As a defendant you attack their registration and if it is valid or not? If you can get
rid of that registration then it would be easier to defend action b/c they would
resort to common law.
The process of registration:
o s. 30: You have to include a statement of the wares and services you will be using
with the mark. It is not a mark across the board about anything and everything. This
means we might have the same mark registered for different wares and services.
You need a system for the basis of you mark. This can be things such as " I have
been using this mark in Cda. in relation to these wares..." "I intend to use this mark in
relation to these wares.." or "I have registered this mark already for XX country and
wish to register in Cda." (has to be a country that is a Convention country". These
are basis for asserting your title.
o If it is a pictorial mark (logo or drawing) then you have to include picture in your
o There is an examiner at the trademarks office and they will check your application
and search the register to see if they are happy to see if it is registrable. They will
check title etc.
o If any objections arise at this stage then s. 37 then the registrar will notify applicant
and ask for more evidence or take things off and disclaim portions of it. This is
something that is sometimes negotiated at this time.
o Registrar can deny application as well. If they do reject it then you can appeal to
the Court unless there is an obvious problem at the face of them and then what
happens the application is advertised in the trademarks journal and it is open at
that stage to opposition.
o There is a procedure for publication and that can be opposed by anybody who
has an interest at that stage - s. 38. It costs $250 for this application to oppose. If
there is a substantial issue raised then a mini-trial occurs before trademark
o So there the applicant has to file counter-statement and has to satisfy the broad
or objection is w/o good basis. So the board member then give their ruling and at
that stage the application can be appealed by either party at the federal Court. If
decision was found to be incorrect on law or on facts then it can be reversed.
This can be open to attack or challenge at any time but so long as all the
circumstances exist that make the marks registrable then the right can exist
forever. Here unlike copyright and patent there is no time limit - however you
have to renew it every 15 years for $300 and it will be perpetual s. 46.
o s. 2 defn of trademark -(a)- a mark has to be distinctiveness. Also look at defn of
"distinctiveness". This is something we should be thinking abut when thinking
about marks later.
o s. 16. - then we need to look at s. 12 to see what is not registrable and
therefore it is defined in he negative.
o We will be looking at s. 12(a) and (b). (c) - the name in any language. This
would pose problems in "Kleenex". - mark becomes so famous and therefore
generic and do not distinguish source. The concern to be based on concerns of
the ability of the mark to actually distinguish - a lot o the reason why a mark is not
registrable is b/c it does not have capacity to distinguish.
o Let's begin talking about s. 12(1)(a) - the classic example was that the name of a
person was not a good trademark b/c it lacked distinctiveness but the rule could
become absurd it the name was distinctiveness. The cases we are going to be
looking at are about trademarks that are just names and surnames. This section
focuses of prima facie registrability. Something is not prima facie registrable if it
is one of the things of this list.
o s. 12(2) deals with secondary meaning or acquired meaning. - A name can be
registrable if the name and his predecessor has been used before that is
distinguishable. The problem with a name is that there people with the same
name will use the same name and it does not distinguish. It can come to
deserve registration under s. 12(2).
A. Names of Surnames: s. 12 (1)(a)
Doesn't include imaginary names (Winnie the Pooh)
Names are Prima Facie not distinctive so unregisterable
Unfair to allow one person a monopoly on a name
A word that is "primarily merely" the name or surname of a living person or one
who died less than thirty years ago is prima facie unregistrable because it is
often not distinctive.
Unfair to give the first Ronald McDonald a monopoly running against all other
Unfairness diminishes once the market recognizes Ronald McDonald as
distinguishing a particular producer (whatever his or her real name); for a
second Ronald McDonald would then cause market confusion in adopting that
name for similar goods or services.
At common law, this could be passing-off.
The public are accustomed to people of similar names trading in different
businesses. One trade-name may become more famous than another, but that
should not give its owner the right to close others down or obstruct new entrants
who wish to use the same name for their business. It is more pertinent to ask the
Test for policy:
1. Is it a fair business decision for the second entrant to use his name in the type
of business he is carrying on?
(eg: Ronald McDonald, MD, can hardly stop another Ronald McDonald, MD,
from practicing medicine under his name.)
2. Is the way the second entrant uses the name reasonably designed to minimize
deception and confusion?
If so, some confusion may have to be tolerated lest personal names be
monopolized simply on the basis of priority of use.
How would a person in Canada of ordinary intelligence and of ordinary education in
English or French immediately respond to the trademark, as a surname or a dictionary
1. Whether the word (or words) are in fact someone's name or surname? (question
A coined or fictitious name, not shown to be someone's real name is OK.
(Mr. Christie), may be acceptable. [Gerhard Horn Investments Ltd. v.
Canada (Registrar of Trade Marks), Proctor &Gamble v
So too, may a name with added descriptive matter, since the mark is
then not predominantly just a name: for example, "o'hara contours" or
2. Whether a potential buyer immediately respond to the word by thinking its
primary meaning is merely a name or a surname?
Again this depends on the evidence presented. The average bibliophile would
be primarily impressed by Coles for books as a surname rather than by its rare
meaning of cabbages (as in cole slaw). (Canada (Registrar of Trade Marks) v.
Coles Book Stores Ltd.)
Oddly enough, obviously foreign words like galanos for toiletries or nishi for
electronics are judged by the perceptions of the notional Canadian "of ordinary
intelligence and education in English or French," who would not recognize these
words as Spanish or Japanese surnames. [Galanos v. Canada (Registrar of
Trade Marks) (1982),
Registrar of TMs v. Coles Book Stores (1974) - pg. 179
Facts: Application had been refused by registrar on the fact that it was name - it was
then reversed and then appealed by Registrar. Trial judge said that Coles was not
merely surname and said that it had another meaning (it meant "cabbage" in Old
English) No one uses this word and it is pretty much obsolete unless used with "slaw" -
The trial judge said that "cole" was not just a surname and therefore he found
that it was registrable. The case that the Court considers is the Standard Oil
pg. 179-180 -FIOR was an invented term or in fact and acronym and it turns out
it was also a surname and there were some entries in phonebook that people
had that name - Court said that FIOR would not be normally be recognized that
it was a surname. Therefore the mark was registrable. The question in the
Standard oil case and also in the Coles case "FIOR as a brand or mark of some
business as to think of it as a family. President held that FIOR was probably not
'primarily' a word that was a surname of an 'individual' and that it was certainly
not 'primarily merely' such a word"
Second para on pg. 180 - last 4 lines - therefore word "Coles' is not merely a
surname but it is primarily a surname. "Would a person of Canada of ordinary
education in English or French would immediately respond to the TM 'Coles' by
thinking of it as a surname and would not be likely to know that 'Coles' has a
Pg. 180 "It is essential that any enquiry into registrability must now begin with
new words themselves. They are common English words. Is the primary
(chief)(principal)(first in importance) meaning of the word merely (only)(nothing
more than) a surname." We are inquiring into dominant characteristics. The
dictionary meaning was subservient to the well-known surname. If name was
principal then it would be unregistrable.
Galanos v. Registrar of TM (1982)- pg. 181
Facts: Attempt to register by someone whose name is Galanos - someone did not want
to register the mark b/c it was s surname and refused to even advertise it. Registrar
thinks it is not registrable b/c it fits under s. 12(1) (a). What they look to in these cases is
how many directory listings occur for that name. If it is not well-known surname then the
fact that it was the applicant's name it held a very strong bearing on this case.
pg. 186 "I do not accept the proposition that the TM being applied for should be rejected
out of hand merely b/c the applicant for registration bears the TM sought as a
surname which application might have been granted had not the applicant if that
surname appeared in the application material"
The other thing that the applicant tries to argue that in Spanish it means
"gentiles, tasteful and elegant".
The Court refers to the order of reasoning that came out of the Standard Oil
1. Is the word a surname?
2. Is it merely surname? other meaning or significance?
3. Is it primarily merely a surname?
Elder case discussed on pg. 184. -if equally a surname and other word then it is
not primarily a surname and that would be enough to avoid s. 12(1)(a). Only if it
is primary is when you have a problem.
The Court discusses different classes of words that could be registered on pg.
184 in the middle. "There are dictionary words, names and invented words (foreign
words falls under this)"There is also discussion where you would put a foreign
word that is not English or French within these categories.
There may be another category "foreign words" The idea that the world Galanos
is meaningless and has no dictionary meaning.
It doesn't have to decide what the significance worked about he Spanish
speaking pop would think - the Court does not have to decide this issue - the
Court all has to say is that there is another significance doe English and French
people is that it is a invented words being used for trademark. If it didn't have
pg. 189 "In my opinion a Cdn. of ordinary intelligence and education in English or
French would be as likely if not more likely to respond to the word by thinking of it
as coined, fanciful or invented word use as a brand or TM of a business as thinking
of it as primarily merely the surname of an individual"
Held: Therefore the Court found that it could be registered. It was a question on how it
would be understood by the public.
Gerhard Horn Investment Ltd. v. Registrar of TM (1983)(Fed. Ct. TD) (pg.
190)(Craig does not entirely agree with this case)
Facts: The wording of s. 12(1) (a) refers to living people or persons who died in last 30
years. The mark that we are dealing with here is Marco Pecci and was supposed to be
used for women's clothing. It is a fictitious name. It is supposed to be name and it is
registrable - the registrar declined application was b/c the ordinary consumer would
understand Marco Pecci as being the name of a person. The problem here is that the
individual being referred to is not just an individual in a metaphorical sense. We are not
talking about people who do not actually exist.
o On pg. 191 - it is about a metaphor "In metaphorical language, an imaginary
person may perhaps be called an individual, but such a use of the word is unusual,
and to my mind, rather fanciful. It is hardly to be supposed that the Legislature
meant 'individual' to be taken in a fanciful or metaphorical sense; or meant it to
denote an imaginary person who has not and never had any real existence" they are
not living and have not died. So they talk a little bit about Ronald McDonald and
he is fictitious and the point is that there were still people around names Ronald
McDonald and that is why something like Ronald McDonald could not be
registered. There were only 3 people in the world other than Italy that was Pecci
and they could no find anyone named "Marco"
o "the statute does not preclude a fictitious name from registration except when by
chance the fictitious name coined by the applicant for registration thereof coincides
with the name of a living name of a living person or a person who bore such name and
has been dead for less than 30 years."
o Are you satisfied that it is a name? Means it has to be a name of person living or
dead for less than 30 years. NO then inquiry ends. on pg. 194-5 "The first and
foremost consideration is whether the word or words sought to be registered in the
name is the name or surname of a living individual who has recently dies. It is when
that condition precedent is satisfied, and only then, that consideration need be given
to the question whether the TM applies for is "primarily merely" a name or surname
rather than something else."
o Pg. 195 "it is not enough that the fictitious name may resemble the name that could
be bone by an actual person or might be thought by the public to be names or
surnames. That thought only becomes material when it is established by evidence that
there is a living person of the name or surname in question" is not important unless
there is a living person with that name. The reason why this might sit strangely is
that if we are concerned with capacity to distinguish and the fact that the name is
real or not real and what would people think about the name when they saw it.
Proctor & Gamble Inc. et. al. v. Nabisco Brands Ltd. (TM Opp. Bd) (1988)
The applicant applied to register the trade mark MR. CHRISTIE'S CRISP 'N
CHEWY based on proposed use for cookies. The words "crisp 'n chewy" were
The opponent alleged that the words "Mr. Christie's" were not registrable
pursuant to s. 12(1)(a) of the Trade Marks Act, R.S.C. 1970, c. T-10, as they
were primarily the name or surname of an individual, that the mark was clearly
descriptive of the character or quality of the applied-for wares, and that the mark
Held, the opposition is rejected.
While MR. CHRISTIE'S would be perceived by the average Canadian as
primarily or merely the name or surname of a living individual, the mark as a
whole is not primarily the name or surname of a living individual.
Secondly, while the words "crisp 'n chewy" are either clearly descriptive or
deceptively misdescriptive, this does not preclude the registration of the mark as
a whole pursuant to s. 12(1)(b) of the Act.
Nevertheless, the mark would still be non-distinctive in view of the fact that it is a
proposed use trade mark comprised of a surname followed by a descriptive
phrase as, prima facie, the mark is incapable of distinguishing the applicant's
"crisp 'n chewy" cookies from the "crisp 'n chewy" cookies of other traders named
"Christie" in the absence of a showing of acquired distinctiveness.
While normally such a showing cannot be made respecting a proposed use
mark, an exception has been made where an applicant can point to a prior
registration for a significant surname portion of the mark obtained on the basis of
The applicant owns a registration for the mark CHRISTIE'S for biscuits pursuant
to s. 12(2). The application giving rise to this registration was filed almost 30
years ago but the absence of a s. 31(2) restriction suggests the registrar was
able at that time to find the applicant's mark CHRISTIE'S was distinctive
The applicant has also filed further evidence of use of the mark CHRISTIE'S for
the same or similar wares as those currently applied-for. Accordingly, the
applicant has demonstrated a significant degree of acquired distinctiveness in
respect of a significant portion of its mark, namely, the surname portion
The applicant has satisfied the onus upon it to show that its proposed mark is
adapted to distinguish its wares from those of others.
B. Clearly Descriptive or Misdeceptive s. 12(1)(b)
[was not here for this section so review this carefully - get more note - read over cases]
s.12.1(b): A mark "clearly" (i.e., plainly or self-evidently) descriptive as "depicted, written or
sounded" in English or French of "the character or quality" of its wares or services "or of their
place of origin" is prima facie not registrable.. Nor is one clearly descriptive of "the conditions" of
production of the wares or services or "the persons employed in their production."
(i) Deceptive Mark:
o For something to be misdescriptive it must be false
o to be deceptive – must have a reputation already for that particular product
o Marks that would deceive people into making false buying decisions do the very opposite of
what marks are meant to achieve: hence the prohibition of marks "deceptively
misdescriptive" of character, quality, origin. (eg: Shammi for gloves with no
chamois)[(Deputy A.G.) v. Biggs Laboratories )
Deputy Attorney-General of Canada v Biggs Laboratories Ltd (1964), (Exc.
Ct. of Canada)
Facts: This is an appeal filed by the DAG of Cda. Against the decision of the Registrar of
the TM dismissing the appellant's opposition to a request by Bigg's Laboratories to have
the TM SHAMMI registered.
Held: This mark is just descriptive of the product although it sounds the same but is
The polyethylene utility glove labelled "Genuine Shammi Utility Glove" does not
contain one scintilla of chamois or shammy.
The Court is of the of the opinion that such a request contravenes s. 7(d)(i) and
per Dumoulin, J., on appeal from a decision of the Registrar of Trade Marks
post. p.179 who had allowed the registration of the trade mark SHAMMI for u
transparent polyethylene glove. The glove scald by the registrant is labelled
"Genuine Shammi Utility Glove". It does not contain any chamois or shammi.
The mark is unregistrable in that it contains a description which is false in a
material respect and is likely to mislead the public as to the character, quality,
quantity or composition of the wares. It is also unregistrable in that it is
misdescriptive of a character or quality of the wares.
(ii) Deceptive origin of goods:
Atlantic Promotions Inc. v. Reg. of T.M. (1984), (FCTD)
The applicant filed an application to register the mark MILAN SHOWERGEL as a
proposed mark for lathering soaps, detergent rinses and like showering material.
The registrar refused to register the mark on the ground that it was deceptively
misdescriptive of the place of origin of the wares in association with which the
mark is proposed. It was common ground that the wares would not come from
Milan. There was evidence that the script format of the word "Milan" as included
in the trade mark was derived from the affiant's signature.
The applicant appealed the refusal to register the mark to the Trial Division of the
Held, the appeal is dismissed.
The Registrar made a decision of fact. There was evidence to support his
The registrar applied the proper test as to whether a person of ordinary
intelligence when faced with the trade mark would immediately understand that
the word "Milan" referred to the City of Milan. Hence, "Milan" would be a
geographical name in the sense of it being the primary meaning of the word. The
word "Milan" dominates the mark. The City of Milan is famous throughout the
The court can reverse the decision of the registrar even if there is evidence to
support the decision of the registrar, where the court had strong reason to think
the registrar was wrong.
In this case, despite the additional evidence filed on the appeal, the decision of
the court is in accordance with that of the registrar.
Pepsi-Cola Co. of Canada Ltd. V Coca-Cola of Canada Ltd.  (SCC)-pg.
Facts: Coke challenged the word ―cola‖ in the trade mark of Pepsi
Held: For D.
Coca-Cola does not have an exclusive proprietary right in relation to the word
‗cola‘ standing alone. Cola is descriptive in the naming of different beverages
In an action for infringement of the registered trade mark "Coca-Cola" in the use
by appellant of the compound word "Pepsi-Cola" for identical wares, held as a
fact, that the words were not sufficiently similar and confusing as likely to mislead
the consuming public when examined by the tests of sight and sound.
Moreover, although not decisive in the matter it was of considerable weight that
there was no evidence of actual confusion submitted. Where the registered mark
is a compound word the whole mark as registered is protected but a part may be
a substantial taking of the whole. The part taken -- the word "cola" -- being a
descriptive word did not constitute a taking of a substantial part of the registered
Descriptive vs Distinctive (Secondary Meaning):
Home Juice Co. v Orange Maison Ltee. (1970)(S.C.C.) -pg. 216
D selling orange juice under the registered trademark ―Orange Maison‖
P challenged on the ground that it is clearly descriptive in the French language
of the character or quality of the wares s. 12(1)(b)
D argued that the distinctive character of the trademark is claimed exclusively
for the combination of ‗orange maison‘
The appellants sought an order to expunge the registration of the trade mark
ORANGE MAISON as applied to orange juice on the ground that it is clearly
descriptive in the French language of the character or quality of the wares in
association with which it is used.
At the trial it was held that the mark had acquired a secondary meaning in the
Province of Quebec and that the mark was not descriptive. No appeal was taken
from the judgment that the mark had acquired a secondary meaning in the
Province of Quebec but an appeal was taken in respect of the descriptiveness of
the mark and its registrability elsewhere in Canada.
Held, the appeal is allowed and the registration of the mark is ordered to be amended by
restricting it to the territorial area of the Province of Quebec.
Section 12, refers to a description in the English and French languages. Each of
the languages is international and the current meaning of a word in French is to
be considered in respect of a determination of the descriptiveness of a mark.
When the meaning of the trade mark ORANGE MAISON is analyzed in respect
of the goods to which it is affixed, the only possible conclusion is that the first
word is an elliptical description of their character and the second is an explicit
descriptive of their quality.
EDITORIAL NOTE: A trade mark must be considered in its entirety when
considering descriptiveness. In the present case the Court gave effect to
dictionaries published in France that gave the entirety the meaning; orange juice
of good quality or orange juice that has been made at home.
The respondent had urged that the test should relate to the actual usage in the
trade in Canada as defined by the evidence:
The appellant relied upon decisions that the descriptive terms should not be
appropriated by any single trader and cannot be registrable such as Eastman's
application: Standard Ideal v. Standard Sanitary (1910), 27 R.P.C. 789 at p. 795;
W & I Ducios Application (1913), 30 R.P.C. 660 at p. 772, and General Motors v.
Bellows (1949), S.I.R. 678 at p. 688.
In respect of the use of dictionaries in trade mark cases see Coca-Cola of
Canada Ltd. v. Pepsi-Cola Co. of Canada
Court wants to protect distinctiveness but on the other hand wants to ensure
descriptive nature of the word is allowed to exist.
The first word is an elliptical description of the character of the wares and the
second is an explicit description of their quality.
Distinctiveness tough to prove
John Labatt Ltd. v Molson Cos. Ltd. (1987), 19 C.P.R. (3d) 88 (F.C.A.)
The respondent applied to register the word "golden" for use in association with
The Registrar of Trade Marks refused the application in opposition proceedings
on the ground that the mark was clearly descriptive of the character or quality of
An appeal to the Trial Division by the applicant, respondent, was allowed,
The opponent, appellant, appealed to the Federal Court of Appeal.
Issue: Whether golden was distinctive to consumers?
Held, by the court per Hugessen J., the appeal is allowed. The decision of the registrar is
The mark GOLDEN is not registrable for use in association with beer.
One of the primary meanings of the word "golden" is to describe a colour. That
colour is found in most beer including that of the respondent.
The respondent had not invoked the provisions of s. 12(2) relating to the
acquisition of a new meaning to the word "golden". It was an error for the trial
judge to use evidence of acquired distinctiveness, which was not in issue in the
case before him, to support a finding that the word "golden" was to be
understood as having lost its ordinary meaning.
Molson attempted to provide evidence that the word ‗golden‘ had acquired
distinctiveness which was associated with Molson‘s product; also that the word
―golden‖ was not associated by the public with the colour of the product Golden
is descriptive of the inherent quality of beer; thus not registrable under s.
Molson argued the name was distinctive.
Ratio: Can only rely on s. 12(2) to show of distinctiveness before the application is filed,
cannot rely on s. 12(2) after the fact
Held: For the P. Molson lost the case on technical ground.
SPECTRUM OF DISTINCTIVENESS
(NOT DISTINCT) (DISTINCT)
GENERIC DESCRIPTIVE ACQUIRED INHERENTLY
s. 12(1)(c) s. 12(1)(b) MEANING DISTINCT
s. 12(2) s. 6(5)(a)
‘Beer’ ‘Golden’ ‘Golden’? ‘Corona’
NOT REGISTRABLE REGISTRABLE
S.C. Johnson & Son v Marketing International Ltd. (1970), (S.C.C.)-pg. 220
The United States plaintiff (appellant) was the registered owner of the mark
OFF! for an insect repellent.
The Canadian plaintiff (appellant) was a registered user of the mark. The wares
were made and sold by the Canadian company whose name appeared on the
package. No wares were made and sold in Canada by the U.S. company and its
name did not appear on the packages sold in Canada.
The registrant had successfully overcome a citation of the examiner of a
registered mark BUGZOFF for insecticides. The BUGZOFF registration had
been expunged from the register prior to the institution of this action.
The defendant (respondent) used the mark BUGG OFF for an impregnated cloth
The trial Judge held that the marks were confusing and that the plaintiffs should
succeed in their action for infringement,
The Federal Court of Appeal allowed the appeal holding that the registration was
invalid in that the mark was not distinctive of the wares of the registered owner,
Held, the appeal is dismissed.
The trade mark OFF! was not registrable at the date of registration. The
plaintiffs' use of the word "off" was an indirect use of the word in association with
an insect repellent and was descriptive of the wares or their effect.
In applying to register the mark OFF! the U.S. plaintiff was in effect claiming a
monopoly of a common word of the language, a word commonly used in
connection with a variety of wares in related categories all exhibiting the
common purpose of getting rid of something.
The variety and number of trade marks ending with "off" presently on the
register, show its widespread use in that sense.
The plaintiffs are in a dilemma. In order to succeed on their claim for
infringement they must under s. 20 to, establish that defendant's use of BUGG
OFF is confusing.
On the other hand, by virtue of s. 12(1) (d) of the Act, OFF! was not validly
registered if confusing with the prior registration of the mark BUGZOFF for
There is clearly no substantial difference between BUGZOFF and BUGG OFF,
and insecticides cannot be considered as being in a different category of wares.
Section 49(3) enacts that "permitted use" has the same effect for all purposes of
the Act. Permitted use means use by a person approved as a registered user. In
the application of all provisions of the Act use by a registered user is to be taken
as use by the registered owner. Distinctiveness is defined by reference to use.
Use by the registered user, being use by the registered owner, renders the mark
distinctive of the registered owner.
SCC‘s Public Policy: Johnson was in effect claiming a monopoly for the use of a
common word of the language, a word commonly used in connection with a variety of
wares in related categories all exhibiting the common purpose of getting rid of
something. Need to allow others to use word in the market place.
NOTE: s. 12(1)(b) decisions are fact driven and subjective in nature
12(1)(c ) A mark cannot be "the name in any language of any of the wares or services"
for which it is used or proposed.
Definition: From Abercrombie
A generic term is one that refers, or has come to be understood as referring, to
the genus of which the particular product is a species.
So airplane, avion, aeroplano, and Flugzeug cannot be registered for aircraft.
How many speakers of the language there are in Canada is irrelevant:
Importers or exporters from any country should not be inhibited from using
whatever language they wish to denote a product or service.
Nor does it matter that the applicant first coined the name: good practice
innovators to coin both a generic name (for others to use) and a trade-mark (for
their own use).
The prohibition goes further than the common law, which accepts a foreign
generic word as distinctive if it was not commonly recognized as such - even if
few people in Canada actually know the language or the word.
Rule- Common Law
At common law neither those terms which are generic nor those which were merely
descriptive could be valid trademarks.
s.12(c): Not allowed to register the name of product in any language of the wares or
services in connection with which it is used or proposed to be used
NOTE: The present Act does not allow for acquired distinctiveness if the mark is
generic under s. 12(1)(c) – i.e. s. 12(2) exception does not apply to subsection (c) only
to (a) and (b)
Abercrombie & Fitch Co. v Hunting World Inc. (1976) (American case)-s.
SPECTRUM OF DISTINCTIVENESS
Generic Descriptive Descriptive Suggestive Fanciful/Arbitrary
& Acquired Meaning
This decision is about the use of the word "Safari" including outerwear, clothes
Hunting World (D) used the word "safari" to use this to describe its clothes.
The D said that word safari is ordinary descriptive, generic word and one person
should not be able to use it as a trademark.
This is the context for the analysis set out in pg. 226.
1. Arbitrary/fanciful marks -pg. 229
o They do not have tot be made up but also a common word that is used in fanciful
way - ex. tiger used to describe lager.
o Common word applied in an unfamiliar or arbitrary way.
o Also it can be an invented word and created only to serve purpose as trademark
such as Exxon.
o Arbitrary marks are registrable w/o any need to show any secondary meaning
and are also easier to defend. It is unlikely that you would be faced with
defendant that they were using you mark in a descriptive way.
2. Suggestive - pg. 228
o Imagination, thought and perception - connotes something but requires
imagination to figure out what is being implied about the goods.
o If you can say something is suggestive you do no have to go through s. 12(2)
toget registration. The reason for this is suggested on pg. 228 "It is quite
impossible to get any rule out of the case beyond this: that the validity of the mark
ends where suggestion ends and description begins"
o 8th para " The English language has a wealth of synonymous and related words with
which to describe the qualities which MAN may wish to claim for their products and
the inegnuity of the public relations profession supplies new words and slogans as
they are needed."
3. pg. 227 3rd para last 6 or 7 lines - explain why descriptive marks are not registrable -
law is striking a balance - Acquired Meaning
o Can be registered if they have acquired a secondary meaning.
o We have to protect interest of owner b/c they have invested time an money into
that meaning - we do not want to deprive them.
o Why is descriptive subordinate to distinctive? (policy)
o generic mark can never be a trademark - characteristic inherent in the mark
triumphs over any energy or behaviour - it could b/c generic word can never be
distinctiveness- the law says it doesn't matter what you can show me about a
generic word - it cannot be registered regardless of any secondary meaning you
can show the Court.
o No trader can exclude another from using generic word in marketplace. It is no
just factual obstacle. Everybody in the marketplace has the right to use the name
of the product and therefore we refuse to give that right to one person to exploit.
o Lines of demarcation from each are not bright - pg. 226 "The lines of demarcation
however, are not always bright. Moreover the difficulties are compounded b/c a term
that is in one category for a particular product may be in a quite different one for
another, b/c a term may shift from one category to another in light of differences in
usage through time, b/c a term may have one meaning to one group of users and a
different one to others, and b/c the same term may be put to diff. uses in respect to a
single product. Ex. Ivory would be generic when used for product made of elephant
tusks but not for soap." b/c Not only b/c the lines themselves are fuzzy (they are
though) but also b/c there is no stability in where you can put a particular mark in
that spectrum across the broad.
o We are always considering mark in relation to product. In the Cdn. context under
s. 12(1) (c) there is no way to ...
o Court says that P could not claim safari if being used for expedition into Africa. It
would be generic if used in this context. They think that genericness of word goes
further than expedition but safari is also (pg. 229 "The word 'Safari' has b/me part
of a family of generic terms, which, although deriving no doubt from the original use
of the word and reminiscent of its milieu, have come to be understood not as having to
do with hunting in Africa, but as terms w/i the language, referring to contemporary
American fashion apparel. These terms name the components of the safari outfit well-
known to the clothing industry and its customers...hats, jackets..khaki-coloured")
safari has b/me part of family of generic terms but also terms referring to
contemporary American fashion - the safari outfit includes a "suit" in general.
o For boots and shoes it has not been used in generic sense so for those things
where it has not yet become generic so the court thinks for those thinks i is
suggestive. When the word was being used in generic sense and in association
with wares there was no right and here was no infringement.
o The D was also using safari in relation to boots and boots was one of the
categories that wasn't generic so the question was where they allowed to use it
and the Court said they were allowed w/ respect to boots.
Held: Court finds that D is still allowed to use a word that is properly registered b/c it is
suggestive when it is using it as a description of the wares that it is selling. They were
satisfied - reasoning on. pg. 230 "the Ds use of 'Safari' with respect to boots was made in the
context of hunting and traveling expeditions and not an attempt to garner A&F's goodwill"-
using safari with relation to boots and not as attempt to garner goodwill front the P.
o In the middle of that same para - "when a P has chosen a mark with some descriptive
qualities, he cannot altogether exclude some kinds of competing uses even when the
mark is properly on the register" (putting this into Cdn. context "safari" would be
considered the name of the product and may have been struck from register by
s. 12(1)(c) - in relation with boots and other stuff it was thought that mark safari
was suggestive and would not have faller by s. 12(1)(b) - they would not have
need to rely on s. 12 (2) but D would have invoked s. 20 (1)(b)(ii) - bona fide use
of trademark of accurate description and quality of the wares.
Policy: Balance between hardships to competitors and to those who have invested
money in a word to endow it with goodwill.
C. Acquired meaning or Secondary Meaning s. 12(2), s. 32
Some marks, though initially unregistrable, may be registered on proof of distinctiveness in
The mark's initial meaning has been replaced in buyers' minds by a secondary meaning
acquired through intensive sales and advertising, linking the mark with its user's goods or
o ppl will refer to s. 12(1) (a) and (b) as producing relative bar to registration - the
bar is prima facie and not absolute.
o The descriptive meaning is subordinate to distinctive meaning in trademark law.
o If we think about the Jacoby article we read at the start of the course. -what we
are told is that secondary meaning will result when a significant portion of the
consuming public develops the significant cognitive networks for a product that
identifies with a particular source. You are adding spoke of meaning on you
o pg. 248 - Jacoby's article - he lays out a sort of description in the second last
para about how we should envision the continuum
o An application based on proposed use in such a case will therefore fail; only one
based on actual use and acquired distinctiveness has any prospect of success.
[was not in class for the discussion of these cases so go over carefully and read]
Canadian Shredded Wheat Co. Ltd. v Kellogg Co. of Canada Ltd.  -pg.
Shredded Wheat Trap:
Started selling "Shredded Wheat" at the end of the nineteenth century. Trade-
mark registrations for shredded wheat were eventually sought or obtained in
Canada, the United States, and the United Kingdom.
When the patents expired, Kellogg became a competitor and was immediately
sued for infringement and passing-off.
Held: For Defendant. Kellogg successfully moved to ensure that registrations for
shredded wheat were refused or invalidated in major markets.
Had Nabisco systematically promoted its product as "shredded wheat biscuits" -
denoting it as a "biscuit" while staking out "shredded wheat" as a trade-mark -
the words may perhaps in time have become distinctive of a particular producer
rather than a particular product.
As it was, Nabisco itself used "shredded wheat" in its packaging and advertising
to denote the product.
The public came to understand the words this way.
The words "Shredded Wheat" used as the name of biscuits manufactured by a
plaintiff under expired patents held to be completely descriptive and, in the face
of the use of the words on cartons in which the biscuits were sold and in
advertisements, held not to have acquired a secondary meaning so as to
indicate exclusively the biscuits manufactured by plaintiff and warrant restraint of
the use of the words "Shredded Wheat" or "Shredded Whole Wheat Biscuits" on
a similarly composed product manufactured by defendant.
Evidence XI A — Trade mark — Infringement — Passing of — User —
In an infringement or passing off action, in ascertaining what it is that indicates
who is the manufacturer of goods, great weight must be attached to the steps
which the manufacturer takes to indicate origin; hence the manner in which the
plaintiff used the words which he claims to be the subject of trade mark, is
Carling Breweries Ltd. v Molson Companies Ltd. (1984) 1 C.P.R. (3d) 191
The respondent applied to the Registrar of Trade Marks to register the mark
CANADIAN for beer based upon use from November, 1959.
The respondent filed evidence to establish that the mark was distinctive as of
the date of the filing of the application, namely, December 10, 1971. The
evidence included a survey which had been undertaken on its behalf.
The opponent alleged that the mark is descriptive of the place of origin of the
wares and denied that the mark had become distinctive.
It also alleged that the mark offended as a mark that had become recognized by
bona fide commercial usage in Canada as designating the place of origin of the
The Registrar of Trade Marks held that the mark was registrable and dismissed
the opposition of the appellant,
Held, per Strayer J., the appeal is allowed.
The material date for a determination of the issue of distinctiveness under s.
12(2) of the Trade Marks Act is the date of the filing of the application.
The onus rests upon the applicant rather than the opponent. The applicant has
failed to discharge the heavy onus resting on it.
The survey evidence relied upon by the applicant suffered from the weakness
that the sampling was not representative.
The issue under s. 10 of the Trade Marks Act was at best marginal and perhaps
was not properly before the registrar. In any event, the opponent had not
established that s. 10 was a bar to the registration of the applicant's trade mark.
The material date for the determination of that issue is the date when the
applicant first used the mark.
Jacob Jacoby, The Psychological Foundations of Trademark Law: Secondary
Meaning, Genericism, Fame, Confusion and Dilution, 91 Trademark Rep. 1013
Jacoby On Secondary Meaning[p248]
Secondary Meaning No secondary meaning
Characteristic of Could be characteristic of only one
item of any (or various) item(s)
o He puts into perspective our dichotomy from Abercrombie and Fitch - what
matters is upon seeing a word that it is able to trigger recognition of a specific
product and its source. It is a question if ppl's cognitive networks that these
features relate to a particular source. This can be achieved by a word that does
not begin that way - it can be achieved through marketing. This is the kind of
evidence you would have to put forward in order to claim secondary meaning
under s. 12(2).
o s. 32 tells us that if you are going to be registering under s. 12(2) you have to put
forward info to the Registrar. You are going to want to talk about the ads you
have done and where they been run and how much money you have spent on
them - how you have associated particular mark with your wares. Was it always
on your letterhead.
o You can show where your physical locations are and where your products are
sold and where your sales take place. Also the length of time you have been
using mark will help support your claim for secondary meaning. You want to be
able to do this across Cda. If there are provinces where you cannot show use of
the mark then those provinces are those geographical areas will not be included
in the scope of your rights. s. 32 (2) that tells us the kinds of limits that can be
imposed by the registrar by virtue of the fact that you have to go through s. 12(2).
o At common law the case seemed to be anything could be protected if you could
show that reputation - rep was the first thing you had to show - there was no real
restriction on this. One of the cases cited to us was the ?? case - trademark in
the mark "camel hair" -belts made of camel hair - secondary meaning was found
b/c everybody knew that camel hair meant belts from this source - did not want to
confuse - under registration no amount of secondary meaning would save it from
its genericness. How do you find that line b/w generic and descriptive if it is that
important? Question that comes out of Shredded Wheat as to where that line is?
Scope of s. 12(2) is going to be very important b/c it has ability to limit restrictions
in s. 12(1). It is a very heavy onus in order to demonstrate secondary meaning - it
does not matter how successful you are in the market.
D. Confusing with a Registered Mark - s. 12(1)(d), s. 2, s. 6
s.12(1)(d): Trademark is not registrable if it is confusing with a registered
s. 2: Confusing means a trademark or trade-name the use of which would cause
confusion in the manner and circumstances described in s. 6
s.6(2): Confusing if the use of both trade marks in the same area would be likely
to lead to the inference that the wares or services came from the same person
(confusion as to source)
s. 16: Pending applications and confusion.
s. 19: Gives owner of registered trademark exclusive rights in Canada to use
trademark in connection with those goods or services (NOTE: no intent required
– even if accidental copy, still infringement) – this is in connection to exact copy
of trademark – narrow definition
s.20: Infringement is deemed, if the trademark is confusing with a registered
trademark – broader definition.
Involves determining an actual question of fact
The applicant carries the burden of showing "no reasonable likelihood" of
Have to look at the nature of the mark as a whole.
You don't break a mark up into elements when looking at confusion
Factors to Consider in Respect to Confusion
Degree of Resemblance (Starting Point see below) (e)
How similar are the names in direct comparison to one another?
Whether there is a significant degree of resemblance, appearance,
sound or some idea suggested?
This is a question of fact; any solid evidence of any one of these may be
sufficient for a finding of confusion.
Courts put different weights on different factors. These can be confusing
cases, so stick with the facts.
Likelihood of Confusion
Deals with the subjectivity of individuals.
Responses are quantifiable using cognitive perception techniques.Need
to prove that people are not confused between the two names
Nature of the Activities of the Parties to the Action
Respondents need to have some familiarity of the activities of the
organizations otherwise it is difficult to claim that confusion between the
Inherent Distinctiveness (a)
Is there inherent distinctiveness or are both marks generally perceived to
be one and the same?
Length of Time in Use (b)
A party can claim that they were the first to use their mark.
Benson & Hedges (Canada) Ltd. v St Regis Tobacco Corp. (1968) 57 C.P.R.
The appellant opposed an application for registration of the mark GOLDEN
CIRCLET to be used in association with cigarettes. The appellant relied upon its
registration of the mark GOLD BAND for cigars, cigarettes and tobaccos.
The Registrar of Trade Marks rejected the opposition and an appeal to the
Exchequer Court was dismissed on the ground that the Court could not
substitute its opinion for that of the Registrar even though in that Court the Court
would otherwise have allowed the appeal.
Held: On appeal, held, per Ritchie, J. (Martland and Hall, JJ., concurring), the appeal is
The decision as to whether or not a trade mark is confusing with another mark
within the meaning of s. 6 involves a judicial determination of a practical
question of fact and does not involve the exercise of the Registrar's discretion.
It is open to a Judge of the Exchequer Court to substitute his own conclusion for
that of the Registrar of Trade Marks and the decision of the Supreme Court of
Canada does not preclude him from so doing.
The marks are confusing for the reasons given by the President of the
Per Pigeon, J.: The appeal should be allowed. The Registrar of Trade Marks did
not give explicit reasons. He summarized his case and stated his conclusion.
The appellate tribunal could not ascertain the grounds for his decision and could
not see whether these were well founded in law. The Court therefore had a duty
to form its own opinion on the proper conclusion to be reached. The marks are
Per Cartwright, C.J.C. (dissenting): It was open to the President of the
Exchequer Court in the circumstances of this case to substitute his judgment for
that of the Registrar.
It is unlikely in the extreme that either a retail dealer in cigarettes purchasing
from a wholesale or the average customer buying cigarettes at a tobacconist's
counter would be likely to draw the inference that cigarettes contained in a
package bearing the trade mark GOLDEN CIRCLET were manufactured by the
EDITORIAL NOTE: This decision is of considerable interest in that it explains
the application and limits of the decision of Rowntree Co. Ltd. v. Paulin
Chambers Co. Ltd., supra.
The decision of the majority places a decision in an opposition proceeding
outside the scope of the Registrar's discretion and the Court after giving weight
to the decision of the Registrar can substitute its own opinion for that of the
The Court is not limited in reaching its own decision by being required to make a
preliminary determination that the Registrar acted on a wrong principle or
otherwise failed to act judicially. In this case the majority of the Court accepted
that the Registrar had not so acted but reached a different conclusion from him.
Molson Companies v John Labatt Ltd. (1994) 58 C.P.R. (3d) 527 (F.C.A.)
The respondent applied to register the trade mark WINCHESTER GOLD for use
with beer. The appellant opposed the application alleging a likelihood of
confusion with its trade mark MOLSON GOLDEN.
The Registrar of Trade Marks found the respondent's trade mark to be
registrable and dismissed the opposition. An appeal to the Federal Court, Trial
Division was dismissed.
Held: On appeal to the Federal Court of Appeal, held, the appeal should be dismissed.
The words "gold" and "golden" are adjectives which, like blond, amber, pale,
brown and dark are merely descriptive of categories of beer to which a given
brand belongs. A trade mark is to be looked at as a whole.
Although the words "gold" and "golden" have been used and advertised
extensively in relation to the appellant's products so as to acquire some
distinctiveness, one should not lose sight of the fact that the words are merely
The oft-quoted decision of the House of Lords in Office Cleaning Services, Ltd.
observes that a greater degree of discrimination may fairly be expected from the
public where a trade name consists wholly or in part of words descriptive of the
vehicles to be sold or the services to be rendered.
The trade marks MOLSON GOLDEN and WINCHESTER GOLD are sufficiently
distinctive as to avoid confusion.
The court could find neither an overriding error of law, nor an error in fact, which
would justify intervention.
Gold or golden: descriptive term for beer; thus inherently narrow
scope of protection
Weetabix of Canada Ltd. v Kellogg Canada Inc.  F.C.J. No. 953
Appeal by Weetabix from the dismissal of its application to register the trade-
mark "Fruit Dots" for breakfast cereals based on a proposed use in Canada.
The application was opposed by Kellogg, which owned the trade-mark "Fruit
The Registrar found that the trade-marks were confusing.
Weetabix argued that the Registrar erred in law and fact in determining that the
trade-marks were confusing, and in disregarding the effect of the co-existence of
several similarly named breakfast cereal trade-marks.
It also sought to introduce additional evidence of a substantive nature that was
not before the Registrar. Kellogg argued that the new evidence should not be
HELD: Appeal allowed.
The material date for assessing whether the trade-marks were confusing was
the date of the application.
Therefore, the additional evidence was irrelevant.
The trade-mark Fruit Dots was no different from several trade-marks already
The small difference between the two trade-marks was sufficient to differentiate
them, particularly the different spelling of the first word and the different
appearance, sound and meaning of the second word.
Confusion between the two marks would not arise. Concurrent use in the United
States of the two marks was mitigating of the confusion issue.
The Registrar's decision was incorrect and the trade-mark should have been
Word LOOPS merely describes the shape of the breakfast cereal. As a result
the marks merit a narrow ambit of protection
Held: The trademark is famous but not inherently distinctive. Are people confused in
fact? NO! There was evidence that the two marks were not confused in U.S. markets.
Should famousness play a factor in defining scope of rights we are dealing with?
Remind us of spectrum of distinctiveness. (picture)
Weak to Strong - a weak mark can still be registrable.
Weakness and strength should only be used to inherent attributes of the mark
itself - then over and above those considerations we have other consideration -
what kind of distinctiveness has mark acquired in the marketplace.
ppl think that strong marks means famous marks but Craig says that is not the
case. You can have a famous mark that is weak. Think of McDonalds - it is weak
it is a name and therefore weak. Think Coca-Cola and Fruit Loops - famous mark
but weak marks. Strong marks can also be famous like Kodak, Exxon - they are
on the right side of he spectrum under Fanciful and Arbitrary
if you are strong mark then you have a wide ambit of protection - you do not have
to rely on fame to expand your rights
If you are weak mark but famous you can expand your rights.
Court in Fruit Loops case on pg. 262 in the 2nd quote in the page - 4th para - the
stronger mark it is the more protection..."
Weak marks is mentioned on the last quote in 263 - 3rd last para " the word
loops merely describes...narrow ambit of protection"
Court was willing to concede that mark was famous but that was not enough for
Court to say that other cereal was confusing.
When does famousness affect protection? Look at s. 6 (5) - the extent to which
marks have b/me known
Jacoby articles - pg. 385 - research shows that for any individual. Ex. the
information with strongest associative links...stimuli - Jacoby syas that this is why
famous marks tend to be so powerful and says that stronger marks are entitled o
broader scope of protection. What sets off the nodes?
If you saw word "Spritz" on the side of a can b/c "Sprite" was so popular you
might think it was Sprite b/c it is on a green can. The more present an image on a
can the more you may be confused. If famous you are more easily confused with
Relationship b/w traders in the marketplace: so if something is famous and we
want to make sure competition is fair we need to go out of our way to protect
famous marks from other traders - person who made the mark has laboured and
invested - he deserves respect and for rights to be protected. Everybody wants to
have mark that looks like their's- there is more incentive for ppl in marketplace to
run off coattails of Sprite for example.
It would be naive to suggest that sense of moral justice does not pervade this
discussion - Court expresses concern about making sure that successful
entrepreneur is protected. pg. 298 this is from Pink Panther case -2nd para
"what the appellant seeks to do is to profit financially from the goodwill..." copycat
trying to benefit from s/one else. How does this compare from Cadbury
Schweppes case? The challenge is working out whether or not law using the
Trademarks Act stays true to this principle or goes a little bit further. We have to
balance these different interests.
(i) Relevance of fame - nature of trade - s. 6(5)(d), s. 15
McDonalds' Corp. v. Coffee Hut Stores Ltd.  (FCA)
McDonalds have lots of products that begin with "mc" and then you have
"McBeans" coffee and they are trying to register and they are being opposed by
McDonalds - they are saying we have family of trademark b/c we have
McNugget, McChicken etc.
They have been proliferated the marks - they want to prevent anyone from have
"mc" plus nay kind of food.
They want monopoly - this is they have to oppose every person trying to
register. McBean sells coffee - they are not huge company thought.
pg. 268 "I consider that there is a potential overlap in the trades of the parties. Given
that there is at least some resemblance b/w the marks given that the opponent's mark
MCDONALDS is extremely well-known and given that there have been extensive
sales of the brewed coffee in association with that mark. I find that the applicant has
failed to satisfy the onus on it to show that its mark is not confusing with the
resgistered mark McDs for the wares of coffee Hut"- the registrar, rationale of the
registrar in finding that the mark would be confusing if it were registered in
relation to coffee and tea. he used McDonalds and comparison pt. McDonalds is
the mark that is famous and that it was is relevant here. There is a potential
overlap in the trade of coffee.
So what he found was that given that there is some degree of resemblance
between the marks - only "Mc" in this case but given that McDonalds mark is
extremely well known and there have been lots of coffee sold under this mark
then confusion will be likely.
The Extent of the Use, some overlap in the nature of the wares s. 6 (5)(c
When this is appealed this interpretation is rejected by CA pg. 269 - marks are
not to be compared in a vacuum but how marks are used in the marketplace.
The test is whether on first impression if an average casual purchaser would
confuse one mark with another. "Next criterion in determining...is resemblance b/w
the trade names in appearance or sound in the ideas suggested by them...the marks,
however and to be compared as they are used in business and as they are used in
business and as they will be recalled by imperfect recollection; they are not simply to
be viewed side by side thereby encouraging a critical examination of every minute
detail. A TM does not lie in each of it particular parts but in the combination of them
The average customer and the casual customer. In the quote 3rd para pg. 269
"the marks, however are to be compared how they are used in business but not
side by side..." - how will is operate in the context of trade. Average and casual
consumer with imperfect recollection.
Really all surrounding circumstances can be relevant and this comes from
languages of the Act which says al the surrounding circumstances. Taking this
as out test and our template for making the comparison it notes that McBeans is
a store and that McDonalds is a food chain. McDonalds caters to children
(relevant market) whereas gourmet coffee shop caters to adults and therefore
diff in clientele who will be in your store so that is relevant consideration and
these are two very diff business and when it put it into that context it think
consumer confusion is unlikely.
Court puts emphasis on the nature of trade s. 6(5)(d) it minimizes importance of
If you look from bottom of 260-270 "I think that the Registrar erred in finding ,
that the TM McDonalds has become famous w/ respect to the sale of coffee given that
there have been extensive sales of coffee in association with that mark.
Notwithstanding, the volume of McDs sales of coffee, it reps only 4% of their total
sales and I fail to see how this establishment the mark is associated specifically with
coffee...coffee sold in dissimilar establishments is a factor that would decrease risk of
confusion". Court says that registrar erred in finding that McDonalds was famous
mark in respect with coffee - the fame has to be understood in context with the
wares that the mark is associated." McDonalds is not famous in association with
coffee notwithstanding the volume of sales.
The relevance of the overlap is diminished when you look at the overlap in
which the wares were used.
If the marks have been used in same market and there is no evidence of
Recall the Fruit Loops case and the comparison of Fruit Loops and Fruit Dots
and there was no confusion.
There is no evidence of confusion - you do not have to present evidence of
confusion and there is evidence that marks have co-existed the courts can draw
confusion from this.
In terms of family of marks argument they said that family of marks gives them
wider scope of protection - pg. 272 "You can see it says that if there is say family
of trademarks this would indicate and give owner wider measure of protection than
would otherwise be the case if the determination more exclusively made on the basis of
etymological characterization of competing marks"
If the marks is just McDonalds and comparing to McBean and then you start to
think that it is all the marks then it is more likely that s/one is confused in think
that McBean is part of family and therefore came from the same source.
s. 15(1) Notwithstanding section 12 and 14, confusing trade-marks - means if
McDonalds has registered McChicken then is can register McNugget even
though they are confusing with each other.
There relevance of confusing marks - they would assume that other person's
marks came from the same source - it is relevant from the extent that
consumers would assume an association or the same source
You have to prove that people know there is family of marks but also and more
importantly it has to be that confusing is actually likely to result.
On appeal McDonalds said that not enough attention had been paid to this
argument and they deserved wider ambit of protection.
Where the word is common to the trade and you cannot just include it in the
family of words - decotech and decofix - you would have no right over deco and
juts cuz you registered marks with that at the start doesn't mean you have right
to claim it as your won. If its common prefix - customers would not be misled but
the occurrence of a common prefix.
Court has problem that it should give monopoly over Mc + other words. Court
seems to accept that McDonalds may have exclusive right to Mc + food in the
food business but it would still not give it that right in general. You cannot start
another company with "Mc" McDonalds saying they might want to use this
name one day.
Court was not willing to say that just b/c McDonalds might one day sell
something called McBean is not enough since they are not selling McBeans now
Concern is with monopolization of something that is common. Concern is
that you have to keep these limits no matter how inundate d the marketplace is
with McDonalds products.
In the appeal decision on pg. 276 "I do not b/ve the creation of a 'family' of names
involving the joining in one word of the Gaelic 'Mac' or 'Mc' with species of fast food
genus or with other nouns, verbs, and adjectives can have the effect of precluding the
use of those prefixes as separate words either standing alone or in combination with
Miss Universe, Inc. v Bohna  1 F.C. 614 (C.A.)
This was an appeal from a decision of Strayer J. holding that there was no
serious likelihood of confusion between the trade marks "Miss Universe" and
"Miss Nude Universe" for use in association with the operation of a beauty
The Trial Judge held that with respect to Trade-marks Act, paragraphs 6(5)(c)
and (d) concerning the nature of the services and of the trade in which the two
were engaged, there was a vast difference between the applicant's services and
those of the opponent.
He found that there was a vast difference in ambiance between the annual Miss
Universe pageants and the numerous Miss Nude Universe contests in bars and
taverns and that only the most unthinking would assume that Miss Universe Inc.
had licensed the sort of performances in drinking establishments which may
come to be described as Miss Nude Universe pageants.
The Trial Judge held that "Nude" in the middle of the applicant's trade mark was
of an arresting significance which would convey to all but the most indifferent
reader a profound difference between the two contests, such that "Miss Nude
Universe" was distinctive.
Held, the appeal should be allowed.
The Trial Judge erred in failing to address the issue of the scope of protection to
be accorded to a trade mark as widely known and used as "Miss Universe,"
particularly in the very area, organization of beauty pageants, which a newcomer
was endeavouring to enter.
"Miss Universe" is a well-known and reputable name. The Trial Judge should
have examined the facts of this case on the assumption that the appellant's
trade mark was to be accorded a particularly wide scope of protection and that
the burden imposed on the respondent to dispel any likelihood of confusion was
particularly difficult to overcome, even more so in the field of beauty pageants.
He ignored the fact that the respondent was a newcomer entering a field already
extensively occupied by the appellant, and borrowing the whole of a name
already established in that field.
It was the respondent's duty to select a name with care so as to avoid any
confusion-as is required under the definition of "proposed trade mark" in section
2-and so as to avoid the appearance that he intended to jump on the
bandwagon of an already famous mark.
The Trial Judge did not address that duty. Had the Trial Judge considered the
scope of the protection accorded to start with to the appellant's trade mark, he
would have approached in a different way the factors defined in paragraphs
6(5)(c) and (d). He would have realized that these factors could not be as
determinative as he found them to be.
The Trial Judge also erred in emphasizing the differences in the nature of the
services and in the nature of the trade instead of considering the likelihood of
confusion if the two businesses were carried on in the same area in the same
manner. Services associated with both trade marks were principally related to
the operation of beauty pageants.
Both parties were providing entertainment services by conducting, hosting and
promoting beauty pageants. The beauty pageant services provided by both
shared the same format and the same basic process.
The Trial Judge erred in ignoring the evidence that both trade marks were used
or to be used, respectively, in the same industry and in concentrating rather on
differences allegedly intended by the respondent, but neither guaranteed by him
nor referred to in his application for registration, such as the location of the
contests, the conditions to be met by participants and the ambiance in which the
events would be held.
Not only were these differences inconclusive, in view of the basic similarity
between the services involved, but they were irrelevant to the extent that
regardless of the present intention of the respondent, either he or any successor
in title, should the trade mark "Miss Nude Universe" be found registrable, would
be free to change the format, location, style or character of his beauty pageants
at any time.
Finally the Trial Judge did not refer, when he dealt with the issue of confusion, to
the factor set out in paragraph 6(5)(e), i.e. the degree of resemblance between
the trade marks in appearance, sound, or in the ideas suggested by them. It was
a mistake to consider the word "Nude" in isolation, as being of an "arresting
significance." There is, when one looks at both marks, a degree of resemblance
which could not be ignored.
Ratio: The stronger the mark, the greater ambit of protection, thus more difficult onus to
prove. (eg: Coke pop v. Coke bike – very different product but Coke is such a strong
trademark that one might think Coke makes the bike or licensed it)
Held: For Miss Universe. Court of appeal says there was likely confusion, disagreeing
with trial judge. Onus on applicant to establish that, on the balance of probabilities, there
is no likelihood of confusion with a previously used and registered trademark.
Pink Panther Beauty Corp. v United Artists Corp.  3 F.C. 534 (C.A.)
Respondent's trade-mark "The Pink Panther" (from the comedy films with Peter
Sellers as Inspector Clouseau), the subject of the case herein, has been, for
over thirty years, registered for use in Canada in association with the
In 1986, the appellant, Pink Panther Beauty Corporation, applied to register the
trade-mark "Pink Panther" for proposed use in association with hair care and
beauty product supplies, and in the operation of a business dealing in their
distribution, and instructing and educating others in their distribution.
In the opposition proceeding, the Registrar of Trade-marks found that, given the
completely disparate nature of the wares, services and trades of the parties,
there was no likelihood of confusion between the marks.
On appeal from that decision, the Trial Judge found that, since the mark was
very famous and, therefore, worthy of a wide ambit of protection, the differences
in the nature of the wares and of the trades of the appellant and the respondent
were less significant than they might otherwise be in the determination of the
likelihood of confusion. He found in favour of the respondent.
This was an appeal from that decision.
Held (McDonald J.A. dissenting), the appeal should be allowed.
Per Linden J.A.: The essential question was whether the Trial Judge was correct
in concluding that there was a likelihood that the appellant's mark would, in the
mind of the average consumer, be confusing with the mark of the respondent.
Upon examining the basis for the protection of trade-marks and the rationale
behind the protection for certain things and not others, it must be remembered
that when deciding property issues, it is always a matter of balancing the public
right to competition with the private right to ownership.
What is important is that the trade-mark be associated in the minds of the public
with the goods produced by the trade-mark owner. It is the association of a
trade-mark with a particular source which is the key to understanding the rights
protected by the Trade-marks Act.
The Act makes clear that what is protected is not the exclusive right to any mark
that a person might think of, but the exclusive right to use it in association with
certain products or services.
Subsection 6(5) of the Act lists six factors that must be considered in
determining whether there is a likelihood of confusion between trade-marks, five
specific and one general. The specific factors are: the inherent distinctiveness of
the trade-marks and the extent to which they have become known; length of
time in use; nature of the wares, services or business; nature of trade; similarity
in appearance, sound and idea suggested. The general consideration is: all the
In cases involving similar, famous trade-marks, much of the case law has little
precedential value. The cases turn on their particular and often unique facts. In
these cases, it is necessary to adjust the weight given to the individual criteria or
to the surrounding circumstances.
The Trial Judge considered the relevant factors and it was difficult to fault his
factual conclusions with respect to any one of them, but, taking them all
together, he erred in the way in which he weighed them and in the conclusion he
reached. The marks, while not identical, were very similar.
The trade-mark owned by United Artists was clearly a famous and inherently
distinct one, and has been in use in Canada for some thirty years. However, the
issue to be decided was not how famous the mark was, but whether there was a
likelihood of confusion in the mind of the average consumer between United
Artists' mark and the one proposed by the appellant with respect to the goods
and services specified. In view of the gaping divergence in the nature of the
wares and the nature of the trade, the question had to be answered in the
negative. The Trial Judge did not give sufficient weight to the fact that not only
were the wares in each case completely disparate, but there is no connection
whatsoever between them.
Based only on the fact that the respondent's mark was famous, there should not
be an automatic assumption of confusion. In the circumstances, remembering
that the test to be met was likelihood of confusion (not possibility of confusion),
the fame of the mark could not act as a marketing trump card such that the other
factors are thereby obliterated. Just because Hollywood films are well known,
the whole world is not barred forever from using words found in the titles of
Hollywood films to market unrelated goods.
While the public might be confused by a product which used the name "Pink
Panther" and simultaneously depicted a pink cat, the use of the words alone
cannot be said to give rise to such confusion.
Much of the fame which this Court and the Court below attached to the
respondent's mark stemmed not from the words "The Pink Panther" but from the
associated music and cartoon images. In this case, words only were used.
There was no accompanying design or music.
It was reasonable to conclude that the average person, without being presented
with these other hallmarks, would not confuse the source of the appellant's
proposed mark. However, this did not give the appellant carte blanche to exploit
all of the respondent's trade-marks in selling all products in any way it chooses.
It was still subject to the restrictions of the Trade-marks Act and the common
Per McDonald J.A. (dissenting): The appeal should be dismissed. The Trial
Judge did not err in weighing the relevant factors to be considered under
subsection 6(5) of the Trade-marks Act. It was precisely because of the fame
and goodwill associated with the name "The Pink Panther" that the appellant
has chosen that name for its business. What the appellant sought to do was
profit financially from the goodwill associated with the respondent's trade-name.
While the appellant may use this name, it must first receive the permission of the
respondent. To come to any other result in the case of such a famous and
widespread trade-name as "The Pink Panther" tips the balance too far in favour
of the copycat artist seeking to profit financially from someone else's creative
As Polysar Ltd. v. Gesco Distributing Ltd. (1985), 6 C.P.R. (3d) 289 (F.C.T.D.)
makes clear, when dealing with a widespread, distinctive trade-mark, it is not
always necessary that the mark in question be used for similar wares or in a
similar industry for confusion to exist.
Given the popularity of the respondent's trade-mark, the extent to which it has
prevailed in the Canadian market (over 30 years) and its widespread
diversification (from comic books to advertisements for Fibreglass), allowing the
appellant to use the name "Pink Panther" will almost certainly be confusing for
the average consumer. It is naïve to believe that the appellant's decision to use
the name "Pink Panther" was not deliberate or unrelated to the mark's fame.
Seeing the words alone will leave the average consumer wondering whether the
respondent is the promoter behind these new products. Just as seeing the
words Mickey Mouse or Donald Duck conjure up a mental picture of those
Disney characters leading the consumer to believe that Disney is associated
with the product, the name Pink Panther on a shampoo bottle will have the
Issue: Not about how famous the mark is, but whether there is likelihood of confusion in
the mind of average consumer between United Artists‘ mark and the one proposed by
the appellant with respect to the goods and services specified?
A trademark is registered in relation to marketing or wares or services not in
Protection is not for exclusive right to any mark that a person may think or, but
the exclusive right to use it in association with certain products or services
(consistent with s. 4(1); s. 2 ‗distinctive‘; s. 20)
Held: For P - Beauty Corp. United Artists produces movies; does not manufacture or
distribute beauty products; not likely to be made available in the same places of trade as
the appellant‘s products no likelihood of confusion
To find a connection in this case would effectively extend protection to every
field of endeavour imaginable; no area that Hollywood‘s marketing machine
would not control barred from using words found in title of Hollywood film to
market unrelated goods
Same mark for different products OK as long as confusion as to source is
Onus is on the applicant to show no likelihood of confusion.
Purpose of mark is to distinguish wares or services from those of others; thus
not considered in isolation, but only in connection with those wares or services
Toyota Jidosha Kabushiki Kaisha v Lexus Foods Inc., (2000) 9 C.P.R. (4th)
The applicant had filed an application to register the trade-mark LEXUS for use
in association with canned fruit products.
The opponent had opposed the application on the basis of its registered trade-
mark LEXUS used in association with automobiles. The registrar had rejected
On appeal to the trial division, the registrar's decision was set aside. Based on
survey evidence that had been filed on appeal, the trial judge found that the
opponent's trade-mark LEXUS was famous or very well-known.
The applicant appealed to the Federal Court of Appeal.
Issue: Whether consumers buying canned food with the "Lexus" mark would be
confused as to source?
Held, the appeal should be allowed. For Lexus Foods
In determining the likelihood of confusion, it is necessary to evaluate all of the
relevant factors listed in s. 6(5)
Confusion is less likely when the wares are markedly different, even when the
opponent's mark is well-known.
When the wares are dramatically different as cars and canned fruit, this factor
must be given considerable weight, something the trial judge failed to do. The
trial judge similarly ignored the nature of the trade being compared. The
opponent's automobiles were sold all over the world in special buildings used for
that purpose. The canned goods in question were sold largely to institutional
purchasers in the province of Quebec. It was hard to see how anyone about to
buy some of the applicant's canned fruit would ever have entertained the
thought that the Japanese manufacturers of the LEXUS automobiles were the
source of this product.
While the notoriety of a mark may well be a significant factor to consider, it is not
controlling. Moreover, there is no obligation on the court to nurture up-and-
coming trade-marks to preserve their rising reputation as had been implied by
the trial judge. Similarly, while the fact that the word "Lexus" was a coined word
may have been a factor worth considering, it could not have controlled the
outcome of the case.
The fact that the applicant chose to use the word "Lexus" because it was a
quality name might be a factor to consider in an infringement claim, particularly
in relation to the amount of damages to be awarded. However, it cannot have
much, if any, weight in the context of considering a likelihood of confusion.
There is no doctrine of mens rea in the field of trade-marks.
Fame does not in and of itself prohibit the use of a mark outside the field in
which it is registered.
Fame cannot be used to create a connection that does not exist.
Just because it is well known, the world is not banned forever from its use.
Just because a mark is famous doesn't mean it should be given protection in
every category of wares and services particularly if there is no likelihood of
confusion as to source.
Weight has to be given to every factor. There has to be some linkage or
resemblance of wares.
Survey was about fame, not likelihood of confusion. No obligation on the courts
to protect a rising star.
Although they knew "Lexus" was a quality name, intention of choosing a
particular mark is not at issue in trademark because no "mens rea"
E. Obscene or Immoral: ss. 12(1)(e), 9(j) - absolute bar to registration
Trademarks are communicative tools that influence people, therefore courts
need to be concerned with responses of the public at large
This requires survey evidence
Not just about subjective perceptions of Registrar o Court
Ensures that public symbols do not become pawns of trade or proprietorship
A "scandalous, obscene or immoral" word or device cannot be used as a trade-
mark or otherwise.
A fair amount should be tolerated, since commercial expression is protected
under section 2(b)
of the Canadian Charter of Rights and Freedoms
s. 12(1)(e): cannot register a prohibited by s. 9 or 10 can’t register it
s. 9(1)(j): Prohibited Marks : Includes any scandalous, obscene or immoral word
Absolutely Prohibited: s. 9(2): These cannot be adopted unless by consent
Miss Universe, Inc. v Bohna  (F.C.T.D.) - pg. 310
Facts: Registration objected based on: s.12(1)(e) – confusion and
s. 9(1)(j) – obscene.
Appeal from Registrar's rejection of opposition to registration of trade mark "Miss
Opponent owning trade mark "Miss Universe" for use in association with various
Holding trade mark incorporating word "nude" not prohibited by s. 9(1)(j) (trade
mark consisting of word with immoral connotations) — Appeal dismissed
Opposition should not be rejected on technicalities if no prejudice caused to
applicant — Applicant well aware of nature of opponent's services
No likelihood of confusion between trade marks in relation to services — "Miss
Nude Universe" pageants to be held in public drinking establishments —
Candidates "professional dancers who entertain in the nude
Pageants unlikely to become known outside immediate area of drinking
establishments nor patronized by anyone other than those devoted to "adult
entertainment" — 1988 "Miss Universe" pageant watched on television by 600
million viewers — Host sites pay up to $750,000 to obtain pageant and benefit
from publicity — Sponsor paid $2,250,000 for broadcasting rights — Strict
conditions for contestants and winners
Only most unthinking would assume opponent licensed Miss Nude Universe
pageants — Word "Nude" of arresting significance conveying to all but most
indifferent reader profound difference between contests — Applicant's trade
mark distinctive — "Nude" acceptable adjective
Public would not view it as taking on "scandalous, obscene or immoral"
Miss Nude universe for beauty pageants and associated merchandise was
unobjectionable on this count:
however distasteful nude (or other) beauty contests may be too many, the mark
itself was not scandalous to the public at large.
Held: Court not engaged in assessing the activity itself.
Must asses in relation to wares with which the mark is associated.
In re In Over Our Heads, Inc. 16 U.S.P.Q.2D (BNA) 1653 (1990)-pg. 312
Facts: Opposition to registering "Moonies" because the two oo's looked like a bum for
dolls that drop their pants.
Held: Not scandalous. Guidelines are vague, determination is highly subjective.
Harjo v Pro-Football, Inc. (1999)(US)
Natives challenged the "redskins" mark as degrading, racist and scandalous.
Mark did not differentiate itself from negative connotation.
Ratio: US Act goes beyond just scandalous.
Held: In favour of the Natives. Did not find it to be a pejorative word that might provoke a
Kimberly A. Pace, The Washington Redskins Case and the Doctrine of
Disparagement: How Politically Correct Must a Trademark Be?, (1994)22
Pepp. L. Rev. 7
F. Connection to an Individual
(i) Trademark Act, ss. 12(1)(e), 9(k), 9(l)
We were beginning to look at s. 9 - prohibited acts - specifically b/c s. 12 says
that you can not register anything under s. 9. They could potentially be broader
other than mark that cannot be registered but also a mark that cannot be
ADOPTED at all.
Prohibition of marks that are obscene or immoral
Today: s. 9(1)(k) and to a certain extent (l) as well.
s. 9(1)(k) "any matter" is anything at all that would suggest connection with living
s. 9(1)(l) says the same of a portrait, signature of a person who is living or died
within last 30 years
protecting right or interest that a particular person has o their persona or their
features that the public might use to identify the individual
a person will have some right or interest in their personality or features that are
known to public
for a person's portrait or signature is also concerned with people who died - it
cannot be used until 30 years after a person is dead in connection with a
the prohibition that we are concerned goes beyond attributes of the mark as
This is reflected in s. 9 (2) which gives us a better of what rationale might be.
Nothing in the section prevents adoption...consent. If the relevant individual did
consent to have relevant indicia used with business than the s. 1 prohibition need
These prohibitions are designed to protect an individual who might be protected
by the use of that mark.
the prohibition only becomes relevant when used without the person's consent
Not so much concerned with the mark being able to have function of mark but
rather in the interest of the person.
This is legal environment in which endorsements survive.
in the case of a name the consent of that person is relevant with s. 9 then s. 9 is
not an issue but you would still have s. 12 to deal with (a) which means you are
not allowed to use a name for trademark and would be prima facie unregistrable
Rmbr the diff b/w s. 12(1)(a) and s. 12(1)(e) whenever names are involved.
Carson v. Reynolds (1980) (Fed. Ct. TD)
Facts: Was somebody allowed to use mark "Here's Johnny" for port-a-potties. Applicant
was trying to find something catchy paying on word "John" for washrooms. Opposition
says that use of "Here's Johnny" for anything will lead ppl to believe that it is associated
with Johnny Carson. This is perfect case b/c catch phrase is very well known. They were
able to show he amount of viewers, survey information (63% of respondents mentioned
Johnny Carson show. This case can be used as a template to see why other cases do
not fall that easily into this category.
pg. 336 "In my view, the same absolute prohibition regardless of injury or damage,
extends to the commercial exploitation of a living individual under s. 9(1)(k)"
Business was not allowed to exploit Johnny Carson's reputation without his
The ruling in his favour was dependant on pf. 336 2nd para. Not allowed to use
mark w/o consent
o The problem is that Courts have demanded this type of scenario all the time -
high standard - reasoning is more restrictive than it seems b/c it is the public 's
perception that is so critical to the ratio of the decision.
If you are famous your name has a value in the marketplace
In the Carson case the facts could limit its reasoning to say that individual had
significant reputation in the marketplace.
What is implicit is that the ss. here are significant for people who have significant
degree of fame in the relevant market.
This is very major limitation upon force and effect of s. 9(1)(k)
Fawcett v. Linda Lingerie (1984) - pg. 337
Facts: famous for hair and Charlie's Angels. She is here opposing registration of
trademark "FARA" for women lingerie and clothing. She says it is too close and it would
Issues: 3 basis of opposition
1. s. 9(1)(k) - 1st
2. The applicant was not entitled to register - she had previously made known the
mark for herself and for products she had endorsed.
3. She also said that mark was not distinctive - b/c she said the source would be
confused with her and not with the applicant
The problem with her case was establishing her fame and if ppl would think it
The court is of the opinion that establishing reputation is a vital part of
mounting the opposition on the basis of a cxn with a living individual.
The Court is looking or same reputation as in Johnny Carson case
Opposition fails b/c they cannot establish reputation to that extent
pg. 338 - "The opponent's evidence fails to establish any measure or fame or notoriety
for her name Farrah Fawcett, much less her given name Farrah. I cannot even
conclude that that name has acquired any measure of fame in Canda" Just Farrah
is not distinctive enough but maybe Farrah Fawcett would be but that was not
The fact that his name is Farha's name is irrelevant to this ground of opposition.
The problem with the action was that they failed to establish cxn and they were
not prepared fell afoul due to s. 9
This might be controversial based upon the wording of s. 9 it does not look like
the req'ment is that it has to be a famous individual. all it says is any living
individual. The issue here is that fame has been brought in over and above the
statute. So then does this means that the NEED to demonstrate public fame
makes sense when trying to oppose upon s. 9
The idea is that if Cdn. are not aware of a person or their existence and would
connect a mark to that person the mark does nto falsely suggest a cxn to that
person and this si where fame comes into play.
Should we be asking confusion questions from s. 6? Our inquiry only revolves
around s. 9. Why are we not taking into acct. the nature of the wares.
Jean Cacharel v. Reitmans Canada (1984)(TM Opp. Board) - pg. 341
Facts: The guy's real name was Bousquet and this was irrelevant to case b/c it matter
how he was known to the public.
pg. 342 "I do not consider on a balance of probabilities, that the average person who
would purchase clothing bearing the TM CHASALAINE would be misled by the use
of the TM CASHALAINE in assocaition with the applicant's wares into assuming
that a living individual (jean Cacharel) aka Jean Bousquet." they have a public rep
in Europe but no in Cda. and just b/c they want to build a reputation does not
mean Court will protect this before it even exists.
The idea here was that the name had not been used in a way that would
generate public recognition in Cda. and ppl would see it and associate it with
him s. 9 was irrelevant.
Even if Cacharel trademark was well-known in Cda. this does not mean he had
action with s. 9 even though they may have confusion but for purposes of s. 9
you have to establish cxn with living individual
Awareness has to be to you as a living individual when they see that mark
in both these cases there was a reluctance to guard or protect public
personalities who might want to use their name and use their rep in the Cdn.
It did not want s. 9 to be a way to get around other parts of the trademark act.
Baron Philippe de Rotschchild S.A. et al. v. Casa de la Habana Inc. et al.
(1987) (Ont. H.C.) - pg. 343
Facts: recognizable name famous for wine from France - class, wealth, luxury are all
connected with it. A cigar merchant had sign that said "Rothschild in Yorkville" - the
argument is that it would suggest positive connotation of prestige in his cigar business.
Held: Here the Court does not hesitate to grant an injunction and say this is the exact
thing that s. 9(1)(k) is supposed to protect
the Court also says in pg. 343 - "Further there has been appropriation of personality.
One cannot commercially exploit another's name or likeness w/o his permission. In
my view the tort or approproation or personality has been committed and must be
ii) The Common Law Right of Personality
o Tort of appropriation (non-examinable) but has relationship with trademark and
has relation to passing off
for somebody who is famous then the wrongful use for commercial gain of that
person's name or likeness is a tortious act.
it emerged as limitation for classic passing off
ppl should not be free to say that person endorses their product
Either read Glen Gould case or Robert Howell article.
the idea that comes out of this is that ppl who are famous have rights to protect
It is not clear how far this extends - in the Gould case it has to suggest an
endorsement situation exits when he doesn't.
Should it last after the death of a person - the answer seems to be yes but no
one knows how long.
Distinction is drawn b/w use of someone's person and he use of their person and
purpose to exploit for commercial sale (the latter is tortious act)
Functionality in general s. 13 and s. 32
pg. 380 - discussion of Elgin case within the case - the design of the handle was
not subject to TM protection b/c it was functional.
Goodall case - TM protection for stripe b/c it did not perform a f(x) - something
that is functional vs. something that is appropriate and protected.
The point is that the functionality rule is defining the limit and scope of TM law.
What is the terr of TM from another form of IP.
What is that we are trying to keep separate - patent law vs. TM. Patent are there
to protect things for f(x), utilitarian devices, inventions etc. but these things are
not appropriate subject matter for TM law.
It is important to protect this division b/c those thing have very different types of
We talked about this in our Shredded Wheat case - we should not extend TM
law to extend to patent monopoly.
If in the Elgin case - if they had protected handle they would have given them a
monopoly over that type of handle which is not the purpose of TM. If you want
protection - go through patent.
The place where this becomes tricky is in distinguishing guises.
Rule against f(x)lity is there is need to be dichotomy b/w wares we are selling
and the mark hat we are protecting. The place where is gets confusing is where
we are protecting get-up of the wares.
We know that distinguishing guises can be protected but we don't know on what
In our defns section we have defn of "distinguishing guises"
Defn: (a) the shaping of wares or their containers (this is where we have the
Defn: "Package" includes any container or holder ordinarily associated with
wares at the time of the transfer of ppty... Ex. the original Coca-Cola bottle.
It is very important that getup is very distinctive so only where it is functioning as
trademark -the term distinguishing guise as necessary quality means that by defn
it has to be distinguishing so when something cease to be distinguishing it
ceases to be distinguishing guise and seizes to be TM.
Recognizing these concern we have several provisions in Act dealing with
registration of distinguishing guises.
A lot of concentration should be now paid attn to textual analysis of legislation.
A mark that is primarily functional in nature is not protected by T/M
If it has a utilitarian character it will take us outside of T/M
Functional and ornamental features are elements that are integral to a
product or that make it attractive are not usually registrable as trade-marks.
Such features have included things like
A pattern on table glassware,
A triple-head design for the blades of an electric shaver,
A stripe encircling a grain storage bin;
In these cases, the market relied on trade-marks found elsewhere on the product to
distinguish trade source.
On the other hand, ten Xs cross-stitched on jeans, though partly ornamental, was
held to be a distinctive and effective trademark.
s. 13 the first thing to note is that it b/mes like prima facie unregistrable marks -
they could be equated with surnames and descriptives. Things that are not
usually registrable unless they fit into exceptions.
s. 13(1)(a) - D. guise is only reg if it has been used in Cda. by applicant to have
become distinctive - means you cannot file application for proposed mark. You
have to have used it already AND
s. 13(1)(b) - only if the exclusive use of the app of the guise in ass with the wares
is no likely to limit the development of any art or industry.
this is a two part test - must satisfy both
According to MacGuigan in Phillips case - the greatest concern is the need to
prevent monopolization of functional features in the marketplace.
Even if you manage to register and your mark was registrable we still have s.
13(2) No registration of a distinguishing guise interferes with the use if any
utilitarian feature embodied in the distinguishing guise. - it still cannot prevent
people form using utilitarian features of the registered mark. This is a limit
s. 13(3) a process and basis where you can expunge reg of distinguishing guise.
You can ask for mark to be expunged from the registry if the court can decide
that the reg has limited the development of art and industry
another thing that flows from need from s. 13(1)(a) - we have to section 32
(which we have already seen - the one that refers to s.12. This section also
applies to any TM which is registrable under s. 13- this section means that in
some ways these dist guises are not protect in the same way as other word
marks or design marks - there is a concern hat they might be capable of limiting
progress in an industry or an art. This limit is constantly gauged to see if it is not
going too far.
If a trademark is functional it is not registrable.
There is no express statutory provision for this rule
Well established in both common law and statutory
This is a rule that has emerged through case law
More for distinguishing guises(get-up) type of mark most likely to cooperate in a
Since trade-marks are not substitutes for patents or industrial designs, the
holder of a patent or a registered design - valid, invalid, or since expired is not
encouraged to bolster this monopoly through a trade-mark on the same
Bottom line is that only features that "unreasonably limit the development" of other
trades should be denied protection.
This is true of distinguishing guises recognized by the Act.
The same principle may apply by analogy to other trade-marks, too.
If other traders can compete effectively using different designs, the mark should be
Need to delineate the scope of T/M law
Need to ensure fair dealing
Need to draw the line between T/M and Patent because T/M protection can last
forever whereas Patent protection is only for 20years.
Need to limit the T/M system so that others can compete in the market place,
Rule not so much to protect the public from deception
Policy emphasis is o ensuring competition within the market place
Whether the feature is "solely, primarily or essentially" ornamental or
If so, it is unregistrable.
Pizza Pizza Ltd. v. Registrar of TM
Facts: We are concerned with Pizza Pizza phone number. The point is that the phone
number is huge part of Pizza Pizza brand. It sometimes is more important than Pizza. All
of customers know the number. The now famous mark is unforgettable b/c 7 rhymes
with 11. Their point is that no one else should have numbers. There is no dispute that it
operates as very distinctive features of Pizza Pizza branding but it is also the tel number.
On that basis the registrar has originally refused TM.
Reasoning on p. 367 "Webster's Dictionary - a number assigned to a telephone
instrument used by a person to call that telephone.' Telephone by definition, fuctions
to enable a person to contact a predesignated instrument, it cannot function to
distribute the applicant's wares and services"
Trial judge upheld this decision - cannot have monopoly interest in tel number
The other concern was that the tel company could change the number.
At Fed ct. of Appeal Pizza Pizza gets luckier with this. "Does the f(x) of tel number
preclude the reg of the number based on jurisprudence? " - pg. 367
pg. 368 "...while undoubtedly there is a functional element in its use by the appellant,
in that to place a telephone order for any of the appellant's products the numerical
combination that is the telephone number allotted by the telephone company to the
appellant must be utilized that is not its sole function. Rather, it is totally unrelated
to the wares themselves in the sense, that for ex, a number part of some product would
be so related which is purely a functional use"
It does meet the reg of trademark even though court acknowledges it has some
functional element but only b/c not related to wares themselves
The distinction here is that given in J. Pratt decision on pg. 365 - sums up
thinking for us "In those cases, the marks that were held to be functional were, in
effect, part of the wares in respect of which registration was sough so that the
registration of those marks would have granted the applicants a monopoly on
functional elements or characteristics of their wares; the applicants would in effect
have obtained patents under the guise of TMs. The situation here is entirely different.
The TM applied for by the appellant is not functional in that sense, its functional
character does not make it 'registrable'" - RATIO
The marks that were held to be functional. According to Pratt finding marks
registrable u would be giving protection close to patent - those unreg marks
would have given patents under the guise of TMs.
In other words if you say no one is Pizza Pizza industry is allowed to use number
you won't be affecting Pizza Pizza industry.
They can use same elements but they just need to use different phone number.
The idea is when you are looking at the wares and the way in which it is being
used is it a concern for TM law or does it go beyond that. Here 967-1111 was still
just functioning as TM.
If industry not affected it is registrable.
Mennan v. Calumet Manufacturing (1991)
Facts: They are trying to register is the distinguishing guise for its deodorants - the
actual containers. There is a picture on pg. 370. They want to register the guise that is
distinguishing the source of Mennen. They describe the whole thing as "distinguishing".
The registry was opposed by Gillette and others. Opposition was successful and then
appealed to Fed. Ct.
Issue: Was it functional? Part that is not functional - is that distinctive?
Opposition is arguing it should not be registered b/c functional and it is
In previous case the registrar had looked at each feature and identified them as
all functional in nature.
Things like the knob at the base - why should they be the only ones to have this
Discussion - last para pg. 375 - the only feature he thought was not functional
was the flattened edges of the oval shape. "The only aspect no considered to be
functional being the narrow flattened edges of the oval barrel and the wole of mark is
to be considered in assessing distinctiveness...the overall impression upon the
members of the public to whom the wares are offered for sale"
There is a debate on this in pg. 376 in 2nd para. Registrar found that flattened
edges did have functional purpose but appeal judge disagreed.
Even though unregistrable b/c of functional elements - the fact that so many of
them were functional meant that guise itself was inherently weak mark. So in
terms of the distinctiveness of the guise we are only considering the elements of
the guise that are not functional. Once you have so many functional elements
the ability of the flattened edges to actually distinguish source is minimized so
they find mark is not distinctive.
The registrar found that mark could not be registered b/c lacking in
One of the arguments that was made to the Courts was why should functionality
render it unregistrable (check audio for this)
Descriptive marks are inherently weak - they are registrable but they are weak. It
is like descriptive term that manages to be distinctive.
Other traders might want to describe their beer as golden but other might want
to be able to twist up the product that is inside the container.
In other words if you connect to the fact that there is a lot of evidence before
Court that oval containers are used by various third parties and they are used
somewhat - they are very similar in their shape and their proportion. The guise
that Mennen has adopted is not good at identifying source.
It lacked distinctiveness b/c could not distinguish one product from another too
The point is that by the time they reduce container down to non-functional
element there is nothing really that distinctiveness from one source
An argument that it would be in any event unregistrable on the basis of s.
13(1)(b) - the idea here is that even if it had been found to be distinctive there
are still other parts of s. 13 that would limit the ability of Mennan to protect or
register the TM.
s. 13(1)(b) - registration could be refused on the basis that the exclusive use of
the applicant would be likely to unreasonably limit the development of an art or
industry. The protection may interfere with deodorant industry - Court did not
have to address this.
Let's say Gillette said I want to use twist-up function on the base of the container
- defence would be s. 12(2) b/c I can still use the utilitarian feature that is
embodied in registered distinguishing guise.
Then you can use s. 13(3) - you can argue that registration should be expunged
b/c it is limiting industry.
Functionality itself can be a rule against having protection at all.
Remington Rand Corp. v. Phillips Electronics (classic case)(1995)(FCA)
Facts: We are talking about triple headed rotary shavers. This is a case that occurs on
pg. 378 as an action to expunge register of marks that are held by Phillips. Based on
grounds of invalidity claiming hat mark is invalid b/c of functionality of mark. Mark is on
pg. 378. If valid then it would prevent other people from selling triple headed rotary
shavers. One of the purpose of this analysis is to show formation of rule.
pg. 379 - narrow interpretation of rule -this comes out of Pizza Pizza case and
somewhat in Mennen case. "In my opinion any combination of elements which are
primarily designed to perform a function is not fit subject matter for a TM and if
permitted would lead to grave abuses"
Broad formation of rule - pg. 379 "Hall J. - of what is sought to be registered as TM
has a functional use or characteristic it cannot be the subject of a TM"
pg. 382 - first and second para. - it is not functional b/c it has acquired
secondary meaning - you cannot argue this. If it is still functional and even if
identifies source it still cannot be protected - this is emphasized in the second
para. "if whatever, the intention, the mark actually distinguished the goods of the
person using it from other, it is also, by statutory defn, a TM. Any enquiry as to its
innate character is totally irrelevant. Whether or not is also perform a function as
nihil ad rem. If it is used by a person for the purpose of distinguishing or so as to
distinguish his wares from those others, it is quite immaterial that it possesses a
functional use or characteristic that might disqualify it under the common law or
under the statute"
"If functionality goes either to the TM itself (Imperial Tobacco, and Parke, Davis) or to
the wares (Elgin Handles) then it is essentially or primarily inconsistent with
registration. However, if it is merely secondary or peripheral, like a telephone number
with no essential connection to the wares, then it does not act as a bar to registration"
This is in light of public purpose which is described in 3rd para. endorsing
reasoning of J. Pratt in Pizza Pizza case.
In the next para in pg. 382 trying not to give patent in guise of TM. "If a mark is
primarily functional as 'part of the ware" the effect would be to grant a monopoly on
functional elements. This would create a patent in the guise of TM. In my view the
consequences would be precisely the consequence of registration of the design TM in
the case at bar. I cannot therefore agree with the trial judge that the design mark
contain no functional elements or components"
Debate about whether they should have brought up arguments in light of s.13
instead of just using case law. They decided they would reach same conclusion if
used common law or statute.
Other argument is that distinguishing guise will always be functional so they said
that his would be unfair. This discussion of bottom half of pg. 383.
pg. 383 - 3rd last para. "The distinguishing guise in the case at bar is in my opinion
invalid as extending to the functional aspects of the Philips shaver. A mark which
goes beyond distinguishing the wares of its owner to the functional structure of the
wares themselves in transgressing the legitimate bounds of a TM"
I. Entitlement s. 16, 17, 18(1)(c)
Imagine u have a registrable mark - this might not be enough to give you the right
to register it. The point is that registrant has to have better title to the mark than
TM can be opposed at registration stage if the person who is trying to register
cannot register s. 38(2) (c) - this is opposition section.
Title does not simply flow from choosing a TM that can be register.
Entitlement section is s. 16.
s. 16(1) says that title can flow from using a mark in Cda. or making a mark
known in Cda. in association with the wares or the services.
s. 16(2) - title can flow from registration abroad plus use of the mark anywhere in
s. 16(3) - last basis of entitlement which is the proposed use
The rule simply put is that if you have done one of these things then the first
person to meet that requirement is the person who is entitled to register the mark
- it is about who is first but not necessarily a race to he registry - the person with
the earliest date of entitlement will win.
Two models - use is important
What we have here is compromise b/w two systems - if it was just use based
system then first to use would be person entitled but under application based
system the person who applied first would be entitled.
Entitlement is not about only about who is allowed to register but about priority.
Why does entitlement matter and why it is important?
s.30 (1) you have to include statement that says you are entitled to use mark
applicant who file for registration is entitle to secure registration unless some
other section applies
s. 37(1)(c) - registrar can refuse to advertise if the applicant is not entitled to
register - read s. 12(1)(d)
after registration yourself you can still be challenged on entitlement challenges
It is not valid b/c this person is not the person entitled to register. s. 18 (bottom)
which is subject to s. 17
s. 17 - registration can be challenged on lack of entitlement. s. 17(1) - challenged
entitlement can only be mounted by person who claims to have better title. Can't
be pointing to this party interests. Even if you are person with better title does not
mean that you can automatically proceed in your own rights - what you have
proved is that other person's registration is invalid - the reg is not passed over -
you have to file your own application.
Then we have time restriction that operates - this is important on post-registration
attacks on title - the entitlement to register cannot be challenged once TM has
been registered for five years. s. 17(2) UNLESS it is established that the person
adopted the mark in bad faith (if they knew s/one else was using mark)
It is not uncommon for A to register a TM on the basis of use but that TM could
be confusing with TM being used already in another particular locality in Cda. It
could be possible that B did not notice that A was trying to register the mark and
did not oppose the registration when application was advertised.
The only way B could successfully challenge would be if A knew B was using
mark if 5 years term passed.
The unchecked use can create another basis for he invalidity of A's mark. The
basis for invalidity s. 18(1)(b) - you can say that your TM is not distinctive in 2004
b/c it does not distinguish your wares from mine.
According to s. 21(1) - the Court might allow B to keep using mark with
Given that there is basis that you can secure a registration - how do we sort out
competing claims where people are asserting use? s. 16(1)(a-c) (2)(3).
Let's look at s. 16(1)(A-C) - (b) if before u used your mark s/one else had file
application to use a confusing mark you are not entitled to your registration. Let's
say s/one filed for proposed mark (that is their effective date).
(c) - trade names are not necessarily trademarks - it is the name that company
works under. ex. Coca Cola ltd. is trade name and Coca Cola is trademark.
Trade names are not protected as trademarks unless they function as trademark.
Prior use and prior application is important here.
Example would be if applicant applied under s. 16(1) - effective date would be
date that the use the mark (use of the TM under normal course of trade). This
means is that this claim to register is still inferior to any other claims if before first
use somebody else was using confusingly similar mark; somebody else made
same TM well-known in Cda. (Person who used mark in US example) or to
someone else who has already applied for TM registration (proposed use or
(i) Used in Canada - basis for entitlement
Means use as defined by TM act - "use in association of wares..." - means TM is
visible when wares is transferred. It also has to be a transfer in the normal course
of trade this is defined in s. 4.
If a service then it is used when you are performing service (used and displayed)
or advertising of those services
Known: s. 5 - if is used in the country of the union other than Cda. - Almost
everybody is in this convention - the union for the protection of industrial ppty. -
you have used it somewhere else.
"the wares are distributed in association with it in Cda." (a)
(b) the wares or services...(i) printed publication circulated in Cda. in ordinary
course of commerce ii) radio broadcasts ordinarily received in Cda. by potential
dealers..." - and it has become well known in Cda. by reason of the distribution or
There is always something like advertising in Windsor/Detroit - American mark
making it well-known in Cda. -
We will see in cases that it not only has to be known but it has to be well known.
s. 16(3) - person who made it known who has better title to registration.
USE in the normal course of trade. This comes up in a couple of cases and is
one of the req'ments that comes out of s. 4
It can be basis for entitlement or a basis for challenging registration. This is like
Ciba-Geigy b/c we are talking about chain of goods.
Manufacturer - Distributor - Consumer. The question that is raised is: USED by
Were you the actual person that used the mark or was it used on behalf of
Distributor often thinks they are the person using the mark in Cda.
The distributor will often try to register the mark - the problem with this is that
distributor relationship is contractual one that is negotiated - it might not be that
the relationship is exclusive or anything. We have to make sure that USE is
attributed to the correct party.
This is especially true if Manufacturer is in another country and the Distributor is
Lin Trading Co. Ltd. v. Kabushinki Kaisha (1998) (FCA) - pg. 419
Facts: CBM was the MAN and Distributor was Lin Trading. LT wanted register and MAN
wanted to oppose. The Q&Q mark was created by the president in 1976. It does not
matter who created the mark and who created the idea but what matters is the source of
the mark. CBM had registered the mark in several countries already. It was interested in
the Cdn. market and is looking for Cdn. distributor. Often when testing these markets
they will send samples to potential distributor. Not actually being sold officially in Cda.
even though it is coming into Cda. There was another potential dist but an agreement
did not come into effect but Lin Trading was interested and they sent them a sample
shipment and they paid for them. After two shipments LT tried to register the mark. They
did it under s. 16 that they had used the mark in Cda.
CBM saying they are the ones who made the mark known in Cda.
One of the arguments that LKT made is that they did not use it b/c not USE in the
normal course of trade. They are saying that CBM did not sell the product to the
ultimate consumer but that LT was the only company that was the source of Q&Q
watches. If anybody used it in Cda it was use.
J. Stone disagrees with this argument. pg. 420 "s.4 contemplates the normal course
of trade as beginning with the manufacturer ending with the consumer and with a
wholesaler and retailer or one of them as intermediary...in other words, if any part of
the chain takes place in Cda., this is 'use' in Cda. Within the meaning of s. 4 ...sale
by retailers in T.O. and Montreal to the public with wares marked with applicant's TM
is a 'use' un Cda. And it matters not whether property or possession passed to the
retailer in the US"
When CBM gave them the watches they were trying to get business in Cda.
This means that first use was CBM's b/c Lin Trading was doing it on behalf on
s. 4 - when a TM is deemed to be used. "in the normal course of trade"
Citrus Growers Association Ltd. V. William D. Branson Ltd. (1990) (FCTD)
Facts: Citrus is the source of the product and the registered mark is ortanique - this is
for particular type of fruit - orange and tangerine together. s. 12. Imagine ortanique can
live on the register who is best entitled to it. CGA was a Jamaican company and Jetsgo
was another company and Branson was a Cdn. import company. This began in 1978
and continued until 1981. In 1980 Branson sought an obtained with the mark Ortanique
w/o the knowledge of anyone in Jamaica and not aware of the registration until 1987 and
Branson is refusing to transfer the mark to them.
On pg. 423 - "The jurisprudence under s. 57 is clear that an importer or agent has no
right to register TM owned by foreign principal under his own name and for his own
benefit" (from Lin Trading) Therefore Branson does not have the right to register
The first use was by CGA
Importing is merely participating in the transaction. There has been no use by
Branson in Cda.
s. 57 application - court has trouble for finding basis to strike it from the register.
It finds compelling a fiduciary duty with MAN and DIST as agent relationship.
This could be grounds in itself to strike b/c on the basis of s. 18(1) b/c party
registered is not entitled to register.
It also fits into discussion on s. 4 use. The idea is that Branson has no basis to
register mark b/c they have not used the mark.
Further that the CGA does have basis to register the mark b/c it has use the
mark in Cda through its transactions conducted by Branson.
pg. 425 "The question is not who is using the mark but whose mark is being used. As
long as the wares originate from the owner it is suggested that his mark is being used
even if no sales in Cda. are directly made by that owner"
there might be s. 17(2) b/c registered for more than 5 years but this does not
come into play b/c it was a bad faith registration.
Importer knew of manufacturer registration and knew of their intentions and
(ii) “In the Normal Course of Trade”
Sequa Chemicals Inc. v. United Color and Chemical (FCA)(1993)
Facts: The best case for understanding what it means for "normal course of trade". A
case where dist registration is allowed after a call to have it expunged by the MAN. The
DIST established right and entitlement. This is not b/c attacking same rule as last two
pg. 427 - third last para - the Court agreed with general rule. Use by DIST is use
by MAN. "use of the TM by the DIST of goods bearing the mark if the foreign TM
owner was 'use' by the foreign owner"
But here the facts are distributor Sequa (US company) with TM Sunrez. The
Sunrez product was distributed in Cda. by United from 1981 -84.
United had been continuing to make sales of the product in association with the
same mark as of 1985.
In 1985 United registered the Sunrez mark. Sequa Chemicals decided to try and
register on basis of s. 16(2) and they were refused b/c a confusing mark already
on the register s. 12(1)(d) confusing mark - they successfully appealed to CA.
The CA disagrees and says that the kind of activity that had happened before and
leading up to the registration of the mark.
Prior to 1985 no evidence was given of use or sale of products in association with
the Sunrez mark in Cda by United other than token use or token sale - pg. 427 -
2nd last para. Idea of token use comes up here.
The shipments delivered b/w 1981 and 84 were promotional shipment - pg. 428
- none of these shipments could not have satisfied paper mill. Those transactions
were not taking place in normal course of trade. "Moreover, the quantities involved
in these 2 deliveries once again amounted to no more than token quantities and
cannot provide evidence of use in Canada"
Evidence of token quantities cannot provide evidence of use in the normal course
The kind of figures that were presented by the court were interpreted to men that
when the relationship b/w United and Sequa ended then United was acting as
independent supplier and the sales of the product went up significantly.
They find that first use of this product in normal course of trade was use by United
in 1985. This was when United was no longer DIST for Sequa chemicals.
Sequa was not able to show USE and could not establish better entitlement.
Expungement application fails. This adds depth and complexity. Best known as
authority on "token uses" and do not form basis of entitlement claim.
(iii) “As a Trademark” - when is it relevant use as a TM?
British Petroleum Co. Ltd. v. Bombardier Ltd. (1971) (FCTD)
Facts: Trying to register 28 Skidoo mark but Bombardier saying it was confusing that
they used in association with motor oils etc. Bombardier claim is based upon a
previous use of the mark is association with oils made by Castrol. In subsequent
dealing Castrol gave them rights to Skidoo mark. It purported to assign rights but did
it have right to assign.
Issue: Did Castrol even use the mark Skidoo in association with the wares as a TM?
If not then it is not a relevant use upon which they can base their entitlement.
British P was trying to register a proposed mark under s. 16(3).
The way that the mark had been used was that the word Ski-doo had appeared
on Castrol containers of motor oil but next to it was a little "R" saying that it was
the ppty of Bombardier.
Castrol never used the mark to suggest it was the source of the product. It was in
effect saying it was not our TM, we are not using it as a TM and we have no
authority to do so.
pg. 432-433 - "if this explanation as to ownership means anything, it must indicate
that the use of the word 'ski-doo' by Castrol was not a TM use. The very words
themselves indicate a clear denial of any proprietary or TM right in a word - a
complete disclaimer to any rights therein" If you challenge entitlement on basis of
prior use then you have the onus of establishing prior use.
Bombardier had no evidence that they had previously used mark as TM.
pg. 431 for explanation
(iv) Made Known in Canada s. 5
Robert Wian v. Mady (Exch. Ct. of Cda) (1965) - pg. 436
Facts: To look at s. 5 and to work out what it means to make something known. The P is
trying to have D's TM "Big Boy" in assoc with hamburger expunged from register on the
basis that it is invalid under s. 18(1) that registrant was not person entitled. It is argued
on the basis of prior making known. s. 16(1)(a) they say they made it known first and
therefore registration was invalid.
Issue: What has to be shown that it had been made known by the P in Cda?
The mark Big Boy and American chain sold hamburgers as part of their menu. Big
Boy was not operating in Cda. but only on the US.
They have to show is that the mark was not registrable in Cda. by the registrant b/c
confusing by another mark that had been made known.
s. 5 (defn of making known) they have to have used the mark elsewhere (in the US -
this is clear) and make it known by advertising the mark with their wares...etc. There
is a funny bit that says that other person use it (ignore it). But the thing that you can
take from this is that if you have used the mark then you cannot claim that you have
made it known in Cda.
pg. 440-441 "I reject any consideration of menus, napkins, bags and the like , which
got into the hands of Cdns. Who patronized the US restaurants on the ground that
such articles were not publication circulated in Cda. In the normal course of
commerce...ordinary course of commerce is accomplished by putting the publication
into the hands of members of the public either as subscribers or as person purchasing
from newsstands or other outlets that exist for getting such publication into the hands
of the public"
Radio advertising is another potential way of making known by s. 5(b)(ii). - There
was evidence that there were adverts that were received by Windsor. So
therefore they satisfied this.
They did not meet all req'ment by the AND in s. 5 and has become WELL
KNOWN in Cda. We are told mark could have been well known in Windsor. At
the top pg pg. 444 "All that was attempted was to know that they were well-known in
Windsor, ON and surrounding territory. It was argued that, if they were well-known
in Cda within s. 5 of the TM Act. I cannot accept this view. A thing may be regarded
as known in Cda. But in my view it is not well-known in Cda. Unless knowledge of
it pervades the country to substantial extent"
Case goes a little too far where is says it has to be known all over Cda.
Valle's Steak House v. Tessier et al. (1980)(FCTD) - pg. 445
Facts: It registered its mark in Cda. on basis of making it known. It comes down to dates
etc. The P has to shown that it had made the mark well-known in Cda. prior to the use
and the adoption of the mark.
It does reiterate a very strict use of s. 5 and what it means to make known,
pg. 448 "In my view, this section is peremptory in its application and the provision it
contains is one of the substance and not only of the evidence. The purpose of the
section is to make clear what the expression 'make known' or TM means within the
Act. The presence after the words 'is deemed' and 'est repute' of the words 'only if' and
'seulement si' does not admit any other interpretation". Evidence is not relevant of
statute but it has to be a matter of substance.
They say that Cdns. have seen all the billboards when they came and visited.
Exposure by people in America cannot by itself make mark known in Canada.
Part of the meaning of "well-known" in Cda. is the method by which it becomes to
be well-known. Word of mouth and exposure and the spill over effect by ads
does not give any entitlement in Cda. But what they were able to show is that
there had been some relevant ads in publications in Cda. and broadcasts prior to
1972 when Ds adopted their mark.
Evidence showed that mark was well known in eastern provinces especially in
Quebec but no evidence that it was well-known in the rest of Cda.
The response to this argument that this has allowed mark to become sufficiently
well known for s. 5. - Tried to reinterpret Wian case. Something so
geographically limited but what needs to be known in a "substantial" part of Cda.
First of all it is possible that there is a foreign user of a mark like Big Boy that
doesn't have sufficient commercial activity in Cda. to fit into s. 5 so it is possible
for foreign user to register in Cda. It has not basis for entitlement yet.
But that person might still have enough of a reputation to be able to challenge the
distinctiveness of a confusing mark in Cda.
Even if you can't show better entitlement then you might still be able to attack the
validity of that registration b/c no distinctive of that registration.
You can oppose registration through s. 38 (2)(d) that TM is not distinctive b/c I
have reputation with this mark via s. 18(1)(b).
Don't forget that common law could fit in here somewhere if you have a
reputation in particular area. NOTE: Having registered TM is complete defense to
a common law action. (You can argue Orkin)
Pattern here is that when you expunge who has what rights.
Don't forget catchall distinctiveness argument.
Ratio: "clearly, the eastern Cdn. Provinces and even Quebec by itself, since Quebec is in
question here, constitute a sufficiently 'substantial' part of the country to meet the
requirements of s. 5"
4. EXPUNGEMENT S. 57
s. 57 is the jurisdiction thing where federal court has exclusive jurisdiction to
order to amend or expunge any registration
The relevant date for assessing would be date of the application of the interested
person to have registered amended.
So the application to have mark struck out or it can be as a counterclaim as an
Reason for expunging mark is that the mark is no longer valid one.
To expunge if a person is not entitled. s. 18 (last of entitlement) + subject to
section 17. Whereas other invalidity claims can be made by anybody. This is
different. [Flag s. 18(2) - means that non-registrability in terms of s. 12 is
determined on the date of the filing of the application. if it was not registrable b/c
it was descriptive and had no acquired meaning at date of filing then if in b/w
date of filing and registration and you acquired distinctiveness in b/w that time
then it was you cannot tell me registration is invalid after registration You cannot
make me re-register.
If your mark was unregistrable when registrable then invalid and had no acquired
meaning then your mark can be struck and you have to start process again.
Relevant date is when proceeding bringing validity into question are commenced.
if your mark loses its distinctiveness then you mark can be stricken from the
A way to lose your distinctiveness is to let s/one else use your mark unchecked. -
Loose licensing situations w/o control.
Another danger is allowing ppl to use a confusing mark and not sending letters of
cease and desist
As TM owner you have to police the mark
Molson Tm owners go after anyone who puts "export" on anything. They make
sure they are safe within their rights and always trying to maximize scope of
If you sit back and let ppl to use your mark they might tell you that your mark is
no longer valid and you may not be right.
You have to have distinctiveness when you are challenged you did not have to
have consecutively during the term.
People sit back and hey let anybody use the term- if they had challenged to
reassert Thermos as a TM then they could be safe again.
A. Loss of Distinctiveness
Aladdin Case Industries Inc. v. Cdn. Thermos Products Ltd. And
Registration of TM (Exch. Ct. of Canada) (1969) -pg. 450 - risk of genericism
Facts: Since registration the TM Thermos has come to be descriptive of any vacuum
flack and no longer distinctive of Thermos company as s a source. It is now being use
generally and generically of anything of that type.
Issue: s. 18(1)(b) did the term Thermos lose distinctiveness? Are consumers buying
Thermos because they trust source or just b/c it is the generic name of the product they
want to buy?
The onus on showing the loss of distinctiveness is a heavy
Applicant is the one who wants to expunge one - they would have lots to gain if
they got TM expunged.
There are two facts of which the Court is equally convinced. pg. 466 "The first is
that...the words thermos and 'thermos bottle' had come into popular use in Cda.
Andwhen used in relation to the common kind of vacuum bottle, the kind found on
the average home, were used and understood by persons of average education and
intelligence in ordinary society as generic words descriptive of that class of bottle
and they had fallen into day to day language as synonymous with 'vacuum bottle'
in English and as descriptive of the common household vacuum bottle" "The seocnd
fact so established is that an appreciable portion of the population of Cda. Knew and
recognized the respondent's TM THERMOS and its significance and that to them it
was distinctive of the respondent's vacuum bottles"
The evidence - pg. 467 Thermos has dual meaning. "But the evidence as a whole as
to its widespread use, and especially the indication of its spontaneous use, satisfied
me that it is used as I have found ex. (a) generically and descriptively in popular
usage in day to day language and (b) in a distinctive sense extensively in the trade,
and to a lesser degree by the public when purchasing vacuum bottles"
Therefore court has trouble with the finding since it has dual meaning - dual
meaning can exist and the matter is not that easily resolved.
The conclusion - pg. 469 "My conclusion as to the generic and descriptive use of
the word 'thermos' I do not think that the TMs should be found to be invalid
under s. 18(1)(b). My conclusion as to Courts prioritized distinctive characteristic
and according to the Court it does this b/c of the public interest.
pg. 469 - 5th para - Legislation concerning TMs exist primarily for the interest of
Applicant suffers disadv b/c of TM but applicant cannot describe his product in
the language that would be described by much of the public to describe the
product - if we were concerned with relationship b/w traders then mark would be
expunged BUT courts says we are not just concerned with that but we are
concerned with the public and we think there would be a confusion as to the
pg. 470 - 4th para "In my opinion that there is a real risk that an appreciable number
of ultimate purchaser might be misled or confused if imported bottles and bottles of
MANs other than the respondent are marked thermos bottle" - public interest is
paramount over disadv under which the applicant is labouring.
Public interest plays the decisive role and says there is going to be no harm if we
allow it remain on the book but if we don't there will be harm so let it stay.
How genuine is this appeal to the public interest? Is the public really better when
the mark is protected than when it is not.
How do we understand public interest in general and how do we understand
public interest in TM?
Evidence showed that Aladdin had better product for cheaper but ppl were
buying Thermos b/c of TM - so what is public interest?
Demonstrates the uneasiness of Courts to expunge a mark - bottom of pg. 467 -
last para "the nearer he approaches the end of the use of his TM even though originally
it was a proper entry"
When we are looking at registrability- if you are generic then you are not
registrable so then why are things diff in expungement? In Shredded Wheat -
there is interchange b/w generic and descriptive.
What this proves is that there is higher onus for things that have lost
distinctiveness when it has been distinctive and it has been successful.
Secondary meaning + genericness would allow you to stay alive on register
although it would not allow you to get on the register.
How can we justify giving the exclusive right to that person? When it comes to
expungement the mark is private - you must justify taking private ppty away from
someone while putting on he register is about giving.
Heintzman v. 751056 Ontario Ltd.(1990) (FCTD)
Facts: Heitzman Pianos. This case demonstrates how TM loses distinctiveness when
message becomes muddled. Heintzman company ran into financial difficulty and sold it
in a chain of title along with its registered marks. The new owner closed down the
original plant in ON with which had been associated with source. The new owner began
importing inferior pianos from abroad (from Korea and US). The mark however still
conveyed that they were quality marks from ON. The advertising done never suggested
that there had been any change in that. It did not communicate this change but also
purposefully tried to cover it up. It put the TM on top of the name that as on the piano
when it came into the country. The name gets muddled as to the source of the product.
pg. 480 - "There is overwhelmisng evidence that the Heintzman TM lost its
distinctiveness when the Music Stand and Mr. Jankura used that mark in cxn with
pianos obtained from sources other than that which the public associates with the
mark. They did not notify the public that the source for the pianos they were selling
under the Heintzman name, was different from that which the public had previously
associated with that name"- unity has to be maintained. When the TM and source
break apart or change the meaning or message of the TM as interpreted by the
public they lost that unity and mark lost its ability to distinguish source to piano to
which it was attached.
On pg. 478 - crash course on what TM is
B. Abandonment s. 18(1)(c)
Marks can also be expunged b/c they are abandoned - s. 18(1)(c) -
abandonment does not only require non-use but also (don't ever use s. 45 cases
to argue this point).
1. For abandonment you also need intention to abandon. This rarely used.
The thing that becomes problematic is that intention to abandon can be
implied from passive non-use and by allowing infringement by others.
2. Abandonment through deviation - you deviated from original mark as it was
Promafil Canada Ltee v. Munsingwear Inc.
Facts: They had a design mark - they had registered slim one and not the chubby one.
One of the tactics was to say it was invalid b/c what the one they are using is different
from what they registered. They must have intended to abandon slim one b/c they were
using fat one.
Issue: Would consumer be able to know that skinny and chubby penguin came from the
The bottom of pg. 483 - "The practical test to be applied in order to resolve a case of
this nature is to compare the TM as it is registered with the TM as it is used and
determine whether the differences b/w the 2 marks are so unimportant that an
unaware purchaser would be likely to infer that both, in spite of their differences,
identify goods having the same origin." good practical test to be applied to
compare the mark. What you are asking is the recognizability of the mark in its
The trial judge said they were diff enough to be expunged but that was
overturned in CA.
CA said that they should not be understood as dif marks but as "pudgy cousin"
(Craig's works) - Do dominant features of creature prevail? Cdn. law emphasizes
maintenance of identity and recognizability and the preservation of dominant
features. (pg. 488 - 3rd para) - we can tolerate variations but with every change
he is playing with fire. "The law permits a use who changes the form of its mark
to retain the benefit of its use of the earlier form w/o abandonmen if the new and
old forms create the same, continuing impression. A TM owner is not required to
maintain any particular level or type of advertising to avoid the abandonment or
weakening of its mark. The owner must only continue to use the mark in a
manner that preserves its consumer recognition of distinctiveness.
We are assessing what mark is communicating as to source.
C. Non-Use s. 45
A mark unused for at least three years can be summarily struck off the
This power is entrusted to the Registrar of Trade-marks, who can initiate
action at any time.
Normally, however, the Registrar waits for a written request
(accompanied by a $150 fee) asking that the registered owner be
required to file a declaration or affidavit showing
that the mark was in use within the last three years or
"Special circumstances" excusing the absence of use.
The procedure is there to prune "dead wood" off the register.
The registrant need not have abandoned the mark; no use and no
excuse is enough for the
Mark to be summarily expunged.
The procedure is often resorted to when an applicant finds conflicting
marks on the register or
Has such marks cited against it in opposition.
Registrants also conduct periodic sweeps of the register to clear off
marks that threaten the distinctiveness or the strength of their own
Since anyone at all can file requests, law firms or trade-mark agents
often do so on behalf of clients and become nominal parties while
preserving the clients' anonymity.
There need not be heavy use, so long as there is some. Even a single
genuine transaction may be enough.
An affidavit by the mark owner exhibiting photographs and invoices that
show the fact and nature of the use usually suffices.
Sometimes marks are redesigned to respond to changing times and
fashions; although the mark as used is technically not the mark as
Otherwise, not many excuses for non-use are accepted.
The court will consider how long the mark has not been used, whether
this arose from circumstances outside the owner's control, and whether
the owner intends shortly to resume use.
A decision not to use because of industry recession has even failed as a
"special circumstance"; (Lander Co. Canada v. Alex E. MacRae & Co.
(1993), but this approach may need consideration,
s. 45: Registrar at any time or at request by any person 3 years from the
date of registration request proof of use by the owner of the trademark;
must prove using in Canada at any time during three year period
immediately preceding the date of notice
s. 45 The registrant must provide evidence beyond a mere bald
statement that the mark is in use – must have evidence to show how,
when and where the mark is being used. Purpose of this section is to
prevent the stockpiling of trademarks (Re Wolfville Holland Bakery)
If the trademark is in proposed use then the question is whether the
trademark is adapted so to distinguish the wares or services in
association with which it is used by its owner from the wares or services
Adams v Société des Produits Nestle (1996) 72 C.P.R. (3d) 100 (TM. Bd.)
On May 17, 1995, the registrar forwarded a s. 45 notice to the registered owner
of the trade mark YORKIE, registered in association with various candy
products. The registrant filed evidence, and each party filed a written submission
and was represented at an oral hearing.
Evidence was submitted from the president of a company importing a variety of
British products into Canada, and distributing those products to retailers in
Canada. One of those products distributed by a company was the YORKIE
brand chocolate bar of the registrant.
Held, the registration was expunged. Mark was struck.
While the evidence of use was not overwhelming, the registrar found that there
appeared to be sufficient evidence to show sales in Canada, by the affiant's
company, of chocolate bars in association with the trade mark in Canada during
the relevant period of time. The main issue, in the registrar's view, was whether
the sales constituted use of the trade mark that accrued to the registered owner.
The evidence did not clearly state that the affiant's company imported or ordered
the YORKIE chocolate bars from the registrant. Nowhere in the affidavit did it
clearly state or did the evidence show that the wares sold to her company
emanated from the registered owner.
In fact, the sample wrapper attached to the affidavit identified two different
companies as trade mark owners. As a result, the evidence was ambiguous on
the matter, and the registrar interpreted the ambiguity against the registrant.
Accordingly, the mark was expunged.
Ratio: s.45 challenge puts onus on registrant to show prima facie use in Canada.
Registrant could show use of mark ONLY through a foreign sales division.
McCain Foods Ltd. v Chef America Inc. (1996) 71 C.P.R. (3d) 103 (FCTD)
On November 1, 1994, the Registrar forwarded s. 45 notices to the owner of the
following trade marks: BREAKFAST POCKETS, HOT POCKET, LEAN
POCKETS Design, all of which were registered in association with various pre-
cooked and ready-to-eat food products. The registrant filed evidence.
Except for a few minor details, the evidence of the registrant in each case was
identical. The registrant's evidence was that entry into the Canadian market was
delayed until production could meet the strong demand.
As a result of different Canadian market factors, the registrant stated that it
could not introduce its product into Canada until the early fall of 1992, which was
then postponed to the target date of August, 1994. On January 17, 1994, a
major earthquake hit Los Angeles, California, thereby rendering the registrant's
production plant inoperable.
The evidence was that at the time of the earthquake, its second plant in
Kentucky was not fully operational.
Held, the registration was maintained.
It was apparent from the evidence that the trade marks were not used in Canada
during the relevant period of time. The Registrar held that while it was arguable
that the wording of s. 45(1) requires a showing of a date of last use as a
condition precedent to the consideration of the issue of special circumstances,
such an approach was considered to be overly technical.
Further, in view of the wording of s. 45(3) of the Act, the Registrar held that the
issue of special circumstances excusing non-use could be considered, even if
the date of last use had not been provided. The Registrar held that, based on
the evidence provided by the registrant, it had established a basis of
circumstances outside of its control, thereby preventing it from using the trade
marks in Canada.
The Registrar held that the registrant had shown a serious intention shortly to
resume use of the trade marks, based on the fact that it had conducted market
research, had packaging translated, and other factors.
The court considers extensive evidence of intent (product development, market
strategies etc) and a challenge of the non-usage provision of s.45 under s.45(3)
allowing for the consideration of special circumstances if a last date of use is
o The finding of the court on the facts was that a genuine intention to use the
mark in Canada existed, allowing the invocation of s.45(3) to protect its
o Note: The court chose to protect the ―Hot Pocket‖ registration only, as the
evidence brought before the court only supported this registration.
5. ASSIGNMENT & LICENSING TRADEMARKS S. 48 AND S.50
s. 48 – explicitly deals with assignment of trademarks
s. 48(1) Trademark transferable
registered or non-registered trademarks can be transferred
transferable with or without the goodwill of the business (goodwill is the reputation of
the business; client base in connection with the brand)
can be transferable with or without all of the goods or services in which it has been
used (e.g. the trademark apple is registered in association with clothes and
computers; can sell off the trademark apple for clothing and retain the trademark
rights for computers)
s. 48(2) Where two or more persons interested
if as a result of transfer there are rights in 2+ persons, not non-distinctive
s. 48(3) Registration of transfer
can register transfer of any registered trademark or pending trademark application
if it is registered, this does not stop challenges based on the invalidity of the
trademark assignment or registration of the trademark itself
s. 15 Registration of confusing marks
despite of s. 12 or 14, confusing trademarks are registrable if the applicant is the
owner of all such trademarks, which shall be known as associated trademarks
e.g. apple is registered for computers and now want to register apple for computer
consulting services – this would be confusing if the trademark was owned by
separate companies; thus if at a later date apple wanted to sell the trademark apple
in association with computers, they would also have to sell the registered trademark
for computer services forces the bundling of trademarks
NOTE: a person can start with the registered trademark apple for computers and
then decides to expand their business to include computer services – can do this in 2
1. Amend the trademark – less costly; but if the trademark is invalidated
then lose all associations (riskier)
2. Initiate new trademark application
s. 50 - explicitly deals with licensing of trademarks; implemented in 1993
at common law cannot licence trademark because by the very definition of trademark
it must be distinctive of a single sources of goods
1953: amended the trademark act to implement a registered user system (see
Wilkinson Sword case) to deal with the common law problem; okay to licence your
trademark to someone else only if you are a registered user (document signed by
both parties); problems with this system:
1. Costly: government filing fee
2. Couldn‘t properly permit the use of trademark until the user was actually
registered and this could take a long time (many months, years,..)
s. 50 (1) Licence to use trademark
No longer have to register the licence
Many types of licences can be granted
Licence can be directly granted from owner or indirectly granted (authority of owner)
The use of the licence is not limited to Canada
owner must maintain direct or indirect control of the character or quality of the wares
or services for control: typically there are provisions that (1) the licencee is not
going to do anything without the approval of the trademark owner (e.g. samples must
be provided that must be approved); (2) trademark owner maintains the right to
inspect the licencee to insure abidance of quality
Use has and is deemed to always have had the same effect as such use by the
owner (retroactivity effect)
at common law when assigning a trademark, must also transfer goodwill because the
definition of trademark indicates distinctive single source
s. 48 – in theory assignment can exist without transference of goodwill – recall: to be
distinctive consumers do not have to know the source (i.e. who the manufacturer is,
only that there is one source)
Can attack validity of licensed trademark on the basis that it lacks distinctiveness
s. 50 of the trademark act requires character or quality control of the wares or
services; if s. 50 is complied with then all use by the licensee is deemed to be use (or
deemed to have always been used – retroactive effect) by the trademark owner; thus
no lack of distinctiveness
Breck's Sporting Goods Co. Ltd. v Sportcam Co. Ltd.  1 S.C.R. 527
Appellant is the registered owner of the trade mark "Mepps" used in association
with fishing tackle and, in the main, lures of various types. These lures are
imported from France, assembled and packaged in Canada by appellant, and bear
the "Mepps" trade mark as stamped on the parts by the French manufacturer.
Rights to the trade mark, together with the goodwill of the business symbolized
thereby, were assigned to appellant's predecessor in 1959 by an American
company which, in 1956, had itself obtained from the French manufacturer
assignment of all rights to the trade mark together with the goodwill of the
business which it symbolized and the application for registration of the word
"Mepps" on the Canadian trade mark register.
This application was filed by the manufacturer in 1955 and obtained by the
American company in 1956, after the assignment. Prior to 1959, appellant's
predecessor obtained its "Mepps" lures from the French manufacturer through
an agreement with the American company and developed a large business in
Canada. After obtaining the assignment from the American company, appellant
signed a five-year contract with the French manufacturer guaranteeing appellant
exclusive distribution rights to the lures in Canada, and forbidding it any dealing
with products competitive to "Mepps" without the French company's written
permission. This agreement was renewed twice.
Respondent sold "Mepps" lures in Canada in competition with appellant,
obtaining its lures elsewhere than from appellant or from the French
An infringement action was brought by appellant against respondent.
The latter attacked the validity of the trade mark as not sufficiently distinctive
within the meaning of the Trade Marks Act.
The Federal Court of Appeal concluded, contrary to the trial judge, that the trade
mark lacked distinctiveness at the time when the action was begun, and that it
was invalid. Hence the appeal to this Court.
Held: The appeal should be dismissed.
Section 47 of the Trade Marks act does not permit untrammelled assignment in
gross without regard to the associative character of the assigned trade mark in
identifying the goods as those of the assignee owner.
Protection against public deception resides in the definition of distinctiveness in
s. 2(f) and in the application of s. 18 of the Trade Marks Act.
The appellant's contention that it can obtain an assignment in gross of a trade
mark indicative of a certain manufacturing origin and use it as a seller's mark in
respect of wares which it does not manufacture but which it has continued to
obtain from the very manufacturer with the mark attached thereto by the latter,
cannot be accepted.
It would not satisfy the requirement of distinctiveness under the Canadian
legislation, especially in view of the agreements between appellant and Mepps.
―It is not enough for the appellant to rely on its registration if those wares, so
marked by the French supplier, have not become identified with the appellant as
its wares either as their manufacturer or seller‖ – Canadian market given false
Dynatec Automation Systems Inc. v Dynatech Corp. (1995), 64 C.P.R. (3d)
The registrant was the owner of registration No. TMA 231,269 for the trade mark
DYNATECH. The registrant filed an affidavit, each party filed a written
submission and was represented at an oral hearing.
Complicated details about medical hardware omitted.
P proceeds under s.45 against D, suggesting lack of use beyond 3 years as per
the criteria of s.45.
D brings evidence of use however, all evidence pertains to subsidiary
On analysis it is revealed that P actually exhibits NO active control over the
wares at the heart of the claim of ―use‖, suggesting that ―control‖ of the mark
therefore cannot be attributed to P.
Held, registration No. 231,269 was expunged.
The hearing officer found that there was sufficient evidence to show use of some
of the wares and services covered by the registration. However, the crux of the
case rested on the issue of whether the trade mark was used by the registered
The evidence showed that the registrant carried on business in Canada through
subsidiaries, which were wholly owned and directly controlled by another party.
The registrant claimed that, by virtue of an intercorporate relationship between
the registrant and the third party, there was use of the trade mark under licensed
The hearing officer ruled that control, merely by share ownership, does not
satisfy the requirements of s. 50(1) of the Trade-marks Act, R.S.C. 1985, c. T-
13, which clearly states that the owner must have under a licence, control over
the character and quality of the wares.
The fact that the registrant was in a position to control the use by the licensee
was not sufficient; there must have been evidence of control in fact. Further, a
party may not rely on its annual report to assert public notice of an
intercorporate relationship and inferred control pursuant to s. 50(2) of the Act.
The hearing officer held that the use of the trade mark by the registered owner's
subsidiaries was not deemed to be use by the registrant.
Ratio: More control over ―use‖ is required then ―merely that of a sub-parent relationship‖;
in this case the registered owner clearly has not ―used‖ the mark as is required by s.45
Article - Zimmerman
A. Confusing Usage
Infringement chart - on the website.
s. 20 goes a little bit further than s. 19 and we are not just concerned with the
exact mark for the same goods. What we are concerned with is if someone else
is using confusing mark.
It is a determination of fact and determined on a case by case basis.
The exceptions in s. 20 in the bona fide use.
s. 19 is very clear - same mark and same wares - the only thing to stress in
national coverage and exclusive right to use that mark in assoc with those wares
s. 20 - in contrast you have to show that the marks are confusing
Test is the same for both - relying on s. 6
Quote on pg. 535 - 2nd para in the Pepsi case - last 3 lines of that para - the
burden on the P is to show the "...Absence or all reasonable prospects of
the use of the mark, how long they have been used; extent to which marks have
become known (these are factors from s. 6)
i) Similarity of Marks
In practice, the last statutory factor noted above - "the degree of resemblance between the trade-
marks or trade-names in appearance or sound or in the ideas suggested by them" - is the one
with which most analyses should start.
If "caterpillar" and "mercedes" do not resemble each other at all, everything else is pretty
The other statutory factors become significant only once the marks are identical or very
But similarity can come in various guises:
Appearance, sound, or the ideas both marks suggest. rolex and nolex, as words, suggest no
particular idea, but they look and sound so similar that even careful folk may confuse them.
***At common law, the two marks are compared as "actually used" to see whether the second
misrepresents itself as the first;
*** In Infringement proceedings, the registration of rolex as a word gives its owner the exclusive
right to use in any fair and normal way it chooses, including the right to present it in calligraphic
form. If the two words may be confused however they appear, there is infringement even if the
trade-mark has never been used in that form. (Mr. Submarine Ltd. v. Amandista Investments
Even marks that look and sound entirely different may share a common confusing idea: for
(eg: moonshine for detergents may be objectionable over sunlight for the same goods.)
Pepsi-Cola Co. of Canada v. Coca-Cola Co. of Canada (1940)
Facts: We have come across this before when we were looking at s. 12(1)(b).
Issue: Whether the designation Pepsi-Cola is confusingly similar to Coca-Cola? Is the
Pepsi mark likely to signify that Coke Company is the source of the cola.
Here we have the word "Cola" which is the crux of the argument.
pg. 534 - 4th para - Court looks at and mentioning other confusion cases. They
stress that it is a question of fact so these authorities are really not that helpful
The Court thought that Coca-Cola's distinctive came from the facts that they were
put together and the script in which they were written
All Pepsi has done is use Cola - pg. 535 "What is protected by law if the whole
mark as registered but as part of a mark may be is taken and used to amount to
substantial taking of the whole. The only similarly b/w the two is the word 'cola' in
both marks...if such an objection is allowed they would have exclusive ppty right in
relation to word 'cola' "
The confusion is TM's law way of saying is this taking so substantial that it
encroaches on the right of the TM owner.
Looking at mark as whole and then seeing what is taken and seeing if it is
It is a different mark so you are instantly dealing with s. 20 even though it can be
said to be diff kind of wares.
We are considering mark as whole even if parts of that mark are not even
protected. You do consider parts that are not protected when determining scope
of your rights in an infringement action. If you only take the thing that is not
protected then it is very unlikely that you will have been found to be infringing.
Coca-Cola does not have right in the word Cola standing on its own.
pg. 536 - 4th para - the P is really trying to secure a monopoly in the word cola.
pg. 535 - middle para - if such objections are alowed then they get "exclusive
ppty right in the word Cola"
pg. 536 - "We cannot say by test of sight and sound that the compound word Pepsi
Cola bears so close a resemblance to Coca Cola as to be likely to cause confusion in the
trade or among the purchasing public. The difference is sharply accentuated if the
sight test is applied, the 1st word 'Pepsi' written in any form at think, made by sight
and sound of the 2 marks would be one of contrast, rather than of similarity. Also
keep in mind 'Pepsi-Cola' has been on the register since 1906" They conclude that
there is more contrast then there in similarities.
The fact that there was no evidence of actual confusion.
The test of infringement of a registered mark depends on the probability of
confusion to the purchasing public in a contemporaneous use of the two marks.
The test of similarity found in s. 2(k) of the Unfair Competition Act does not
appear to alter [page162] the common law test of sight and sound with an
examination of the surrounding circumstances. (See Hampshire & Co. v. Gen'l
Kaputine Syn., 47 R.P.C. 437). The decision is of importance in regard to the
validity of compound words as trade marks and the effect of their registration. It
would appear that two words each of which are descriptive may be joined so as
to constitute a valid trade mark. A registered compound mark may be infringed
even if a part is taken as long as that part taken is a substantial part. (See Native
Guano Co. v. Sewage Manure Co., 8 R.P.C. 125). The case is also of
importance in that it distinguishes clearly between the weight of the onus on a
plaintiff in an action for infringement and the onus on an applicant for registration
of a trade mark when the application is challenged. The onus is much more
weighty in the latter instance. Prior to challenging a corporate name on the
grounds of infringement of a registered trade mark or similarity to another
corporate name it would appear to be advisable where open to the plaintiff to
attempt to have the allegedly objectionable name changed under the machinery
provided in the applicable Companies Act. It is also advisable even though not
necessarily essential in an action for infringement of a registered trade mark to
submit evidence of actual deception in the trade.
Mr. Submarine Ltd. V. Amandista Investments Ltd. (Mr. Subs 'n Pizza)
Issue: Whether TM in Mr. Submarine has been infringed by the use of the mark "Mr.
Subs and Pizza" (mostly delivery based sandwiches)
P is trying to argue s. 19 but Court rejects it. "Mr. Subs" is part of Mr. Submarine
by saying that it is identical to our mark- Court rejects this - pg. 540 - "the extent of
the exclusive right is defined as the mark as registered and it seems to me that the
taking of the mark as registered on which such an action could be maintained and
that any right of action for infringement that the registered owner may have in the
taking of part of the registered mark or on the use of a similar TM is s. 20 or maybe s.
s. 19 argument is rejected so does s. 20 comes into play.
Fed. Ct. of Appeal finds that the marks are confusing - the way the Court works
through the factors.
pg. 543 - bottom of 3rd para - last two lines - "the essence of the TM that which alone
gives it distinctiveness is the combination of the 2 common and by themselves quite
s. 6(5)(a) - they are both weak marks
In terms of how well known they are is that some are well known in some places
more than other and began to be used around the same time. One is over the
counter and one is delivery. The words while they don't look alike or sound alike
they do suggest similar ideas "elongated sandwiches".
They conclude that confusion is likely - -pg. 544 - large para - "While the marks
manifestly different in many respects there are also respects in which they are
manifestly similar, in particular in the combination of "Mr." and "Submarine" with
"Mr." and "Subs". In my view it is not unlikely that someone whether vaguely or even
precisely familiar with MR. SUBMARINE would while looking for in the phone book
might mistakenly conclude that MR. SUBS AND PIZZA was in some way
associated with MR SUBMARINE as a licensee or otherwise." If s/one was looking in
the phonebook then it is not unlikely that they would mistakenly conclude that the
name of the appellant was in some way associated as licensee or otherwise with
variation that this outlet had Pizza as well.
Length of time: When we talk about relevance of facts the Court recognizes that
in 10 years of co-existence there was no confusion but this alone is no
determinative however it is a weighty things to think about.
The differences are subordinated to the similarities in this case but sometimes
the similarities are subordinated to the differences like in Pepsi Cola case.
www.robic.com - she says this is good website.
Some general rules on cases of confusion as to when you conduct infringement
We are comparing the marks and we are looking for likelihood of confusing using
the factors that we are being told to use.
Marks are being compared as whole even the unregistered and disclaimed parts.
If you just take the portion that is not that distinctive then like we saw in Pepsi
cola case we will likely not be found to have infringed.
Mr. Submarine could not launch case against anyone who used Mr.
The relevant reaction is "the average consumer" who may have an imperfect
Evidence of lack of confusion can be very relevant in these case (such as Fruit
Loops case) but not determinative as we saw in Mr. Submarine case.
B. Bona Fide Use Defence - Exception s. 20(1)(b)
The bona fide use defence - this is not expansive - and virtually useless according to
Craig - she says cases reveal why that is.
If you had an accurate desc of the character of the quality and of wares and services w/o
depreciating wares - if you don't depreciate goodwill or use it as a TM then you don't fall
under s. 19, 20 or 22. This is for last ditch effort for ppl to say that they are allowed to do
what they were doing but in real life these things are very limited.
You are allowed under s. 20 (1)(a) to use you personal name as a trade name but that
does not allows you to use you name as TM.
It is an exception that is most likely to be relevant when a mark has acquired
[wasn't listening in this part - look over]
In terms of name hat would be relevant for marks that are registered but have acquired
everybody has right to describe product and use their name for the trade name of
business but there are not strong when you put them against a mark that is registered.
Where you want to begin to defend what you have done is to attack another person's
registration; the next thing is to say that you are not dealing with the mark in a way that is
infringing; or I don't come within s. 20 b/c not confusing - you want to argue that u are not
using it as a TM
i) Accurate Descriptions
Traders may bona fide and accurately describe the character of their wares or services, but
again this common law right as reflected in section 20(1)(b)(ii) is severely limited, quite apart
from the "[no] depreciat[ion] of goodwill" requirement.
The need to avoid "use . . . as a trade-mark" is difficult to comply with.
Bagagerie SA v. Bagagerie Willy Ltee (1992)
Facts: We have registered TM in "La Bagagerie" in travel cases and the D has opened a
business with Trade name with Bagagerie Willy Ltd. They fix suitcases and sell
suitcases from diff people. The trial judge found that there was no confusion b/c of the
nature of trade and the wares. The CA court thinks that this would be confusing usage.
His defence is that Bagagerie is an accurate description of the wares that he sells.
Issue: Is Bagagerie an accurate description?
They brought in linguistic experts and the meaning of this word in French - law
and linguistics meet.
Court conducts on pg. 558 - 5th para - "I conclude that in current usage there is a
clear distinction b/w the words 'bagage' and 'valise'. The words 'bagagerie' or the
phrase 'La Bagagerie' was not descriptive of the articles sold by the respondent. They
were at most suggestive. As it is not an accurate description within the meaning of s.
pg. 556 - under the Q&A - the Court thinks that in everyday speech that baggage
is when you have ur stuff in your luggage - he is selling empty luggage which
would be valise and not baggage.
It wouldn't be descriptive b/c not accurate description but suggests connotation of
If it is not accurately describing your product then you are not under s.
Guccio Gucci S.P.A. v. Meubles Renel Inc. (1992)
Facts: Paolo Gucci does not talk to his family anymore and he does not design for his
family anymore but he wanted to sell his own stuff under his name.
The point was that he was trying to say that label attached to his furniture saying
"by Paolo Gucci" even though confusing mark it was an accurate description of
TEST: pg. 562 - "such an exception must fulfill 4 conditions the use must be (1)
bonafide (2) other than as a TM (3) an accurate description of the wares (4) in such a
manner as is not likley to have an effect of depreciating the value of the goodwill
attaching to the TM. All 4 must be fulfilled" - he failed on all 4 counts.
They didn't think he actually designed the furniture and that it would depreciate
goodwill by depreciating value of Gucci mark.
The defence is not successful
Look at the infringement chart online
If you fail to attack validity you should use non-infringement defence which
means that we are allowed to do this b/c it is out of the scope of your rights.
Gucci case said that all of those requirements have to be met
C. Concurrent Use - s. 21 of the TM Act
When we were looking at entitlement under s. 17 - you had five yrs to challenge the
validity of mark when it is registered unless some bad faith presence but if the mark has
become uncontestable by virtue of s. 17(2) then s. 21 gives you a little bit of leeway if you
adopted the mark in good faith and before the registrant applied to register their mark
For example if you adopted the mark and then they used it after you w/o knowing they
used it and you didn't oppose and then 5 years passed then you cannot challenge - s. 21
says this could be a little bit to onerous b/c they can suddenly be sued by the registrant
so in these scenarios the Court can issue an order of concurrent use.
They are allowed to continue using the mark even though it is confusing (in defied
It has to be use that is not likely to cause actual confusion to the public and "subject to
term it sees just" (from s. 21) - things like including disclaimer that says you are not
associated with "X".
The use is limited w/i defined area w/ specified distinction;
That you are not the one with registered mark and that;
It is not against public interest
Example: B uses; A applies to register; A registers; 5 years passes [s. 17(2)]
If B were to be using for a long time; in a specified area and was not too confusing then
they could be given a concurrent order.
The more famous B is then the most likely that it will no get concurrent use order.
What happens if A used before- concurrent order can still be issued as long as it was
before A applied.
Kayser-Roth Canada Ltd. v. Fascination Lingerie Ltd. (pg. 565)
P’s application to register Proceedings commenced
PRIOR to D’s USE: within 5 yrs of registration:
No right to s. 21(1) order Not protected by s. 17(2)
Jan 1967 April ’67 March ’68 June ’68 1971
KR apply KR register Proceedings
to register First established use of commence
Fascination by D
Registration in June 1968
The D is trying to say that they already used word "Fascination" with lingerie and
should be allowed to use and were not in fact infringing.
Argument was under s. 21 that b/c of prior use in good faith the court should
allow them to continue to use "Fascination" in Quebec where they had been
Problem with this action flows from timeline - there was use by he Defendant
and court is willing to accept it was in good faith.
We were using it in 1967 and it is not fair for us not to use it anymore.
Pg. 567 "section 21 can only be used in conjunction with s. 17(2) so you can only
use this after 5 years that registration has ben on registered. "
Last para on pg. 567 + 2nd last para on pg. 568 "It therefore is clear that he cannot
find here the conditions required to permit the restrictive use by the D of the TM
Fascination as, in the 1st place, the proceedings were commenced before the expiry of 5
years. From the date of its registration. Furthermore, there is no allegation and no
proof that the P registered its TM with the knowledge of such previous use or making
known of such TM."
It has to be over 5 years since date of registration _ registered owner should
have adopted the mark w/o the knowledge of prior use of tht other plus you have
to meet requirements of s. 1 [It has to have been used in Cda. before date of
filing of application to register and not contrary to public interest]
The proceedings were not commenced five years after registration which means
that it is still open for "Fascination" to challenge validity of Kayser Roth mark
which means s. 21 would not apply.
Why do they not bring action to have expungement? b/c they do not have better
The other timeline problem b/c it did not use the mark before Kayser Roth
applied for registration which means it does not fit into timeframe we need for s.
Best way to destroy infringement action is to attack the P's registration
Second thing is to day that what you are doing is outside of the scope of the
D. Comparative Advertising
Define what you are doing is outside of the scope - this will deal with this
s. 19 gives the most limited ambit of protection - gives you the exclusive right to use mark
- scope if great but it is limited. Infringer has to be using the mark with same wares and
w/i the defn of use and has a result as distinguishing source.
s. 19 - as soon as you have notable change in mark then you are outside of the ambit of
s. 19 and it would be s. 20 action instead.
s. 20 is more broad where we are not talking about the same mark or perhaps not the
same wares. ex. Nolex for watches instead of Rolex - slight difference of the mark.
Alternatively you have the same mark but the products are different - Sunlife for
insurance and Sunlife for orange juice? - you have to ask if it confusing with each other.
s. 20 - b/c of wording of act the "use" requirement is a little bit wider than "use" for the
purpose of s. 19.
When you advertise in association with wares in s.4 it does not consider this "use" but s.
20 does consider this "use"
s. 22 goes beyond all of this because it adds "depreciating the value of the good will
attached to the mark" - because you may not be doing s. 4 but if you depreciate value at
all then it will be caught by this section.
You could be misrepresenting something other than source you may not be using it as
TM but misrep selling product to X and X's mark appears on your products
Comparative Advertising is classic s. 22 example
Using the competitor's TM in "comparing" products
You cannot make false statements s. 7 (unfair competition) - this would also exist at
s. 22 can prevent perfectly true and accurate statements. If truthful statement will have
negative impact on their goodwill and they might have an infringement action based on s.
Nothing in Clairol decision that could have been dealt with at common law - no confusion
s. 22 is something that goes beyond anything at common law.
Right of registered owner to control use of the mark and to ensure that positive
connotations that it has created can remain intact.
On the other hand you have the right of the competitor to compare itself to the TM owner
and engage in free expression in commercial context.
If TMs are used to identify a source then other ppl have to be able to use the mark to
identify the source that they are talking about.
Clairol International Corp. v. Thomas Supply Equipment Co. Ltd. (1968) -
Facts: Clairol owns Miss Clairol and Hair Color Bath and Thomas companies is
subsidiary of Revlon etc. and the argument here is the brochures and the package have
the TM on it. They included Hair Colour comparison charts where they compared shades
of colour comparing Clairol colours with Revlon colours. Above the chart appeared the
TMs "MISS CLAIROL" and "HAIR COLOUR BATH" - they said their colours were so
close that they were just as good. If they liked Clairol then Revlon was just as good. The
infringement action is brought by Clairol claiming s.19 (exclusive right to use their mark).
When u put TM on your brochure it is violation of. s. 19. We are not dealing with s. 20
but we are dealing with s. 22 that the use on the Revlon packages depreciates the
Claim #1: Does the use of the plaintiff‘s trademark by the defendant
constitute infringement pursuant to s. 19?
1(a): Was the trademark used by the defendant?
1(b): Was the use of the plaintiff‘s trademark as a trademark?
Held: for the D. The use is not as a trademark (but as a comparison); thus not
infringement under s. 19
Claim #2: Does the use of the plaintiff‘s trademark by the defendant
depreciate the goodwill of the trademark pursuant to s. 22?
I: 2(a): Was the trademark used by the defendant?
I: 2(b): Did the use by the defendant depreciate the plaintiff‘s goodwill
attaching to the trademark?
H: For P. Use of the plaintiff‘s mark on the packages was use and is a use of them in a
manner likely to depreciate the value of the goodwill attaching thereto within the
meaning of s. 22(1)
The plaintiff‘s trademark was mentioned on the chart and this was what made the
depreciation of goodwill obvious – if others on the chart would too this not have been
depreciation of goodwill?
Appearance on the brochures - last part of. s.4(1) - not on package but on
but when it is on brochure it is not used as set out in s. 4
s. 4(2) gives broader defn of use for services
chart of "Understanding the Clairol case" - on website - we have three out of 4
things needs to be "use" so therefore not infringement
pg. 573 - 2nd last para - last 7 lines "s. 19 provides the registration of a TM in
respect of the wares and services the exclusive right"
No one thinks that the Clairol mark is on the Revlon product to distinguish
pg. 575 "..are not intended to indicate the D's goods. Nor do I think a perspective
purchaser of a package of these wares would be likely to be deceived by the presence of
these marks" therefore it is not a s. 19 infringement.
s. 22 is controversial b/c it goes beyond that and it is no longer concerned as to
whether or not it will confuse people regarding source.
This is comparable to American approach to "Dilution" - there is a lot of literature
in the US about this.
pg. 575 - last para expressed wariness of the potential application of s. 22 -
what is the scope and the limits of s. 22. "but I do not think the statute is intended
to forbid legitimate comparison or criticism of that kind. Rather I think 'use' under s.
22 is to be interpreted by reference to the defn of the noun 'use' in s. 2 of which is to
confine application and therefore the prohibition of s. 22 to a use which any person
may make, in association with goods or services within the meaning of s. 4"
bottom of pg. 575 - we are only talking about use in technical sense such as
uses that fall under s. 4
Some people say that b/c the above brings some odd results is why some
people think tha the judge was wrong in limiting it to the technical s. 4 use.
3rd para pg. 576 "It remains however to consider whethet the use so mad eof the Ps
marks on the Ds packages is use in a manner likely to depreciate the value of the
goodwill attaching to the Ps marks"
If you own a TM is association with services then advertising using a mark is
"use" in the technical sense and not for wares so this is where the anomaly
comes into place.
Note the chart difference as TM on Packaging vs. TM on brochures.
This creates the incentive to register the mark in association with services as
well as wares so they can get both protections.
What is goodwill? and is it likely to be depreciated by this activity? pg. 578 "The
goodwill attaching to a TM is, I think that portion of the goodwill of the business of
its owner which consists of the whole advantage, whatever it may be, of the reputation
and connection, which may have been built up by years of honest work or gained by
lavish expenditure of money and which is identified with the goods distributed by the
owner in association with the TM"
Goodwill - things that makes customer want to but your product or continue to
buy your product.
2nd para pg. 578 - reduce advantage " depreciation of that value of goodwill in
my opinion occurs when it reduces in some way the adv and reputation and
connection I have just referred" - show the loss in profit etc.(this happens in the
pg. 579 "In short, he may not use his competitor's TM for the purpose of appealing to
his competitor's customers in his effort to weaken their habit of buying what they
have bought before or likelihood that they would buy his competitor's goods or
whatever binds them to buying competitor's goods, for this is not only calculated to
depreciate and destroy the goodwill but using his competitor's TM to accomplish that
Using competitor's mark to take away the custom of Clairol and therefore it
would depreciate goodwill. - in the case of the TM on the package
But in terms of the brochures they are not infringing because even thought hey
depreciate goodwill they were not s. 4 use and cannot infringe.
This case has been upheld.
The TM on Packaging
The Mark The Goods The ‘Use’ The Function/ Infringement?
(the same) (the same) s. 4 use Not as a TM No
(the same) (the same) s. 4 use Depreciating
The TM in Advertisements (Flyers)
The Mark The Goods The ‘Use’ The Function/ Infringement?
(the same) (the same) Not s. 4 use Not as a TM No
(the same) (the same) Not s. 4 use Depreciating No
Eye Masters Ltd. Ross King Holdings Ltd. (1992) - pg. 581
Facts: Services case. This case is about interlocutory injunction that wants to restrains
advertising that sues competitor's service mark. "Use" in the advertising is a technical
use and likely an infringing use. It compared prices of two eye glasses service - Eye
Masters and Shoppers Optical. There was a picture of the same model wearing different
glasses and used the TM of Eyemasters on their poster and using the TM in association
with services. defendant‘s advertisement showed 2 photographs of the same model
wearing similar glasses – compare the value: Eye Masters $208 v. Shopper‘s Optical
$107. ―eye master‖ was the plaintiff‘s registered mark and made a claim under s. 22
Looked at Clairol and allowed for wares but not for services and J. Reed allowed
this and gave injunction on this
She disagrees with policy but says we have to follow it
because services were involved, use was governed by s. 4(2) – merely
advertising constitutes use
court held that the advertisement would depreciate the plaintiff‘s mark through
the enticement of its customers
Recall: Clairol case – judge specifically mentions this example as not appropriate
for application of s. 22
Futureshop Ltd. V. A & B. Sound Ltd. (1995) (pg. 584)
Facts: Using aggressive advertising against each other. Futureshop brought this action
and that the use of the TM in AB Sound's ad was an infringement and it is likely to
depreciate the goodwill of the Futureshop's mark and s.22 should apply. Court sets out
Clairol decision and looks uneasy about applying the decision here.
pg. 585 "there is no provision like s. 22 in any jurisdiction and is capable of a
Court denied injunction and tried to distinguish
There are adverts that emphasize diff and some that emphasize similarities.
If you are emphasizing diff b/c the function or effect of our use is not the kind that
s. 22 is supposed to protect you from.
pg. 586 - 2nd last para "A comparative ad which is obvious and reasonable
implication stresses the differences b/w the advertsiser's product and that of the
competition does not attach itself to the competitor's goodwill in the same manner.
Rather it seeks to distance itself from that goodwill by stressing differences. This
would explain the contras b/w the results in Clairol for the illustration of the
comparative pricing poster, which the judge concluded would not offend s. 22(1) "
They are trying to distance yourself from goodwill (this argument makes sense in
the sense b/c this is about misappropriating and not misappropriating - you are
not trying to take something from them as was in Clairol case)
This is rather weak distinction and does not fit well with out defn of depreciating
The Eye Masters case is at odds with this b/c they were saying that glasses are
just as nice (similar) and they are cheaper (difference) - so it would not work
Craig thinks this is oversimplifying comparative advertising
s. 22 has potential to be very wide in scope unless it has been limited.
The result is rather nonsensical b/w wares and meaning of use in both
circumstances and none of them address what may be the more appropriate
issue which is - is what they are saying true or not?
Law has still to address is whether or not we are dealing with the mark as
registered - David Vaver says this but cases do not address differences in the
Source Perrier S.A. v. Fira-Less Marketing Co. Ltd. (1983) (FCTD) - pg. 589
The Source Perrier case deals with this - spoof on Perrier water - political spoof
against Pierre Trudeau - it could not be confusing b/c it was a spoof but
confusion is not the question under s.22 - parodies that use TM can be caught
under s. 22 and there seems to be no defence unless you make a free
plaintiff claims that the defendant is using a mark that is likely to depreciation the
value of the good will attaching to the plaintiff‘s trademark
defendant is advertising, distributing and marketing bottled water in association
with the name ―Pierre Eh!‖ – plaintiff claims that the bottles are substantially
similar to those of the plaintiff‘s ―Perrier‖ bottles
defendant: ―Pierre Eh! product is being marketed as a humorous political spoof or
satire directed at the Prime Minister and Government of Canada‖
court: ―‖defendant is depreciating the value of the goodwill attached to Perrier‘s
marks contrary to the provisions of s. 22(1)…The fact that the defendant intends
to produce a spoof does not take away from the deception created in the minds
of the customers. The defendant is clearly attempting to cash in on the well-
established reputation of Perrier, and the deception tends to dilute the quality of
its trade marks to impair its business integrity established over the years and to
cause injury to its goodwill‖
Held: court: plaintiff allowed protection under s. 20 – defendant is likely to create
confusion in the minds of customers
What is interesting is the decision on the 2nd para pg. 592 "In my view, the most
liberal interpretation of 'freedom of expression' does not embrace the freedom to
depreciate the goodwill of registered TMs, nor does it afford a license to impair the
business integrity of the owner of the marks merely to accommodate the creation of a
spoof. It must be borne in mind that this application for an injunction does not
originate from the targets of the parody those in political trade are expected to be
blessed with a broad sense of humour but from the owner of the TMs."
Freedom of expression arguments have not taken parodies seriously - corporate
overreaching to silence parody.
There is an argument that since mark was difference it should not have fit into
ambit of s. 22 anyway.