TRADEMARKS by Gemma Rochelle Etchells
=“a form of commercially valuable intangible”
TM‟s are concerned with logos, brand names and business names used in relation to
products or services in the marketplace. TM law protects the right to control these
brand names and logos and accordingly the way these are understood by the public.
Is it therefore better to call this industrial property rather than intellectual property as we
are not protecting the intellectual element of this mark?
This is not rewarding the creative process as in copyright where the author has the right
of control, but protecting the commercial value behind the brand name which has
developed through the marketplace. It is the consumer recognition that makes the right
of TM ownership.
TM‟s can also be copyrighted, but TM is more of a competition issue, concerning
competitors gaining an unfair advantage rather than a complete silencer on the issue.
Where TM ends, copyright steps in.
TM‟s identify the trade source of a product to customers and TM law prevents
confusion over this brand to the customer, it protects the identifying function of that
mark and the way the source is presented to the public. Businesses build up positive
connotations connected to the trademark, they want these to be protected through TM law
and not destroyed or taken advantage of by their competitors.
I. UNDERSTANDING TRADEMARK LAW
TM‟s are a symbol or indicia to identify the wares or services of one manufacturer from
another, and TM law allows them to stake a claim in the use of that mark in
connection to those wares. The extent of their claim however depends on many
variables to distinguish between a competitor and an infringer. TM identifies the maker
and in turn tells us something about the product, either the quality or the origin. The
brand name can become synonymous with the product and all associated with it.
® means registered TM
TM means we think we have a claim in this as a TM through the common law
Protection for TM‟s flows from the common law but also there is a statutory regime
which exists alongside this. An Act codifying the law already in the marketplace was
introduced in Canada in 1868. There is accordingly two forms of action –either through
common or statutory law. It is still private law however, not public law, despite the
Trademark Office and Registry.
A. Introduction to the Trademark Scheme
Gordon Henderson, “An Overview of Intellectual Property”
If we didn‟t have protection for TM‟s then there would be no point in building up a brand
as someone else could then use this and ruin the effects of the first persons expenditure.
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Jacob Jacoby, “The Psychological Foundations of Trademark Law: Secondary Meaning,
Genericism, Fame, Confusion and Dilution”
When we see a TM and decide we want to buy that product because of the mark how is
this working, is it making us more or less efficient consumers and how does this work?
The way the brain operates and thinks is through cognitive networks through nodes and
links –we have one thought which leads to another and another etc. In the marketplace we
store information the same way as consumers. If in the marketplace you have a brand
name this acts as a node triggering other responses. It is a very efficient way of
communicating information about a product.
B. Rationalising the Protection of Trade Identity
Landes & Posner, “Trademark Law: An Economic Perspective”
TM’s are communicative symbols –reduce our search costs as consumers, but there
are also benefits to the traders, although these may not always converge. Moreover the
source theory of TM law may not be wholly convincing in the modern market. For with
global franchises and the mass licensing of trademarks the mark may no longer tell us the
source of the product. Rather is the TM a guarantee of quality? Does the owner really
have jurisdiction over this area however? With some products we just want the mark
because of the mark, not as a guarantee of quality or source. Thus, are TM‟s free
standing commodities? Were L&P therefore right to say that TM‟s maximised efficiency
as if we act in this way are we not creating social waste?
Alex Kozinski, “Trademarks Unplugged”
TM‟s are no longer used in todays society to identify products and sources, they have
become commodities in themselves. Should we therefore protect them as
freestanding entities or only in conjunction with their products? Image
merchandising has a huge demand, TM owners are entitled to protection and the good
will in the mark; that is why customer confusion is such a big consideration in any TM
case as it goes to the core of the how it functions.
Moral claims of TM owners –if you make something, adding value to it is wrong for
someone else to reap where they have not sown.
TM‟s do play a significant role in the public discourse and that should have some
bearing on how protection functions. The mark comes to mean something more than the
mere product and there has to be room to use the mark as such.
The conclusion in this article is that all these competing elements have to be given
consideration; however would it not be better to evaluate all these elements in order to
work out a hierarchy for consideration.
Keith Aoki, “Authors, Inventors and Trademark Owners: Private Intellectual Property
and the Public Domain”
Tensions of TM owner and public are in conflict. Trader who develops the mark is being
equated to an author. This the makes consumer confusion a secondary concern. Rationale
of property and reward of creation as seen in copyright and patent law is permeating
TM law.
It isn‟t just about confusion however but the right to use that mark.
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Anti-dilution law –protection sometimes given to the TM owner –depriciating the value
of the goodwill attached to the mark. This freezes the meaning of the sign –the trader is
the only one who can use the mark. They have the right to control the meaning attached
to the mark –can stop parodying for example.
Felix Cohen, “Transcendental Nonsense and the Functional Approach”
Vicious circle of TM law. Create a response to a mark which is then seen as property
and can control its use. If it wasn‟t protected by law the mark would be worthless –law
makes the problem. Can‟t say therefore that we only protect it as it is valuable as
protection makes it valuable.
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2. THE COMMON LAW OF PASSING OFF
classic passing off = D passes themselves off as P, gaining the benefit of P’s business,
either their advertising or status in the market for example. Doesn‟t have to be done
knowingly or intentionally.
2 kinds of harm that could be suffered
-diversion of sales and accordingly profits –that presumes that A would buy B‟s
products instead of C‟s.
-less dependent on substitution in marketplace is the loss of control in the marketplace
–if customers believe they are dealing with A when they are in fact dealing with B.
In order to have classic passing off action need
-mark, brand name etc. –some individual feature identifying the goods as P‟s in the
mind of the public
-needs A’s use of the indicia to amount to misrepresentation
A. General Principles
Powell v. Birmingham Vinegar Brewery Company –Yorkshire Relish case
Facts -P‟s made “Yorkshire Relish” to a secret recipe. D‟s made similar tasting sauce
under same name hoping to get into the market. Sold in same shape and size bottles;
similarities in labelling also.
P wants to prevent the selling of any competitor‟s sauce, but definitely wants to prevent
the selling of the sauce in a similar way to their own. For when people ask for Yorkshire
Relish they mean that produced by P not D. Will this really cause deceit and confuse
people?
Ratio – p.33 –Depends on how words used –if just mean that spicy sauce can be used
but if mean that made by P cannot be used
Lindley – While the term is descriptive of the sauce it has further connotations, attaching
it to the maker. While there was some care taken to distinguish the packaging etc. there
were some major similarities in the lettering and above all in the name.
p.36 conc = trading on reputation of another is wrong, crt protects the goodwill
attached to the indicia. If the only way of selling D‟s sauce is to infringe on P‟s goodwill
then they must not sell it, and as such competition is restricted.
Extended passing off –takes us beyond the actions of one person representing the goods
of another. Concerning confusion between different types of wares and quality or
type of product being misrepresented.
Warnink v. J. Townend & Sons Ltd.
Facts -D made egg flip and sold it as advocaat, being able to make a significant profit
as underselling the real advocaat as made from fortified wine and not spirits and had an
according tax advantage. Nothing with the indicia suggested that this product was
associated with the P. D were trying to benefit from the goodwill attached to the
advocaat.
Ratio –Crt satisfied that when people were buying Keeling’s product they thought
they were in fact buying that of Warnink’s, and as such K were ruining W’s
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reputation and good will. Use was misrepresentation, not to particular source but K‟s
drink thought to be particular drink.
Recognition here that passing off extends far beyond the classic action. The right
attaches to the good will in the mark and not the property in the mark – thus opening the
door to various ways in which the right may be infringed. Thus the proprietary interest
P has is in the good will attached to the mark and it is this that D is not allowed to free
ride on –we are not protecting the rights of P as an author, but as the owner of a
reputation and goodwill –that is what is infringed in TM law. You don‟t have to
misrepresent by using the others name, it just has to result in confusion resulting in harm
to P‟s goodwill. If the property interest is in the goodwill the harm is experienced
indirectly through a misrepresentation.
Spalding –concerning misrepresentation about themselves. D said they were selling the
better line when in fact they were selling the inferior goods –Diplock relies on this to
show that the tort can be extended beyond the classic test.
Diplock’s 5 pronged test
1 -misrepresentation
2 –made by trader in course of trade
3 –to prospective customer or ultimate consumer of goods supplied
4 –calculated to injure business or goodwill of another trader (reasonably foreseeable)
5 –which causes or is likely to cause actual damage to business or goodwill
These are mere indications that you could have a passing off action. He is aware of the
challenge that he is faced with, of finding an appropriate balance between competition
and unfair passing off -we must not unduly hamper competition when we find there may
have been passing off. When you inaccurately misrepresent your own product harming
anothers business that is not a passing off concern but you do at least have all the
ingredients of a passing off tort. You have to ensure competition is fair and that it
persists.
Therefore commercial honesty is an important underlying concern in this judgment.
But even bearing in mind the benefits of competition K is encroaching on W’s goodwill
and so an injunction against K is granted.
The product has to have its own distinctive qualities and features. That distinctiveness is
the root of how it is that the D‟s misrepresentation infringes on P‟s rights.
Institut National des Appellations d‟Origine des Vins et Eaux-de-Vie v. Andres Wines
Ltd. –different to the champagne cases in Warnink
Facts -D selling sparkling wines in Ontario for 60 years as Canadian Champagne is
challenged by P who state that the term champagne can only be used in connection
with champagne produced in a certain area of France.
P argues along the same lines of Warnink that such misrepresentation is calculated or
likely to deceive the wine-consuming public into thinking that the Canadian product is
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champagne from that area of France, thereby creating an extended passing off (i.e. don‟t
have to prove actual deception; likely to deceive is good enough)
Ratio -Crt dismissed the idea of extended passing off and that seen in the decision in
Warnink by recognising D as encroaching on P‟s goodwill, however wineries have been
selling “Canadian Champagne” without any incidence of confusion for 60 years .This
infers that there is no misrepresentation or likelihood of misrepresentation. Canadian
champagne is a distinct Canadian product not likely to be confused or even compared
with French champagne. Moreover the term champagne has been used in connection with
many things not even associated with the sparkling wine produced in a certain area in
France.
Classic passing off the only form of misrepresentation is that D represented the goods of
another.
Extended passing off includes any misrepresentation that would be material to
customers –concerning quality, type, affiliation etc.
Reverse passing off (classic passing off in reverse) –D represents P‟s goods as though
they are their own –instead of their own as P‟s.
-there must be some link between P’s and D’s products which is likely to harm P’s
goodwill.
Warnink & Andrew Wines –clear that there must be misrepresentation that will
mislead, confuse or deceive the consumer, resulting in harm to P.
Cadbury Schweppes Ltd. v. Pub Squash Co. –have to be careful to strike balance between
competition and misrepresentation that leads to harm.
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, releasing their drink just
before the national launch of “Solo” by copying the taste of the plaintiff‟s drink for its
own “Pub Squash” and running smaller scale imitative television commercials. “Solo”
wanted to protect the market they had built.
D did take advantage of P‟s marketing campaign but were the public actually deceived
or confused in the market, resulting in passing off?
Can there be passing off in advertising? Traders cannot deceive people that they are
getting something which they are not, as per Diplock in Warnink p.48. Images
associated with a product can be protected if they become distinctive with the
product, giving it that character. The themes of rugged adventurer etc. were descriptive
of the product and what it meant but were never a distinguishing aspect of the product.
There could be no control of these aspects therefore. If they were protected it would
protect something merely descriptive and would be too much of a burden on competitors
in that market –no other competitor would be able to use those terms in relation to their
product. Is there a distinctive character? Has D harmed P‟s market by confusing the
consumer in adopting similar advertising slogans? If D just entered the market and
competed fairly there would be no wrong.
Ratio -No passing off because the D did not misrepresent itself or its product. There
was always enough differentiation so this was simply viewed as fair competition. No
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confusion or deception established in market surveys of ordinary, reasonable consumer.
Need to balance protection of P‟s investment with free competition.
In order to maintain the appropriate balance the crt has to ask whether the consuming
public was confused or misled by the get-up, formula or advertising of the product to
believe it was the appellants product. If we focus on the goodwill we have to ask whether
the goodwill has been harmed by the misrepresentation. If it is the goodwill that the
plaintiff is entitled to protect then that can only be harmed by confusion –confusion
within the minds of the public mediates the balance between these 2 competing claims. P
has managed to create a market for Solo but passing off is not concerned with protecting
the labour that was invested in creating that market. It protects that goodwill against
passing off and confusion. Crt found that there was no confusion. When they looked at
how consumers were responding to the 2 products they found that there was no confusion
-64 witnesses over 26 days as this is a q of fact that requires survey evidence, witnesses in
crt and the standard applied was that of the ordinary reasonable consumer. Crts do bear in
mind the realities of the marketplace and the state of mind of the consumers –the cans
were clearly different and you could tell they were a different product. Buying soft drink
is a casual transaction –you don‟t spend much time on considering this purchase. But
even taking that into account the crt was satisfied that there was no confusion. D‟s
deliberately tried and succeeded on capitalising on D‟s efforts in the marketplace –what
D had not done was step into P‟s shoes – the intention was to take advantage of P‟s
market but not to pass themselves off as P. D is within his rights to exploit P‟s markets.
Harm that P suffered in sales flowed from successful comp –not consumer confusion.
Here preserving that comp meant not protecting that D‟s activity.
Consumer Distributing Co. Ltd v. Seiko Time Canada Ltd.
Facts - P watch company has exclusive rights to sell Seiko in Canada. Consumers begins
grey marketing (parallel importing) in Canada but due to an interlocutory injunction by
Seiko they cannot state they are an authorised dealer must post notice stating that they do
not honour warranty. At trial Consumers told to stop selling these watches in Canada. On
appeal D attempted to argue extended passing off by saying Consumers was holding itself
out as part of the class of dealers licenced to sell these products in Canada –does grey
marketing of products constitutes passing off?
Product Seiko Time Canada selling was not just the watch but the whole package
including the sale service, the warranty etc. Arg is CD would be creating confusion and
damaging the good will by not marketing all those other elements. Apellant was selling
its product as though it was that of Seiko Time Corp and it was not.
The trial conclusions are unfunded –p.58
p.58 consumer should have choice on whether to buy the watch with the warranty or not
and at the lower price –they have the right to decide on that trade off. If they were not
allowed to sell the watch it would create a monopoly –this would look like a monopoly.
Starting point is free competition, not whether there was confusion for the customer.
There is nothing seen to be like a passing off action.
Comp is going to win out over protection. Confusion enters between comp and
entrepreneurs rights. There would be no confusion with the effects of the injunction.
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Ratio - As long as title to a product is lawfully acquired then there is no reason for
an authorized dealer to complain.
Consumers is allowed to continue to sell Seiko watches in Canada as it is not trading on
the goodwill of P nor is it misrepresenting itself. No confusion shown therefore no
passing off. There was no evidence of confusion because Consumers posted notices and
they were selling exactly the same product, not a knock-off. From a policy perspective,
the Court is concerned that exclusive agreements can limit competition and can
create a monopoly. Competition is the guiding concern that wins out over protection in
this case. This case is usually cited as the Canadian endorcement of the 5 prong Diplock
test.
Reckitt & Colman Products Ltd. v. Borden Inc.
Facts – Concerning lemon-shaped squeeze packs both used by two companies with their
respective trademarks although evidence showed that the crucial point of reference for a
shopper purchasing Jif lemon is the lemon shape itself; no attention is paid to the label.
On appeal D argues that P should not be allowed a monopoly on plastic lemons,
furthermore a lemon is a descriptive rather than a distinctive element and trademark
law should not protect a descriptive element to create a monopoly. Has the plastic
lemon become such a distinctive feature of the Jif product to create confusion for the
customer and therefore constitute passing off on the part of D?
Appeal judge decides he has to place himself in the position of the shopper.
At trial an injunction was granted that would be likely to deceive. If they could sell this
product in such a way in a squeeze lemon pack and make it obvious that this was not
from Jif then this would be ok. There is no monopoly on lemon packs –Powell case.
Ratio -Injunction justified due to passing off. Policy decision based on the principle that
“no man should steal another’s trade”
Court is not protecting functionality here, only protecting plastic lemon to the extent that
it is distinctive as to the source of the lemon juice.
Lord Oliver -Crt applies 3 pronged passing off test known as the Classical Trinity Test,
replacing 5 prong test for passing off.
1.P must establish that there is goodwill and reputation attached to the goods or services
in the minds of the public.
2.P must establish that there has been a misrepresentation by D to the public likely to
create confusion in respect to source and quality or type of the goods.
3.P must show that they have suffered damage or the likiliehood of damage from the
confusion caused by the misrepresentation.
1st have to show lemon shape is distinctive of Jif.
2nd that D‟s getup is a misrepresentation which lead the public to be misled into buying
D‟s product which would result in harm.
Predominant part of the get up is not Jif name –D‟s are going to put label round neck with
own name –is the lemon enough to be a TM? Not just talking of name and logos but how
the product appears to the public. What always has to be shown is that the get up has
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come to mean something to the public and come to show source. D argues that the use of
a squeezy plastic lemon is just an idea and that it cannot be protected. There is no patent
in the container. Neither D nor P is selling plastic lemons –what is of issue is how the
lemon connotes source. It is functional as the container and a convenient size and shape –
to protect it would be to give a monopoly over this –concern is over the functionality of
the design. Concern would be that if you protect the function this is anti-competitive.
What is protected is not the functionality of the bottle but the source of the product –but
how is source depicted? Once it has been established that there is meaning within the
lemon shaped container then you can see why use by another party would result in
damage from misrepresentation that undoubtedly occurs.
Shape, size or colour – may be characteristic of a particular manufacturer and have
the effect of marking out the product or making it recognisable as his own; the
consumer may rely on the appearance rather than the trademark to indicate the product.
Doesn‟t matter to what lengths you go to try and differentiate your product if people
don‟t take notice of this then it is your prob. When there is misrepresentation and
confusion this becomes more important than the monopoly concern –places harsh burden
on competitors.
Injunction gives P monopoly in plastic lemons without patent or industrial design
protection. Here there is not a monopoly in the lemon juice business –they can still
sell lemon juice but not in lemon containers –it is a disadvantage to competitors but
nothing else. It is very hard to untangle the interests and work out how to differentiate
between the diff groups.
Are we protecting the PI here as Diplock said in Warnick? Is it not P co that we are
protecting?
What PI is at stake? Depends on how much buy into TM protection –PI may lie in
free and fair comp.
Ciba-Geigy Canada Ltd. v. Apotex Inc. –accepts 3 pronged test. Is there confusion?
Who needs to be confused for a misrepresentation to have taken place?
Whose confusion concerns us? Clearly considers the diff interests at stake.
Facts -P alleges passing off of similar pills in marketplace and likelihood of confusion
amongst patients. It had been accepted that pharmacists and physicians were the
customers for these products not general consumers, and they neither choose the products
by reference to appearance nor would they be confused by a similarity of appearance
among different brands. Concern here is who is the customer being protected in
trademark law?
Again concerns distinguishing guise to tell source. The law is only willing to protect the
get up as long as it connotes source, not merely the type of product –a trader has to avoid
creating confusion by using a similar get up in competition. P is trying to argue the get up
of the pills is distinctive of source and when D is manufacturing pills the same this gives
rise to a passing off action. D‟s have managed to get a licence to be able to market the
same drug –it was a designated generic drug and interchangeable. Generic manufacturers
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of the drug want to compete with the leading manufacturer. There is no misrepresentation
as to the product that is being bought, but in the concern focuses around the get up. Q
here concerns who is the consumer the customer or the pharmacist and the doctor –the
patient has not been seen to be a relevant consumer in this context. If the relevant
consumer is only the doctor then they are not likely to be confused with the get up of the
drug –they are not supposed to decide on outside appearances but other factors –interim
ruling, C of A and Fed Crt of App until Sup Crt –rationale for finding the ultimate
consumer the patient is not relevant is that the patient has no direct role in choosing the
product –they do not take the drug from the store shelf they have a prescription saying
what they are to receive –they are not making a choice and certainly not making a choice
on the get up of the pill. There is no damage and there is no passing off. P is arguing that
the crt is wrong to exclude the patient as the ultimate consumer and not take into account
their confusion.
p.95 –purposes of the passing off action –whose interest are this area of law ultimately
concerned with protecting? It is supposed to protect all affected by the product.
Crt also notices that the public may not be harmed by buying one product in preference to
another but that is not the only type of harm that is in concern here. There can be no
deception –p.98 Gonthier expresses that this is “the minimum degree of respect which
manufacturers and merchants, who we should remember depend on their customers,
should show”. Once the crt has established this central role that consumer knowledge
is playing it is easy to say whose confusion is relevant to the action. The patient is the
ultimate consumer and the confusion of the patient could lead to passing off. It
compares it to any similar context and in any other context it would be clear that any
other consumer –their confusion is relevant. It is v. rarely that the ultimate consumer buys
from the manufacturer so the intermediaries are less likely to be confused as they are
further up the chain and dealing more closely with the manufacturer. Further down the
chain the more likely the damage to be suffered is.
If the consumer has no control over the brand they get then their confusion would not
lead to damage but the court accepts that consumers, patients do get some say on what
they get –if they want the drug they are familiar with they can ask to get that brand.
If D had found that noone would take diff drug then they would still not be able to
produce the same get up of drug –then all would loose –balancing between comp andTM
protection is an issue.
Ratio -Case endorses the Trinity Passing off test in Reckittt (above). Passing off is
intended to address all persons affected by the product. The ordinary consumer is at
the height of the matter here. Their wishes need to be protected. Retailer and wholesaler
are the least likely to be confused.
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confusion –actionable types of confusion could go to the source of the product and that
could be the type or the quality of the product or it could go to a bus assoc –suggesting
untrue affiliation –extended rather than classic concerning source
confusion amongst significant no of consumers –standard is reasonable consumer and
also that we consider them in the context that choice is made –casual purchase? Take the
purchaser as you find them! This applies to all customers whether direct or indirect thru
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the chain of commerce –want to avoid confusing anyone who has an actual or
potential, immediate or remote, connection with the product.
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B. Reputation and Evidence
P relying on common law burden of passing off has a big evidentiary burden to fulfil –
have to show TM developed reputation in market from which protection can be claimed.
Protection will only extend to the geographical area where the reputation has been proved
to exist.
What the reputation must exist of and what are the limits of that evidence?
Orkin Exterminating Co. Inc. v. Pestco of Canada Ltd.
Facts -Bus does not operate in Can. D is operating in Toronto. What kind of
relationship does D have to have to the market before it can have a passing off
action?
1 –reputation from 3 pronged test. Does P have to be carrying on business in Can before
it can have this reputation? D listed itself under the name Orkin in the phone book to get
that niche in the market –way of baiting customers. Started to used the Orkin logo on
receipts also. There is a deliberate misrepresentation but did Orkin have the
goodwill it needs in the market in which Pestco was operating and what damage could
be suffered by Orkin as part of this misrepresentation? Have to establish goodwill in
place where D carrying on activity but even if don‟t have business there may have
reputation there. Orkin able to show market presence in US and Canadians travelling
there would have been affected by this. Adverts also in US magazines able in Can, even
though not intended market. Also there are many Canadians who own property in the US.
These things would suggest that even if they don‟t operate in Can there would be some
affect on the market there due to cross border activities and the scale of marketing
that Orkin used there was likely to be awareness of the Orkin name in Can –but was
this still enough? Or does it construe goodwill too narrowly? Even if a mark is known
even where bus is not being carried out it should be protected from misrepresentation –
matter of principle and policy –p.111 Orkin said that it had always intended to expand to
ON. Crts restricts its ruling to narrow grounds p.108
Ratio -If P was operating in ON then damage would be obvious but here there is a prob.
There does not have to be direct competition to commit the tort of passing off. Crt takes
more broad approach to seeing the damage not between direct competitors p112 but
control of the significance of the mark and awareness that businesses may intend to
expand but if someone in a diff market uses their name they may not be able to expand
and take advantage of the goodwill they have generated elsewhere. On the basis that
Pestco had been using the mark in bad faith then they may be prevented from stopping
Orkin using it in its original good faith meaning.
PI concern is that the public not be deliberately deceived. There is no unreasonable
restraint of trade as Pestco could choose another means to communicate their services
without impinging on Orkin‟s mark.
If there is confusion and damage is there automatically goodwill? Should you have to
have to show more goodwill? Could be dangerous if not enough goodwill shown here.
Mere fact that they chose to use the name here was seen to be enough as otherwise they
wouldn‟t have used it.
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No survey figures or witness testament in this case. If you have a very famous mark do
you not need to show anything or are there limits to it?
Ray Plastics Ltd. v. Dustbane Products Ltd.
Facts -Concerning distinguishing guise as opposed to a mark –snow trooper –black and
yellow –apparently uncommon –well advertised and had substantial sales. Canadian Tier
wanted similar product to be made for them to sell –wanting it to be black and yellow so
they looked the same –there was intentional copying. Has to show that the get up has
acquired a meaning to identify source in the public mind. It is not being protected as
an artistic work or industrial design –so it has to show source.
Ratio -There was a reputation attached to the item due to the amount of advertising that it
had had. There was also an inherent distinctiveness attached to the product. The nature of
the get up make it likely that it will have a distinctive function. It is so unrelated to the
product that it is clear that it is an indicator of source. This has to be more than a
description –it has to be inherent to the product. Yellow and black is inherently
distinctive in this market. D deliberately copied P’s product
This may be taking Orkin too far –should be wary of making that leap in logic. D‟s
motivation will be a consideration but there is still a need for the 3 pronged test.
W & H Ventures Ltd v. Manitoba Lotteries Corp.
Facts -P‟s bus was Michel‟s Café and D started Michel‟s Restaurant – P wanted
injunction over the restaurant, but it is just a persons name. P saying spent money on
building reputation –and generated good sales but little or no evidence produced on this
matter –eg advertising or accounts. What attempt has been made to develop
reputation in the market and has this been successful? There has to be more than
just the carrying on of a business. Even if the sales were seen to be substantial these
may not have gone to the goodwill attached to the name in the mind of the public.
There may have been another reason for substantial sales –location. After all they did
have a counter in the central walkway of a busy shopping mall.
Ratio -If the customers had been shown to be confused then a court maybe willing to
accept there was reputation attached to the name. There was just a lack of evidence.
Kisber & Co. v. Ray Kisber & Associates Inc.
Facts -P is Steven Kisber and D is bro, Ray Kisber and both are in liquidation business. P
wanted to prevent D using name in same area. P filed documentation of over 100 adverts
published and spent over $2m on this –in all Kisber name was prominent. How far should
this go? Crt is split on how to interpret the evidence presented to it.
Mailhot –not prepared to draw conclusions from the evidence that Ps wants.
Just to show significant expenditure on advertising is not enough –there has to be a
connection between this and the goodwill attached in the name.
This is just a matter of fact this case shows.
13
Ratio -Maj found that Kisber name is attached to liquidation sales and that D was
trying to trade on the goodwill on that name. Difficult here as name –must make clear
attempts to differentiate from that name –confusion is the key.
Walt Disney Productions v. Fantasyland Hotel Inc. -does the good will have to be in the
same market as D‟s as well as the locality of that market?
Facts -P already managed to get an injunction to stop park inside mall where hotel being
called Fantasyland. D was seen to have goodwill in connection with theme parks but
can‟t protect Fantasyland name in respect of everything.
D argues that the goodwill is only associated with the amusement parks. P argues that this
is diminished in connection to a hotel next to a mall with an amusement park which is not
connected to Disney. There is no protection from cashing in –Solo, if that is what is
occurring here. You can cash in but just not confuse that you are associated with them.
Ratio -The fatal weakness in P‟s arg is that they explicitly say this, that D is trying to cash
in on the name –can not found a tort of passing off on this.
Reputation you have to establish under first branch of passing off test has to be in
same field or overlapping field. If can‟t show reputation in that field fail the first test
and cannot have a passing off action.
Is this convincing?
Not an appropriate statement of the reputation requirement. Was it refused as not in the
hotel business –operation of a hotel is different from amusement parks. This is not a vital
requirement in the extended passing off action is it though? Perhaps in classic action it is!
Even with regard to the extended type the action still requires proof etc. As P does not
have a reputation in hotels then there is unlikely to be confusion.
Reputation can extend beyond the area that you currently trade in. If there is the
possibility of confusion and damage then the courts should recognise reputation and
damage if they can tell this goes beyond amusement parks. There has to show there is a
reputation attaching to the mark associating to the product. By using a similar mark there
is confusion –if that causes damage then that is misrepresentation.
Disney =common field of activity is relevant and may indeed even be necessary. Now
however that may not be the case –it is a relevant consideration but nothing more.
At what stage should this be considered? In reputation as in Disney or only related to
confusion or damage.
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C. The Relevance of a Common Field of Activity
McCulloch v. Lewis A. May Ltd.
Facts -P, “Uncle Mac” character from a children‟s show who had an established
reputation within the BBC and also making childrens books and charity appearances
challenges D‟s production of puffed wheat breakfast cereal under the same name playing
on the popularity of the Uncle Mac figure as established by P. But was there any
common field of activity on which to base the tort of passing off? There were certain
similarities between the two although there was no conscious copying involved.
There needs to be confusion but here what is it related to? There is nothing that will
confuse –P is not selling cereal also –what is the confusion and the damage? Before the
2nd and 3rd prong of the test can be brought up there has to be a common field of activity
between P and D.
Ratio –The key to the action here is if any confusion was caused in the minds of the
public and that did not occur here as the 2 entities were so unrelated.
It will always depend on where the market lines are drawn.
In the Commonwealth this was not generally accepted and was seen to be based on
dubious principles.
Now this would be personality rights –famous person can restrict use of their their name
in connection with a product.
Harrods Ltd. v. Harrodian School Ltd.
Facts -Harrods sold a piece of land, the previous site of their employees club, known as
“The Harrodian Club” to D who planned to use the site for a private school, naming it
“The Harrodian School”. Was there passing off by using the term “Harrodian” which
would mean that it was some way connected to Harrods?
P argue that they provide great array of goods and services so that a school run by them
may be possible and also “Harrodian” is adjectival form of Harrods so they can claim use
over it. P do provide school uniforms but that is as far as any common field of activity
may go. Even if they do decide to run a school then this is a serious departure from their
previous and current business ventures. Name Harrods may be universally recognised but
the business with which it is recognised is not providing private schools –to be known by
everyone is different to be known for everything.
Ratio -There was no intention to deceive and profit from the use of the name, it was
merely used as many knew of the location through the Harrodian name. The term
Harrodian was not in general use by the public but only employees of Harrods to describe
themselves etc. Furthermore there was no common field of activity between the two
businesses and there would be no confusion and even if there was (p.153) this would
not be of dis-benefit to Harrods.
Another concern is how famous the mark is –whether it is a household name –then the
overlapping of common field of activities may be less necessary to show confusion.
Millet –there is no likelihood of confusion and imperative in making that conclusion was
that there was no common field of activity between P and D. That is not the crux of the
case –the way the school is run does not impact on customers view of Harrods store –it
does not matter if Harrods plan to run a school or that they overlap in selling uniforms.
15
Damage does not have to be a loss of custom –but affect the reputation but even this does
not occur here. If there isn’t confusion there isn’t damage from confusion and
therefore no passing off.
Dissent –diff view of confusion on interpretation of facts presented to crt –highlights
extent to which this is a matter of fact.
Visa International Service Assn. v. Visa Motel Corp.
Facts -Concerned graphic logo of Visa and name –D‟s co used this name and used the
colours on the side of construction site offices and the like. But here there are diff
channels of trade and therefore shouldn‟t be any passing off. Damage claimed is that to
goodwill however.
Ratio -There was passing off although no common field of activity –Visa is such a big
term so people may think there is extended passing off -dealing with v. famous mark so
confusion more likely.
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3.STATUTORY TRADEMARK: REGISTRATABILITY & REGISTRATION
Protection through the common law –had to mount different action for different
infringements or in different geographical area. Therefore the protection is limited so
statutory protection was given through the trademark act and registration system,
therefore for subsequent cases you do not have to show reputation again and again as
this has already been proven once to get the registration. It is hoped that this will act
as a deterrent and it will also be cheaper and quicker to mount actions.
There is no intent requirement in the tort. Registration system allows other traders to look
at the register and compare this to their proposed marks so to stop there being accidental
infringement. Originally there was the 1868 Trademark Act, 1932 Unfair Comp Act
repealed this and then 1954 modern day Trademarks Act, which was amended in 1985.
s.7 embraces what seen in common law
Passing off action, even trough the statutory regime does require you to prove
reputation –but if registered the presumption (only) is in your favour –although not
in every case. Protection will continue even in mark not very well known and not that
widely used.
Passing off usually requires that the symbol has been used in the market before you can
claim protection but in the reg system you can file an application to register a mark b4 u
use it –a registration can be based on proposed use. Use is still the basis of the right,
therefore the registration is only valid if the mark is used and can become invalid if you
stop using it. However you do not need to show that the mark has come to show the
reputation. The registration is valid across Can in general. Once you have an
application in Can it can be an application for registration in other territories and
jurisdictions even if you do not have a reputation there. Registration also increases the
scope of protection that you can claim. Relying on this action however you have to show
that some damage has been caused to you by the use of this mark. All D had to do in the
common law was to distinguish their product and then there would be no infringement –
prominent disclaimers or dissimilarities will stop the confusion and the tort action. Under
the act there are different causes of action and harm –s.19 protects the mark for the whole
range of goods or services for which it is registered –goes beyond the common law as
does not require confusion or damage.
Confusion enters in s.20, where disclaimers will not help you escape liability.
Depreciation of good will –s.22(1)
Doctrinally passing off is not meant to prevent the image around the mark being diluted.
Under the act it is dealing with slightly broader rights –larger jurisdiction for protection,
smaller evidentiary burden to meet before the crt, option to bring in Fed crts not just one
of provinces as it unfair comp issue –hence some qs raised over constitutionality of s.7
If you can challenge the registration then the case against you is easier to overcome
Process of registration
Have to apply and satisfy Registrar that the application satisfies s.30
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-have to include statement of wares or services in which you want to use the mark in
connection with –it is not across the board in relation to everything
-you may find the same mark registered for different marks and services
-need a statement of the basis for your registration –why do you have this right, such
things as already been using it or made mark known in relation to those wares or even if
you just intend to do this or already registered in Convention country. What happens
when there are clashing titles? Qs may be asked about who has the best title and therefore
can maintain the registration
-if pictorial then must include picture
-statement to effect that you believe you do have title to register this mark.
If any objections arise at this stage s.37 provides that the applicant will be told of this in
case they can add extra info or disclaim other things etc so that registration can be
provided.
s.37(1) Registrar can just refuse claim if don’t satisfy s.30, if applicant not title to
register or if not registerable –subject to an appeal to the crt. Not generally refused, only
if obvious wrong with it. There is then a procedure for publication of the proposed
mark which can be opposed by anyone with an interest at that stage –procedure in s.38
If successful in opposing then a mini-trial in front of Trademark Board –must satisfy
that the opposition is without good basis –at that stage the issue can be appealed by either
party to the crts. If registered successfully it can still be attacked or challenged at any
point, but as long as it continues to be registrable the right can exist forever –for as long
as the circumstances persist that provide for it. s.46 every 15yrs must renew status on
the register for $300. Registration always open to attack –shouldn‟t have been registered
by that person or no longer suitable for registration.
A mark has to be distinctive to be registrable. s.12 tells us what is not registrable
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A. Names or Surnames: s.12(1)(a)
Name of a person was not a good trademark as it was not distinctive –but not
blanket rule as expressed by the term “primarily merely” in the section. But may be
registrable under s.12(2) but that will be limited geographically to the area shown to be
where the reputation is. Not the best trademark prima facie that it does not connote source
but occasionally can and does become registrable. Concern over others in market place
wanting to compete with you and under their name too –Can do this in s.20(1)(a)
Canada (Registrar of Trade Marks) v. Coles Book Stores Ltd.
Facts -Concerning whether Coles Book Stores can register the word “Coles” or whether
this is prohibited by the s.12(1)(a) of the Trade Marks Act which reads,
12. (1) Subject to Section 13, a trade mark is registrable if it is not
(a) a word that is primarily merely the name or the surname of an individual
who is living or has died within the preceding thirty years;
Ratio –Test from Standard Oil v. The Registrar of Trade Marks is whether a person in
Canada of ordinary intelligence and education in English or French would be just as
likely, of not more likely, to think of the word as a brand or mark of some business
as to think of it as a family name –in that case it will be afforded protection as it is not
primarily merely a surname. In this case Coles is thought of generally as a surname and
therefore not given protection.
Inquiring into the ordinary chief character of the word to the Canadian public
“Is the primary (chief) (principal) (first in importance) meaning of the word merely (only)
(nothing more than) a surname?”
It would be different if there is a word that is commonly used in everyday language rather
than a surname then there would be a different outcome.
Galanos v. Registrar of Trade Marks
Facts –Concerning the registration of the name “Galanos” in connection with pefume
products. The Registrar would not even advertise the claim. It was found to be a surname
for the plaintiff but only for a few other people –the main problem was because Mr.
Galanos was trying to get the registration –it was argued that this should not mater as the
name is so rare and if Bob Smith could get the registration then why not Mr. G? It was
also argued that Galanos was also a word in Spanish, which detracted from it being a
surname.
Ratio –As it was not a well known surname and it did not affect either the French or
English speaking Canadian market –it passed the aforementioned test in Standard Oil and
was therefore allowed registration.
1. Is it a surname?
2. Merely a surname?
3. Primarily a surname?
If it is equally known as a surname and a word then it will be ok for registration
As not generally known as surname and not another meaning then it would be thought
that it would be a made up name for trademark purposes.
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Gerhard Horn Investments Ltd. v. Registrar of Trade Marks
Facts -Concerning the proposed registration of the trademark “Marco Pecci”, refused this
even though fictitious as cannot differentiate as fictitious and real names –customers
would think of it as a real name.
Ratio -This was allowed however as the mere fact that this could be a name did not
matter, there had to actually be people living or had lived in the past 30yrs under
this name.
Proctor & Gamble Inc et al v. Nabisco Brands Ltd.
Facts –There was a challenge to the registration of the term “Mr. Christie‟s Crisp „n
Chewy” in relation to the selling of cookies. It was argued that this was a common
surname and therefore it could not be afforded protection. There is also concern over
registering descriptive terms in relation to biscuits as this would close the market off to
others.
Ratio –Christie is a common surname in Canada and would be perceived by the average
Canadian as primarily merely the name or surname of an individual –however the whole
trademark, “Mr. Christie Crisp n‟ Chewy” is not a name therefore it fails on those
grounds. The same goes for the descriptive challenge as the words crisp and chewy are
purely descriptive but combined with the name are not. Even when you put it together it
should not be given protection as it does not distinguish, another trader called Christie
may want to make something crisp and chewy and competition must be kept intact.
Registration here is allowed as an exception as there had been registration for that
surname prior. As Christie had such hold in the market then adding this other element
would be ok here as it was distinctive of the product.
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B. Clearly Descriptive or Misdescriptive; s.12(1)(b)
s.12(b) –cannot register a trademark which is clearly descriptive (with the use of the
word clearly there has to be no analysis of this in connection with the product) or is
deceptively misdescriptive of the product.
Why not protect a purely descriptive mark? To protect competition. –p.217
Not registering misdesciptive marks is to protect the consumer and also overlaps with
s.7(d)
You can however use suggestive marks which gets round this descriptive exception –
they suggest quality without describing the product itself.
There seems to be a spectrum of what is descriptive and what is suggestive in relation to
products –there is a line of what is suitable and what is not.
There is an overriding arch of distinctiveness as this connotes a trademark.
If not in English or French e.g. Milano, how does that fit with s.12(b)?
Would Edmonton Bananas be deceptively misdescriptive as everyone knows you don‟t
grow bananas there. Trade puffery can get you round this –deli-snacks but not
delicious –ok as trade puffery –building up product without being misdescriptive.
There is a problem between trying to describe your product as that is clearly descriptive
and not allowed, but cannot either be deceptively misdescriptive –you have to get away
from being descriptive at all.
Deputy A-G of Canada v. Biggs Laboratories (Canada) Ltd.
Facts -Tried to register as a trademark "shammi", sounds just like "chamois"
Ratio -There could not be registration of this mark as it was seen as being mis-
descriptive of the product.
Just to change the spelling does not prevent something being descriptive of the
product.
Even if it had contained chamois there woul still have been a prob as there cannot be a
trademark that is descriptive.
Is it a description of the product? Depicted, written or sounded –in Eng or Fr? Is it clearly
descriptive or is it suggestive? Is it true of the product?
Atlantic Promotions Inc. v. Registrar of Trademarks
Facts –Concerned registration for shower gel under the name “Milan” from the forename
of the inventor in a specific script. Not trying to have any right over the word Milan,
disclaimed it, s.35, but in the way that it was used in relation to the script. The problem is
if it is descriptive –what does it connote? Argue that when written in script form it is
thought of as a name and not the primary meaning of the geographical location. Ppl are
already used to seeing geographical locations as brand names so it is ok and are ppl even
concerned with whether the product has come from Milan or not?
Ratio –Registration was refused as it was seen to falsely connote origin as Milan is
such a prominent place that the general public in Canada would connect this place with
the shower gel as the place of origin –but would this really occur?
Pepsi-Cola Co. of Canada Ltd. v. Coca-Cola Co. of Canada Ltd.
Facts -Coke challenged the word “cola” in the trade mark of Pepsi. Pepsi argue that
Coca-Cola should never have been registered in the first place s.18(1)(a) –TM not
21
registrable at the date of registration –it is descriptive and not of any of the elements that
the drink includes.
Ratio -The 2 word are descriptive but written in a particular script do make their
own trademark. “Mr. Christie Crisp n‟ Chewy” –putting everything together so not
merely descriptive and not merely a name. It seems that something cannot be distinctive
and something cannot be descriptive –but something can be both –it is just harder to
show distinctiveness if it is descriptive. Graphic element may allow registrablity although
2 elements which are not registerable wll not suddenly be registrable. Diff to IED in CR –
DD is just on right side of pub pri dichotomy
Home Juice Co. et al v. Orange Maison Lttee
Facts -D selling orange juice under the registered trademark “Orange Maison” tried to
prevent registration of the term “Home Juice”. P challenged on the ground that it is
clearly descriptive in the French language of the character or quality of the wares,
translated as meaning “of good quality” or “homemade”
However it doesn’t appear in French-Canadian dictionary as that –crt said they
were interested in French lang more generally –not just how interpreted there –don‟t
get involved with issue of dialect etc. but how do you fit this with the idea of the
ordinary Canadian schooled in French or English. D argued that it is related to the
distinctive character of product only –omission of one or more words that would be
needed to complete the sense.
Trial crt found that it fell just on right side of registrability but Sup Crt disagrees –have to
assess description in context of the wares –is it clearly descriptive when used in
association with the wares with which it is described –elliptical description. Is that
enough to get you round s.12(1)(b) exception? Used sometimes to get the consumer to
engage in the product and remember it.
Ratio -Restricted registered trade mark to Quebec. Crt wants to protect distinctiveness but
on the other hand wants to ensure descriptive nature of the word is allowed to exist.
John Labbatt Ltd. v. Molson Cos. Ltd.
Facts -Molson attempted to register “golden” for beer providing evidence that the word
had acquired a distinctiveness which was associated with the product.
Ratio -The word was not registrable under s.12(1)(b) as it was found to be
descriptive of the product, namely the colour although there was survey evidence that
consumers did not associate the colour golden with the beer. At the time of registration
Molson could have relied on s.12(2) to get round the registration problems in s.12(1),
although they didn’t and cannot rely on s.12(2) retrospectively.
Inherent distinctiveness of the mark will be consideration. Others can still describe their
product as golden as not distinguishing source s.20(2)
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.
S. C. Johnson & Son Ltd. et al v. Marketing International Ltd.
Facts -Johnson registered “OFF!” and challenged the use of “BUGZOFF”. D
counterclaimed that “OFF!” was not a valid trademark because it was descriptive.
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Ratio - "OFF!" is descriptive -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.
Word was elliptical –must be considered in relation to the product that the name is being
related to.
s.12(1)(c) generic words are not registrable in any lang –e.g. beer –s.12(2) will never save
trademarks under this area
s.12(1)(b) descriptive e.g. golden
private –s.12(2) saves these marks where they have acquired meaning –it can carry
golden across that line and you can demand a monopoly in relation to that term.
Inherently distinctive –Corona –fanciful, arbitrary
Suggestive is between these two categories in the pri realm –they don‟t need a secondary
meaning to cross that line.
Spectrum of distinctiveness →
PUBLIC PRIVATE
(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
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Unregistrable Registrable
Generic Descriptive Descriptive Suggestive
Fanciful/
& Acquired
Arbitrary
Meaning
Abercrombie & Fitch Co. v. Hunting World Inc.
Facts -P registered term "Safari" for garments including hats and boots -D had also used
this in relation to their own sporting apparel, arguing that it should not be restricted to use
by one group as it is a generic term.
Classificiation of marks –p.229, fanciful or arbitrary –don‟t have to be made up, just not
associated with that context e.g. Tiger for beer. p.228 –suggestive –also protected without
having to show any secondary meaning –don‟t have to go through s.12(2) to get
registration, even though it may give consumers a sense of your product. Where
suggestion ends and description begins that it where there has to be acquired meaning as
in s.12 (2)
Law is striking a balance with descriptive marks, they are not prima facie
registrable but with acquired meaning they are –they strike a balance between
hardship to competitors and to those who have invested money in a word to endow it with
goodwill –p.227 Want to protect the work that has gone into creating the mark –why do
we want to do that? One of policy questions that this case raises.
Generic –p.226 –impossible for a generic word ever to be distinctive, law says that
doesn’t matter what you done with this word and what it means to the public, it can
never prima facie be registrable.
Lines of demarcation are not always bright, not only because the lines are fuzzy lines –at
what point does a description become a name? But also things can move from one
category to another based on the way it is used or perceived –certain terms will exist in
different categories dependent on diff products they are used with.
Generic-ness of the word “safari” goes beyond just a trip –safari apparel has a
generic meaning to the public and cannot be a registered trademark in association
with those products. With boots and shoes however the term has not yet become
generic, therefore the use of the term safari is a suggestive mark –conveying notions
without describing or naming the product themselves. When the word was being used in
its generic sense there was no right and there was no infringement. D also using the term
in relation to boots –are they allowed to use safari in relation to boots? Depends on the
way D is using the word. D can use a word that is suggestive of the wares it is selling.
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s.12(1)(a) and (b) –bar is not absolute or rational –descriptiveness and
distinctiveness are not inherent qualities.
s.12(2) can provide protection -secondary meaning occurs when a significant portion
of the consuming public create cognitive networks connecting one source with one
product.
Want to talk of advertising and how associated this with the mark –was it always on the
product side? Letter head? Etc. Have to show who your customers are and where your
sales occurred –want to be able to do this across Canada to show got secondary meaning
throughout the area.
s.32(2) tells us the limits which can be imposed by the registrar on s.12(2) At common
law anything could be protected if you showed that registration –it applied to anything
with which you could associate reputation. How do you find that line between generic
and descriptive if it is that important? Where does the line exist? Shredded wheat is the
name of the product yet it can acquire secondary meaning –is that appropriate under the
law as it stands at the mo? Heavy owness in order to show secondary meaning –not just
relevant of success in the marketplace but how everyone sees it –as Jacoby says adding
that other cognitive node into our minds.
Jacoby on Secondary Meaning →
Characteristic of Could be characteristic of
only one item of any (or various) item(s)
Secondary Meaning No secondary meaning
[Distinctiveness] Generic-ness
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C. Acquired or Secondary Meaning : ss.12(2), 32
How difficult it should be to get the necessary protection?
Canadian Shredded Wheat Co. v. Kellogg Co.
Reminder of how fuzzy the line is in this case.
Facts -P started selling "Shredded Wheat" at the end of the nineteenth century. Needed
patent to protect the creation of this product –whilst this existed no-one else could make
this product, giving them a monopoly, but then when this expired the door was open for
other competitiors. Trade-mark registrations for shredded wheat were eventually sought
or obtained in Canada, the United States, and the United Kingdom.
Later Kellogg became a competitor, with a product named “Kellogg‟s Shredded Whole
Wheat Biscuit” and was immediately sued for infringement. There was no passing off
action as they were stating that this came distinctly from Kelloggs –there was no
confusion as to source as Kellogg‟s was its own registered mark, but Shredded Wheat
was a also a registered mark, but of another, so there was still the possibility of an action
under the statute. Was the registration allowed to be valid? Do the words shredded wheat
work as a trademark to show source or do they simply describe the product?
Shredded wheat was used only in association with P‟s product by virtue of their
monopoly in the market place –there is a difference between when a mark applies to a
certain manufacturer as that is the only manufacturer in the market and one which
distinguishes that manufacturer from another -similar as to Yorkshire Relish as in
Birmingham Vinegar.
No reason that just because you have a patent that you can‟t have a trademark –no
inherent bar but if the only trademark is a word that is descriptive of the patented article it
appears impossible for this ever to be distinguishing of source –quote on p.236 If they
had tried to register the trademark as soon as the patent expired would not have been
permitted as they would have been trying to prolong the patent monopoly. Helps the
plaintiff that they have been using this for 24yrs after the expiry of the patent –during that
time have the words come to connote source? Has it acquired distinctiveness as a
secondary meaning? But the onus to establish this is a heavy one. How have the words
been used by P in connection to the product? Was it being used as a trademark or just
as a description of the goods –that is the primary question which faces the crt. Other
things were distinguishing source –the factory shown next to Niagara Falls.
N.B –s.12(2) cannot save a mark from generic-ness as in s.12(1)(c)
Doesn‟t help to say that you have coined the word –not creating authorship –the most
successful brands as those that become generic e.g Kleenex -when you become generic
however protection will be struck from the register.
Carling Breweries Ltd. v. Molson Companies Ltd. et al.
It is not easy to come under s.12(2) protection and have to show this at time at the action
is filed for registration.
Facts - Carling opposed the registration of "Canadian" by Molson
Ratio-"Canadian" failed to be registered for beer because although Molson could show
some distinctiveness this was not satisfactory to discharge the "very heavy" onus of
proof regarding this. “Canadian” in relation to beer should mean any beer from Canada
-but does it have acquired meaning in relation to Molson products?
26
Now they do have a registration in the mark but this does not extend to everything, only
beer, recently could not get it in relation to a domain name.
Recently there has been a marketing drive in relation to the beer to get this
distinctiveness.
Want to be prima facie registrable first off through s.12(1) and then only if
necessary do you want to have to move to s.12(2) to provide protection.
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D. Confusing with a Registered Mark: s.12(1)(d)
Will not be registrable if “confusing with a registered trade-mark” as under
s.12(1)(d), if it was already registered that registration should be declared invalid. Main
challenge is to work out what is confusing which will determine registerability and later
infringement. Marks registability depends on lack of confusion with already registered
marks –important mechanism of register is to show what is available to register and what
is not. Can offer to buy up mark or have those that are potentially confusing expunged
from the register then you will avoid s.12(1)(d) or alternatively think of another name as
it will be a uphill battle to get anything else.
s.6 –when a mark or name is confusing
Exercise of determining confusing marks is if the two were used alongside each other
what would be deduced? Activity does not have to be in the same field, e.g. Sun-life was
not allowed for fruit juice as used in relation to insurance.
s.6(5) gives list of what should be considered -
(a) inherent distinctiveness of TM –brings in spectrum, if arbitrary may be easier to see
confusion than if descriptive with acquired meaning
(b) length of time TM used
(c) nature of the wares, services or business –here diff field of activity may be relevant
in limiting confusion
(d) nature of the trade
(e) degree of resemblance between the TM in appearance, sound or the ideas
If you had sunlight being used for washing powder then moonshine could be confusing –
may suggest association although opposites.
Benson & Hedges (Canada) Ltd. v. St. Regis Tobacco Corp.
Facts - Application to register term "golden circlet" in relation to cigarettes. Benson &
Hedges oppose under s.38 as argues confusing with their “gold band” TM. Was this
likely to lead to the inference that the 2 products were from the same source?
Registrar allowed registration as marks different in idea etc. Trial judge less happy with
that and tempted to rule differently –p.251 but thought that he could not interfere in the
Registrar‟s decision. Technical question over what weight Rgistrar‟s decision should be
given.
Ratio- Registrars decision should not be put aside lightly but may be –it is not a
judicial decision, is only a determination of fact and therefore the lower crts can find
against it, here they agree with trial judge that it was confusing and it was struck from
register.
Would consumers be likely to infer that the two products are the same? Generally people
smoke one band and keep to that.
Molson Companies Ltd. v. John Labbatt Ltd.
Facts- Molson was seeking to stop Labatt from registering “Winchester Gold” in relation
to their product. Said that this was confusing with their own TM. Found not to be
confusing with the Molson mark and is registrable. There is a lot of similarity but in
parts of mark that are descriptive and hence not distinctive –dissimilarities will be
more important than the similarities –if it is a weak mark it gets thin protection.
28
If going to adopt common mark as a TM you are already running the risk of some
confusion as will not be allowed monopoly in that TM.
Here the parts of the mark that connote source are Winchester and Molson –the difference
between the mark and the registered mark is of arresting significance so that these will
not confuse the consumer. Those differences are enough to avoid confusion.
Weetabix of Canada Ltd. v. Kellogg Canada Inc.
Facts –Application for registration of term "Fruit Dots" in relation to breakfast cereal.
Weetabix claims confusion with "Froot Loops". But there are Fruit everything already on
the market. Froot is phonetically at least the same as Fruit which is descriptive, although
spelt differently –it is a weak aspect of the opponents mark. Difference between loops
and dots in idea and sound –dots is not confusing. Although the wears are similar there
are differences in spelling, sound, idea and meaning. What sways them is that there are
already so many TM‟s already starting with fruit and ending with something that alludes
to the shape of the cereal or the product and they co-exist peacefully as seen in state of
the register evidence which is very convincing. Evidence from the US where both these
marks co-exist show that there is nothing to say that confusion has occurred.
Lack of inherent distinctiveness shows that confusion is not likely when all the facts are
put together
Ratio - “Froot Loops” mark is famous but not inherently distinctive.
?
CONFUSING NOT CONFUSING
GOLD BAND MOLSON GOLDEN
GOLDEN CIRCLET WINCHESTER GOLD
(B&H v St Regis) (Molson v Labatt)
FRUIT LOOPS
FRUIT DOTS
(Weetabix v Kellogg)
29
Should the famousness of a mark have a bearing on the protection we afford it? This
will tie in with the idea of confusion.
Considerations –is the mark inherently strong or weak and what distinctiveness has it
acquired in the marketplace? What is the extent of the use of the mark? Weak marks can
be famous –e.g. Coca-Cola –two descriptive words, McDonalds –it is a name
Strong marks can also be famous –Kodak –you already have a wide ambit of protection
so you don‟t have to rely on your fame to widen the scope of your protection. If you are
a weak mark however your fame may widen the scope of protection you have. –
p.262
Why and how does the fame of a mark become relevant when determining
confusion?
s.6(5)(a) refers to the inherent distinctiveness of the mark and the extent to which it has
become known, obviously easier to show for a famous mark and also (b) may be relevant,
the length of time the mark has been on the register
Policy rationale that would make this famousness relevant when determining consumer
confusion –p.305-6 –how powerful are the links with these items. If a mark is famous
then you are likely to confuse it with a similar mark more easily as it is already so
prevalent in your mind
We have an obligation to protect famous marks –meritorious producer of the brand –
might be more at risk of infringement as everyone secretly wants that mark. p.298 –
perhaps goes too far, confusing TM and CR but brings in copycat idea –can cash in
however. Should make sure not taking things beyond the natural limits.
McDonald‟s Corp. v. Coffee Hut Stores Ltd.
Facts – Coffee Hut tries to register term “McBeans” in relation to coffee beans and
blends but McDonald‟s is trying to challenge that using the justification that they already
have the family of marks of Mc + etc, and this may lead to confusion. They also sell a
substantial amount of coffee, although this is a small proportion of their overall sales.
Ratio -Registrar found that given that there is some degree of similarity between the
marks and that McDonald‟s mark is extremely well known and that there are sales of
coffee in relation to that mark he refuses registration of “McBeans” term.
Fed Crt disagrees with his interpretation of the facts. Must not look at these issues in a
vacuum, must look how they are used in business –must look at first impression of an
average casual consumer with an imperfect recollection, as can be expected in these
purchases. All the surrounding circumstances which may have an effect on the issues
must be considered. McBeans is a store whereas McDonald‟s is a fast food restaurant,
catering to children. The gourmet coffee shop is not appealing to this group –there is a
marked difference in the clientele who will be in the store –these are two different
businesses and confusion is not likely.
Registrar had looked at the nature of the wares and the fame of the mark whereas crt had
looked at the types of the bus Registrar erred in finding that McDonalds was a famous
mark in relation to coffee. There was no evidence of confusion –you don‟t have to show
any but if you don‟t then the court can draw a conclusion from that. –In certain areas both
had existed peacefully.
McDonald‟s had hoped that arguing with the idea of a family of marks would give them
a wider scope of protection –p.272 Known in the Act as associated trademarks –
30
McDonalds can register these even though they may be confusing as they are from the
same source.
Have to be able to show that there is a family of marks but more than that have to
show that confusion is likely to result. Family of protection doesn‟t increase the right
but it might show confusion easier. On appeal they said that this family argument hadn‟t
be given enough credence. However this doesn’t give you a monopoly mark -if you
choose a common prefix and register it many times then you don‟t just get a monopoly in
it. In fast food industry the family of marks idea may be relevant –McBagels was
not allowed –likelihood of confusion has to be shown in relation to all the circumstances.
Harrods –to be known by everyone is not to be known for everything. There is no
right to protect potential areas of diversification. Concern with monopolization with
something that is common. Got to keep those limits however famous the mark is –got to
look to confusion first.
s.12(1)(d) –registration does not give sweeping protection, as seen in McDonalds unless
there is a real issue of confusion –tests the scope of this in relation to famous marks and
whether that influences the scope of protection they should have –should this be kmore?
Miss. Universe Inc. v. Bohna
Facts – Opposition by Miss Universe to the registration in Canada of the trademark “Miss
Nude Universe”. Also objection to the use of the term “nude” in relation to their mark.
Ratio -Held for Miss Universe -C of A says there was likely confusion, disagreeing with
trial judge who saw the difference in ambiance of the two events would not be confusing.
The stronger the mark, the greater ambit of protection, thus more difficult onus to
prove. Even where there is hardly any likelihood of confusion it is still difficult to
register an already famous and established term.
When the mark that is registered is a strong mark factors in (c) and (d) will be less
determinative –in McDonalds these were used to show that confusion was unlikely as a
matter of fact.
Crt thought that everyone would recognize Miss Universe mark and Miss Nude Universe
was trying to jump on the band wagon of this mark. The inclusion of the words would
help them market their activities in the eyes of consumers. Is it enough to say that ppl
would recognize the association or does there have to be more –how far can we
stretch this? If associate it doesn’t necessarily mean that there will be a business
connection thought of. Potentially could there be confusion between the two marks but
should look at how actually conducting their businesses and whether that would show
confusion.
Here is it just more of a moral judgment –vastly different to McDonalds.
p.283 –considering manner used is taking test too far.
Pink Panther Beauty Corp. v. United Artists Corp
Facts -Tried to register words „Pink Panther‟ to sell hair supplies, beauty products and
salon services
Registrar originally rejected the objection as there was no likelihood of confusion as the
wares were so disparate.
31
Trademark strong mark therefore difference in wares was less significant than
normally would be –that is the decision on appeal here.
Ratio -Linden begins with balance TM law trying to show then policy q on 289 –right to
exclusive use and right to compete and earn a living etc. Puts factors in s.6(5) in context –
p.290-3
Fame of mark should be weighed into the equation as a relevant circumstance
p.294 –fame is relevant but does not prevent others from using it in relation to other
items, only if there is going to be confusion related to this. Increased protection is
only allowed in as much as there is increased likelihood of confusion. Fame of a mark
is relevant but this will not make confusion any more easy to show –it is not a trump card.
If there was confusion then there may be a remedy.
Trademarks are registered in relation to marketing or wares or services not in
abstract -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
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,
therefore 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
Same mark for different products OK as long as confusion as to source is unlikely.
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 (s. 6(2))
Lexus Foods Inc. v. Toyota Motor Corp.
Facts - "Lexus" foods applies to register name for canned foods. Registrar and trial judge
both agree that it would be confusing. Saw differences in relation to Pink Panther case as
Lexus was a coined word and had connotations of quality, that is why it was chosen by
the applicant. Also Lexus was an up and coming mark and deserved protection whilst it
was trying to build its reputation. This was seen to be overly protective by C of A. Crt
also has no obligation to nurture an up and coming mark. Resisting idea of meritorious
producer –even if deliberately trying to draw on those connotations doesn‟t matter.
Ratio -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.
32
E. Obscene or Immoral: ss.12(1)(e), 9(j)
Should we even rule on this? Is it not for a business to decide what will help market their
product and regulate accordingly?
Prohibition is not just in the scope of registration –s.9, “adopt”, “or otherwise” and
resemblance is much more broad than that –cannot use it –in US just concerned with
registrability s.2(a) Lanham Act –are we in Can legislating morality? No-one has truly
tested how far this can go –who is considered an interested person who may find it
offensive etc? s.53.2 -can any member of the public bring this action? Huge scope in
today‟s society but is this regulation not a creature of the times and vary accordingly?
Who is to say what is obscene? May make US statute in relation to this unconstitutional.
Miss Universe Inc.v. Bohna
Facts -Concerned term “Miss Nude Universe” for beauty pageants and associated
merchandise
Ratio -This was unobjectionable to the court however distasteful nude (or other) beauty
contests may be to many, the mark itself was not scandalous to the public at large.
Court not engaged in assessing the activity itself. Must asses in relation to wares
with which the mark is associated.
In re Over Our Heads, Inc.
Facts - Opposition to registering "Moonies" for dolls that drop their pants because the
two oo's looked like a bum. Original registration refused as lacking in taste and was also
seen to be disparaging (or in contempt or in disrepute, according to US provision on this
matter) The Unification Church founded by the Reverend Sun Myung Moon.
Ratio –This was not seen to be scandalous. The court did note that the guidelines for
determining this are “somewhat vague” and it is “a highly subjective” decision and
as such decided to determine it in applicant‟s favour.
In US they could still use the mark and sell the dolls even if it went against them, in Can
they could not do this –should we interfere in bus relations?
Harjo v. Pro-Football, Inc.
Facts -Natives challenged the "Redskins" mark as degrading, racist and scandalous.
Was used to be stereotypical –argued used to show ideas of tribe and dedication. Case
decided that mark was disparaging to substantial composite of Native Americans. Asked
what was the meaning of the mark in connection to the services that it was used. Did refer
to Native Americans and in terms of whether disparaging not asking whether there is
a substantial number of population find it disparaging but how the targeted group
respond to the mark. Thus it was found that it was disparaging –it was a pejorative term,
and should be cancelled.
Ratio -US Act goes beyond just scandalous and therefore the action was found to go in
favour of the Natives, but could still bring passing off actions against those who may later
infringe this right. Sept 03 overruled on technical basis –Dist Crt of Columbia found that
99 ruling did not have sufficien evidence on which to base its conclusion. 2003 decision
only focuses on evidence and that team existed since 63 and only objected in 91,
shouldn‟t be allowed to just scrap the business that they have built up. The more recent
ruling didn‟t however affect the idea of Native Indian term used in relation to TM‟s.
33
How politically correct does a TM have to be? In Can it is a more serious matter as could
lead to freedom of expression matters.
34
F. Connection to an Individual
(i) Trademark Act, ss12(1)(e), 9(k)(l)
Protecting right or interest that an individual may have in their personality. Features that
the public might use to identify an individual are relevant to these provisions. The right
will not only exist during life but also for 30yrs after their death also. If the relevant
individual did consent to the use in relation with a business then this does not apply –
where endorsement contracts arise, these prohibitions are designed to protect those who
may be affected by the use of that mark. Concerned with person and interests and not
ability of mark to work as a trademark. Where using the name as a trademark the consent
of that person is relevant but there may still be a problem of using a name as in s.12(1)(a)
–secondary meaning protects us from this if it now works as an indicator of source and
can be protected accordingly.
Carson v. Reynolds
Facts - Application for “Here‟s Johnny” for a trademark in association with portable
toilets.
Ratio - Not registrable as a trademark without Carson‟s consent under s. 9(2) as phrase so
connected with Johnny Carson and his Tonight Show.
s. 9(1) is an absolute prohibition -don’t have to prove confusion; don’t have to prove
damage – only connection with any living individual for subsection (k)
Ruling is dependent on the fact that the phrases suggests in Canada connection with
Carson. Also dependent on fact that person was famous and as such his persona was very
valuable.
Sections of act are only relevant for those who have already established their fame in
the market.
Fawcett v. Linda Lingerie Inc.
Facts - Opposition to the trademark „FARA‟ for ladies wear by Farah Fawcett.
Other bases for opposition was that they were not entitled to register –she was as she had
made the mark Farrah known in relation to other things she has endorsed. Also said it is
not distinctive and will therefore be connected to her and not the owner of the trademark.
She had to establish that there was a reputation (vital part of case) with her being thought
of as the source of the product.
Ratio -Opposition fails as don’t manage to show necessary fame or reputation in Can
–maybe it would have been possible to come up with more evidence.
Wording in s.9 states any individual therefore shouldn’t matter if famous but this
has been added in. If Canadians are not aware of a person or their existence then the
mark does not falsely suggest a connection with that person –that is where the fame
aspect comes in and is relevant.
If emphasis on public perception then why not consider how people think of this in
connection with different wares etc?
Jean Cacharel SA v. Reitman‟s (Canada) Ltd.
Facts - French company objecting the registration by the Canadian company of the
trademark “Cashalaine” for use in association with clothing.
35
Ratio - Mark OK. Not significant that Jean Cacharel is not the applicant‟s real name –
only have to prove that a significant number of people in Canada associate the name
Cacharel with a particular living individual.
They have reputation in Europe but not in Canada, although they would like to build this,
but the crt will not protect this. If the mark or name had not been used in a way that
would generate public recognition in Canada then s.9 was not relevant. Even if the
Cacharel trademark had become known as a trademark in Can for the purposes of s.9 still
have to show connection with living individual. Proof of the reputation has to be the
reputation people associate with you as a living individual. There was a reluctance to
allow s.9 to guard or protect public personalities or entrepreneurs who may want to use
their name to enter the Can market –did not want s.9 to get easy protection –only for the
famous and can show that that connection would be drawn
Baron Phillipe de Rothchild SA v. Casa de Habana Inc.
Facts – Rothchild family name has positive connotations of wealth luxury etc from
making wine. Cigar merchant put sign on his shop saying “Rothchild at Yorkdale” to
benefit from those positive connotations.
Ratio – Precisely what s.9(1)(k) is to protect against –also there has been a
misappropriation of personality.
Tort –for someone who is famous then the wrongful use for commercial gain of that
persons likeness, voice etc is an actionable tort. People who‟s personalities have personal
value have right to protect that. The limit has to be that the use has to suggest that
endorsement has been agreed –there is no reason to think it extends beyond that –from
Gould. Should it extend after death of that person however? There are also problems
concerning this and the right of freedom of expression.
(ii) The Common Law Right of Personality
Gould Estate v. Stoddard Publishing Co.
Facts – Glenn Gould was interviewed and photographed for an article and after his death
these photos were used in a biography written about him. His estate complained as this
was seen as falsely appropriating his personality without his permission.
Ratio -A celebrity may not complain of the use of his image in the news media or
biographies.
36
G. Functionality: ss13, 32
-a mark that is primarily functional in nature is not protected by TM.
If something that might otherwise be a trademark is performing a function in relation to
the wares then it is outside the scope of what TM law is going to protect.
Ruled by common law but also relevant in the act –s.13.
If it performs a utilitarian function is it capable of denoting source? Need to have equal
playing field where people can compete.
Function of packaging of cigarettes was not afforded trademark protection. Likewise
sealing band on pills to hold two halves together was not given protection. Tools that had
wooden handles with darker colour than normal due to process gone through in
production could also not get protection–hardening process improved the durability of the
handles.
Stripe running down a hose –the stripe could be protected as the stripe did not perform a
function –compare the stripe on the hose and the pill to show something that is functional
and something that is allowed to be protected by TM.
Most concerned with the fact that patents protect things that have functions but those
things are not protected by TM law. Those things require totally different protection.
While in patent law it has to be novel etc in TM law it just has to connote source and
protection is for while ever it connotes source, not limited to certain time –seen in
Shredded Wheat case. Trying to ensure that ppl in the market can compete.
Prob for TM is in relation to distinguishing guises due to the nature of the get up. Rule
against functionality says that there has to be division between product selling and wares
selling and that is most threatened where protecting the get up of the wares.
Distinguishing guises can be protected but on what terms? s.2 –shaping of wares can
be TM –coca cola bottle. Should these things be protected at all? It must be carefully
tailored and strike the appropriate balance to enhance competition and not hamper
the trade. Term distinguishing guise as a necessary guise means that it has to be
distinctive –when it ceases to be distinctive it ceases to be a distinguishing guise and
therefore a trademark.
Distinguishing guises are only protected and registrable if distinctive –they then
become equivalent to prima facie non-registrable marks, could be equated with surnames
etc. and should not be registrable unless show necessary significance. s.13(1)(a) –you
cannot get a registration of a distinguishing guise on an intent to use, can on most other
marks however. AND (b) only if not going to prohibit the development of an art or
industry. If have distinguishing guise must not limit comp also. s.13 does have the
advantage over the common law rules as setting out the policy that limits this. Greatest
concern is to prevent monopolisation of certain features in market place. Even if do
register s.13(2) even if there is a valid registration it still cannot prevent ppl using
utilitarian features embodied in the design –extra safety valve of what steps through –
also if on wrong side of law don‟t have to challenge registration, can just creep through.
s.13(3) can expunge the reg of a distinguishing guise as restricting development of art or
industry. But under 32 can be registrable by secondary meaning –have to furnish registrar
with distinctiveness.
37
Protection always limited to make sure not going too far and not prohibiting comp.
Pizza Pizza Ltd. v. Registrar of Trademarks
Facts -Concerning phone number of Pizza Pizza. Operates as distinctive feature of
business but functional number -doesn‟t show source. Other concern was that phone co
might change no and other co may want to assign number in diff area. Even though phone
no does this preclude the registration of the number on basis of jurisprudence?
Ratio -Highly indicative of Pizza Pizza and services –does operate as a TM even
though does operate as functional element and go to the heart of the wares
themselves. Distinction drawn –more nuanced than just saying if functional then no
protection. To find this unregistrable is to misunderstand the idea of functionality. If the
marks had been registered would have been something similar to patent protection in
other cases –not an issue here. To provide TM would not hold back the pizza
delivery industry.
Mennan Canada Inc. v. Gillette Canada Inc.
Facts – Concerning whether deodorant container shape is registrable as a distinguishing
guise. Opposed and then appealed to the Fed crt –was the Registrar correct in not allowing
registration? Gillette is trying to argue should not be registrable as not distinctive but all
distinguishing guises were functional in nature. They have a major concern as if the
registration is allowed then it will severely restrict competition for them and gives TM
protection to something that would probably not get patent protection. The concern
therefore shifts from whether this distinguishing guise depicted Mennan as the
source, to whether they were protecting a functional design that would hamper the
development of the industry.
Ratio -Functionality undermines distinctiveness- weighing functional elements and non-
functional elements -
-many elements were functional: knob on bottom to push up contents. To protect these
would be to provide a patent in the form of a TM and would hamper development
-flattened edges of oval shape found to be only non-functional element –is that there due
to a functional purpose? This element of the design did not form a functional purpose the
Registrar found.
On that basis the registrar found that most of the features that made up that design
were functional but the guise was not exclusively functional. Functionality concerns
bleed into distinctiveness and whether the distinguishing guise is one that could be
registered.
It is capable for distinguishing guises to make it over the line and be distinctive but it is
still a weak mark. It is weak as it is likely to exist in the marketplace with many
manufacturers and is not likely to distinguish between them.
Although the guise overall was not functional, the presence of so many functional
elements makes it an inherently weak mark and was thus not registrable.
Remington Rand Corp v. Phillips Electronics
Facts - Concerning whether a triple-headed shaver is a distinguishing guise or not and
can thus be expunged. If it is valid then it prevents others from entering into this market.
Ratio -Crt reviews the two functionality rules:
38
Broad rule -if what is sought to be registered as a TM has functional use of characteristic,
it cannot be the subject of a TM;
But crt adopts narrow rule – if full of elements which are primarily designed to
perform a function it is not the subject matter of a TM;
If functionality is merely peripheral to the wares it is not a bar to registration. -Pizza
Pizza some degree of functionality is ok.
Functionality is a rule to preclude registration despite distinctiveness. The existence
of a secondary meaning or acquired distinctiveness does not make any difference
here.
Should they have raised these arguments under s.13? Same conclusion under common
law or this –s.13 just articulates the policy concerns that motivated the common law. But
is there concern that a distinguishing guise is always going to be functional? Do register
distinguishing guises however but with caution and limits. “A mark which goes beyond
distinguishing the wares of its owner to the functional structure of the wares themselves is
transgressing the legitimate bounds of a trademark” –p.383
39
I. Entitlement to Register: Use and Proposed Use
A registration may be invalid if the applicant lacks title to the mark, s.38(2)(c) but can
only be challenged by someone who is perceived to have better title.
4 Basis to Assert Registration (Best Entitlement)
1.s.16(1) Best entitlement based upon previous use in Canada
2. s.16(1) Best entitlement based upon the trademark being made known in Canada;
3. s. 16(2) Best Entitlement based on Foreign Applications (registration + use)
4. s. 16(3) Best entitlement based upon proposed use
Time dictates this, it is about being first, but not necessarily a race to the registry but the
first person who establishes their entitlement.
- In Anglo-Can-US law prior use is prerequisite; in continental systems, it is more “first
to register” system –now there is a compromise to the two systems. In Can
entitlement to register depends on whether it has been used before you but also
whether someone else applied to register it before you –it depends on the
circumstances. Entitlement becomes an issue of competing claims and priority.
When you make your application you have to say that you are satisfied that you are the
person to use the TM in Can –s.30 (i)
s.37(1)(c) –Registrar can refuse to advertise the registration if the applicant is not the
person entitled to register if it is confusing with another mark.
s.38 (2)(c)–Opposition may be based on the fact that the applicant is not the person
entitled to registration of the trademark
Registration does not insulate you from other claims if they have better entitlement to you
–s.18
Any challenge is restricted to things in s.17 -Limitation Period Rules
Effect of registration in relation to previous use
s. 17(1): If want to object to registration, or expunge or invalidate a trademark on the
ground of previous use or making known or a confusing trademark, then it must be your
use (someone else‟s use not good enough)
Doesn‟t mean that all rights will then pass to you –expunge mark only, no rights to you.
s. 17(2): If A registered a trademark and B previously used or made the trademark
known, then B cannot expunge or invalidate the trademark on the ground of their
previous use if the trademark had been registered by A for 5 years, unless B can establish
that A knew of B‟s use prior to A‟s registration (time restriction will not help someone
who adpted the mark in bad faith)
To bring a challenge you may say not distinctive as in s.18(b) –but if used far apart from
each other or not that big and not confusing then challenge will not be allowed.
In some instances where there is no confusion then concurrent use may be permitted.
Strength of title
-the person with the first “effective date”, the date at which one could register has the
strongest title
40
Not entitled to register where the mark is confusing with a mark that is:
- already used or in Can by another person s.16(1)(a)
- for which application already filed s.16(1)(b)
- where trade name previously used s.16(1)(c)
- exception –s.16(a)-(c) do not apply if the mark has been abandoned s.16(5)
For s.16(1)(a) use as defined by the Act is when a TM is on the wares or packaging when
the item is bought –visible when the property is transferred –requires sale or transfer of
possession and visibility. It also has to be a transfer in the normal course of trade. Use
in relation to services is slightly wider –TM is used when in the performance or
advertising of those services.
Making known in Can –s.5, deemed to be made known in Can by a person if it is used in
a Paris Convention country and either the wares are distributed in association with it in
Can or advertised in association with it in Can.
Used in US but distribution of materials in Can so want to protect the use of this in Can
although you are not using it in Can –when making known in Can that is your basis for
entitlement in s.16(1) Doesn‟t just have to be make known but be made well known to a
substantial amount of Canadians.
Important concession to foreign users. Can‟t just get protect if got it elsewhere but can
if made known in Can –also foreign traders can get entitlement to register through s.16(2)
Entitlement is based upon filing of application in Can. Effective date for this is when this
occurred in Can, not elsewhere –quite a significant limitation. Can shift the effective date
for foreign registrants by virtue of Paris Convention –is obliged to recognise priority right
to register to facilitate the obtaining of TM registrations of the same mark in different
countries. Foreign registration + use elsewhere gives them basis for registration.
When apply with foreign registration there is a slightly less demanding set of
criteria to meet to get registration –s.14 Still can’t be confusing with something on
the register and must be distinctive
If it is not distinguishable of a source then this does not allow it through s.14
To balance between regional TM protection and global bus environment. Don‟t want to
prevent foreign companies moving into the Canadian market having registered the mark
abroad. Date of filing of application in other country is deemed to be the date of filing in
Can.
Proposed use –way to get head start and know that it is available before making
investments in developing this; before this people would engage in token or trial uses.
Filing of the application establishes the effective date. Filing the application on the basis
that you might use the mark doesn‟t actually give you the registration however, this
occurs upon use –it does however establish your priority in relation to entitlement to
register. Thereafter you have to send a declaration that use of the TM in Can has taken
effect and upon receipt of that, registration occurs. Preserves the integrity of a use base
system.
s.40(3) time restriction on this –can’t preserve mark forever, just 6mths of receiving
notice application allowed or 3yrs after date of filing, whichever is the later. If wait for
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that 3yrs then someone else could come in and get distinctiveness and therefore loose
their claim under s.18
s.16(1) priority date when used –as in s.4 defn
s.16(2) date is date of application to register on basis of foreign application and use
s.16 (3) date of application for proposed use
s.34 –if foreign trader and got the mark elsewhere then may be moved forward
loose out to others before who made known confusing similar mark in Can, or made
application for this for proposed use. Then that should be picked up by the Registrar by
s.37, or if has been registered then Registrar may be able to pick it up on basis of non-
registrability if confusing mark on register 12(1)(d) or invalid as in s.18
-at all these different stages the entitlement issue can apply
(i)Used in Canada –Use? By whom? Where? All important in an entitlement
claim. Must be used in the ordinary course of business.
Manufacturer to Distributor to Consumer –Distributor often tries to register mark in Can,
may be problematic as the distributor is often not the exclusive distributor and others if
they use the TM are infringing.
Lin Trading Co. Ltd. v. CBM Kabushinki Kaisha
Facts –Concerning watches, Lin, middle man, tries to register Q&Q mark, CBM says
they are not entitled to registration. Has CBM used the mark in Canada before? Does
a shipment by CBM to Canada constituted "use"?
Ratio -Doesn‟t matter who made the mark but who used it. Having got 2 shipments they
sought to register the mark as they had used it in Can. Lin says that the activities do not
amount to use in the ordinary course of trade as they did not sell the product to the
ultimate consumer –Lin was the only source of these watches in Can and it connotes
sources to them. Stone disagrees with this argument. When CBM sold the watches they
were trying to advance their own bus in Can even though the only business they got
involved with was the shipment and not the activity in Can this was considered enough to
be considered use in the ordinary course of business.
Lin therefore was not entitled to registration. This basic transaction is enough to
constitute use in Canada in the normal course of business.
Citrus Growers Assn. Ltd. v. William D. Branson Ltd.
Facts – Branson was the Canadian importer and CGA was the foreign source. CGA
trademark “Ortanique” registered in several countries throughout the world. CGA became
aware of Branson‟s registration in Canada of “Ortanique” 7 years later and used s.57 to
expunge the trademark based upon the claim that Branson was not the person entitled to
registration. Branson argues that CGA is precluded from expungement under s.17(2)
because they did not object within 5 years of the date of registration
“Question is not who's using the mark but who's mark is being used”
Branson is not allowed to rely on s. 17(2) –as they had knowledge of the use by the
other person, it was in bad faith.
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Ratio -Branson never used or made the trademark known in Canada in accordance
with the Act. “although [Branson] was the first user as well as the party making known
the mark, [it] did so in law on behalf of the rightful owner, whose consent it had not
obtained.
Crt struggles to defines basis for striking mark from register –one thing that is compelling
is the fiduciary relationship between the distributor and the agent. Ultimately by virtue of
s.18(1) Branson was not entitled to registration as they have not used it in the proper
sense of this meaning within the Act, and further the CGA has a basis to register through
its transactions on its behalf by Branson
(ii) “In the Normal Course of Trade”
Sequa Chemicals Inc. v. United Colour and Chemicals Ltd.
Here there is a token use or that not in the normal course of trade. Distributors
registration is allowed over the manufacturer‟s call to have it expunged. The crt does
agree with the general rule that use by the distributor is use on behalf of the manufacturer.
Facts -S makes paper coating chemical in association with trademark Sunrez distributed
in Can by United from 81-4. United continued to make sales in association with the same
mark in 85 and registered the mark. S decided to register the mark in Can on the basis of
s.16(2) foreign use but there was a confusingly similar mark already on the register. S
successfully appealed and on the basis of the former case got registration.
Ratio -Fed Crt does not agree as prior to 85 no evidence was given of use or sale in
association with the Sunrez mark in Can other than token use or sale. Shipments that were
delivered between 81-4 were promotional shipments, none could have satisfied the
requirements of a normal course of trade. Evidence of token quantities cannot show use
in the ordinary course of trade. First use of this TM in Can in the normal course of
trade was by United in 85 when they were no longer acting as distributor for S.
When is a use a relevant use of a TM?
(ii) “In the Normal Course of Trade” mark for the purpose of distinguishing
wares.
Britis Petroleum Co. Ltd. v. Bombardier Ltd.
Facts -BP applies to register mark “23 Skidoo” but Bomardier says that this is confusing
with their mark of Skidoo which has been used with motor oils before the applicant. B‟s
claim is based on previous use of the mark in relation to motor oils by Castrol who then
assigned it to B. Was there a ware there when it was assigned?
Ratio -Registrar had simply said that it had been used in relation to motor oils before and
therefore was not registrable by the applicant But did Castrol ever use the mark and if not
then it is not a use for B to base their entitlement or opposition to the others entitlement.
Skidoo had appeared on Castrol containers of motor oil but next to it was a little R saying
that it was the mark of B. Castrol had never been using the mark to say that it was the
source of the product. They were saying that it was not theirs, they were not using it as a
TM and had no right to do so.
If going to challenge on prior use then must show prior use as a TM and indicating
source of the product.
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Robert C. Wian Enterprises Inc v. Mady
Facts -Want Big Boy mark in relation to hamburgers expunged on the basis that it is
invalid as the registrant was not the person entitled to register on the basis that another
had made this known before them through s.16(1)(a).
Ratio -In order to succeed must show that the mark had been made known in Can in
terms of s.5 Only operating in US however bit still have to be well known in Can
through any printed communication in Can or in radio broadcasts in Can, this is
very specific and limited, p.440, not menus, napkins, bags, comic books and the like
but publications circulated in the ordinary course of business by subscription or sale
at news stand type venues.
Diff to Pestco –have to fit s.5 defn in this case –evidence that radio adverts have been
picked up in Windsor from Detroit but didn‟t get the other part of s.5 that had become
well-known in Can by virtue of those things. It is different to be well known from
simply being known. Being known in Windsor is not enough in Can. It must be
known in every part of the country –perhaps that is too far and is restricted in the next
case.
Valle‟s Steak House v. Tessier et al.
Facts -Infringement action brought by US company –mark is only used in the US but
registered in Can on having made known. What P has to show is that they had made the
mark well-known in Can.
Ratio -Does show very literal view of what it means to make known. It is a rule of
evidence, not just a rule of substance. As a matter of substance the reputation has to be
acquired by these means. Exposure to the mark by ppl in US cannot itself make the mark
well known in Can even though those ppl in US may be Canadians. Word of mouth,
exposure to the adverts, the spillover effects of these does not give any entitlement in
Can. There has to be some relevant advertisements and making known in Can.
Evidence showed that the mark was well known in the Eastern provinces and
especially Quebec –was this enough? This had allowed the mark to become
sufficiently well known in Can to reign in the previous decision. Previous case means
that it is not enough to be known in something so geographically limited as in one town
It is possible that there is a foreign user of a mark that doesn’t have sufficient
commercial activity to fit in s.5, not advertising in the appropriate way etc. and they
cannot register mark in Can as have no basis of entitlement. But that person may
still have enough of a reputation to challenge the distinctiveness of a confusing mark
in Can. Even if you can‟t show better entitlement then might still be able to attack
validity by saying not distinctive –enough ppl would think of you as the source of those
products. Could oppose the registration on the basis of s.38(2)(d) that TM is not
distinctive. Post-registration can still bring an action to have the mark expunged as the
mark is invalid. Common law could fit in if you have reputation in the particular area
where they are trying to get the mark distinctive. When you expunge there still may be a
common law action. Catch all distinctive provision –if can attack that then have good
chance of attacking registration.
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4. EXPUNGEMENT -s.57
s.58 –can be made as a counter claim, originating notice of motion or statement of claim
in an action
One ground for invalidity is entitlement, must be made by someone with better title –
other grounds for strike can be brought by another interested party as in s.18(1)(a) not
registerable, (b) not distinctive, (c) abandoned
s.18(2) No registration shall be struck merely because no evidence of distinctiveness was
submitted before the registration. If this is later gained then this is ok.
But if challenged looks to date when registered –if not registrable at that date then can be
struck –have to reregister, despite how it is now. Relevant date is when the action
bringing the mark into question was filed.
s.45 –may also be expunged on the basis of non-use
If the registration is struck there still may be a passing off action in the common law,
therefore may not be able to use the same get up again.
Registration can always be challenged –there are certain mistakes that may invalidate a
registration; if you allow others to use that mark or a confusingly similar mark as you
loose distinctiveness by doing this.
Loose licensing agreements may do this. TM owners have to police the mark. That is why
Molson go after anyone who uses the term Canadian or Golden for example, although
they loose as they are enforcing the parameters of their rights.
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A. Loss of Distinctiveness
Aladdin Industries Inc. v. Canadian Thermos Products Ltd.
Facts – Aladdin trying to expunge “Thermos” mark by s.18(b) as lacking distinctiveness,
arguing that it had become a generic term to describe all vacuum bottles. They believe
that they are at a disadvantage as customers want a thermos flask when they really want a
vacuum flask and get thermos thinking that anything else is inferior –the case turns on
what consumer ideas are.
Canadian Thermos had tried to prevent the trademark from becoming generic however by
using a clipping service – to clip out and send to the respondent all references to its trade
mark in major publications; also used advertising stating that Thermos was not generic
for vacuum bottles, but a brand name
Ratio - Crt is uneasy in expunging v. valuable mark.
Ppl did see it as a generic term but also a TM –it had a dual purpose so there is confusion
on how the crt will find this case. Distinctiveness is the characteristic which triumphs
as in secondary meaning. This occurs due to the PI. –p.469 The crt does see that the
applicant does suffer problems due to the generic nature of this mark but we are also
concerned with the risk and harm to the public which we think there is a risk of creating
here if others were also using the thermos mark as this would confuse source. Crt has to
balance competing interests as they are set out but the conc is that the PI is
paramount.
How genuine is this appeal to the PI? Can be defined anyway –is this really true here, is
the public better off here if it is protected than if it is not? If thermos was expunged then
the customers would be buying the worse product at the higher price. Should quality get
into the realm of deciding the PI?
Whilst genericness and secondary meaning won’t get a registration it might prevent
expungement.
-US crts decided “Thermos” was generic and allowed Aladdin to use it in a restricted
way.
Heitzman v. 751056 Ontario Ltd.
Facts –Heintzman trademark was used by manufacturer on extremely high-quality pianos
made in ON. The company and accordingly the trademark was sold to another company.
New owner closed down the factory in ON where the public associated the source of
these pianos and bought imported pianos from Korea and the US which were of inferior
quality. They still used this TM however and no information about the change of piano
quality or origin was given to the public, rather the new owner concealed the true source
of the pianos, covering its original source with the Heintzman mark.
Ratio –Expunged: Not distinctive of new trademark owner, only of old trademark owner;
thus invalid as non-distinctive
Validity of the TM depends on indicating source. Too much licensing and assignment can
lead to a loss of distinctiveness.
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B. Abandonment
s. 18 (1)(c) -registration invalid where the trademark has been abandoned; this is different
from non-use. For abandonment the trademark must ceased to be used AND have a
positive intention that it is never going to be used again –that is why there are few
cases on this as the co is generally not going to challenge this if they have stopped using
the mark. Difficult to prove this positive intention, but courts are willing to infer
abandonment if there is non-use for a long period of time. There are problems where this
intention is assumed.
Promafil Canada Ltée v. Munsingwear Inc. –abandonment through deviation.
Facts – Trademark was originally a penguin that was marked on golf shirts, modified
from a skinny penguin to a fat penguin. Did these changes constitute abandonment of the
trademark? Are the 2 marks sufficiently different?
Ratio -No abandonment. Law doesn't require absolute identicalness of marks in order
to avoid abandonment, nor does it look to minuscule differences to catch out a
registered trademark owner acting in good faith and in response to fashion and other
trends. It demands only such identity as maintains recognisability and avoids confusion
on the part of the unaware purchasers.
Practical test –p.483 –compare the TM as it is registered with the TM as it is used and
determine whether the differences between these two are so unimportant that an unaware
purchaser would be likely to infer that both, in spite of their differences, identify gods
having the same origin. Trial thought that there were so different that the mark should be
expunged but not upheld here. Shouldn‟t just look at the differences but the similarities
and whether the dominant features prevail –p.488, Can law does not incorporate a linear
view of TM registration but can tolerate multiple variants of a mark.
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C. Non use
s. 45 -Registrar at any time or at request by any person 3 yrs from the date of registration
can 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.
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. Use has to be
within the commercial world and the context of the Act –launching infringement actions
will not suffice. Even if you get registration for use in Canada, use in Canada has to occur
for the registration to be effective. This is the same for registration of foreign marks –
have to move into the Canadian market eventually.
Registrar has discretion to decide whether it should be expunged. It does not require
intention to abandon.
Purpose of this section is to prevent the stockpiling of trademarks by big corps so that no
one else can get at them
Adams v Société des Produits Nestle
Facts - TM “Yorkie” is registered for a line of confectionary by Nestle in Canada.
Challenged under s.45 for non-use.
Ratio -s.45 puts onus on registrant to show prima facie use in Canada, difference to
s.18(1)(c) where those who bring the claim must show that it has been abandoned.
Registrant can show use of mark only through a foreign sales division. They can‟t show
that the prducts are coming from the Swiss registrant, but rather the British co. They are
not showing that the TM is used to show the correct source and the party registered is not
the one using.
Because no use in Canada demonstrated by the registrant, s.45 challenge successful,
mark struck
s.45(3) exception to non –use in special circumstances - have to be out of the ordinary,
cannot just be on the basis of own personal choices of what makes economic sense at the
time. If there had been a downturn in the market this is not enough.
Circumstances should be unusual, uncommon or exceptional.
McCain Foods Ltd. v Chef America Inc.
Facts - P brings s.45 claim against D for lack of use of TM‟s on food items: Breakfast
Pockets, Hot Pocket, Lean Pockets. D argues that, although it admits to over-running the
3 year period during which a TM must be shown to be “in use”, several factors (including
an earthquake knocking out the main plant) forced them to delay their planned
introduction of the items.
They don‟t want to loose place in line as then a competitor could come in and get
registration for Pizza Pockets for example, and then they, when they want to re-register
could be said to be confusing with the Pizza Pockets and as later in line they would loose
all claim to this term.
Ratio - Crt 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 not provided.
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The special circumstances were compelling here.
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 registration.
They now had to show use, just because they were allowed this reprieve they could sit on
the mark.
N.B. -The court chose to protect the “Hot Pocket” registration only, as the evidence
brought before the court only supported this registration.
On website they put “brand” after registration symbol so that people know that it is a
brand as they are obviously afraid of it becoming generic and want to reinforce that it is
not this, but a brand name.
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5. ASSIGNMENT & LICENSING OF TRADEMARKS
If the function of TM law is to distinguish one source as absolute then the licensing and
assignment of TM‟s is not permissible –if come to distinguish 2 then not distinctive and
not a TM and invalid. Have to ensure that there is consistency displayed in the mark. If
the source is either constantly changing when you assign it or multiplying when you
license it, it can become misleading and perhaps even deceptive.
Now we have a different system –transfer provided in s.48, licensing in s.50. Transfer is
outright sale of asset –you no longer own it, but the new person does. Licenses merely
give permission for another‟s use of the mark.
s.48 –mark is transferable and deemed always to have been, and can be transferred with
or without the bus and in association with all or only some of the wares for which it is
registered. Cannot transfer territorially as it is a national system as only one person can
register for the whole of Can –territorial partitioning occurs through licensing.
Despite theses transfers and assignments mark still has to meet all requirements of a TM
at any point that it is challenged. Registrant still has to use and the mark still has to be a
mark distinguishing one source from another.
s.48(2) If marks are confusing and not distinctive then it can be challenged as it is
distinctive of none of the sources, if it is still distinctive of some then it may survive.
Breck‟s Sporting Goods Co. Ltd. v. Magder
Facts – Concerning geographical transfer of trademark where the public wasn‟t educated
of change, thus invalid as not distinctive under s. 18(1)(b)
Assigned rights to US co for the North American market –using the mark in relation to
fishing tackle still used by the French co and imported.
Magder contests the validity of it –Mepps is not distinctive of registrant. Wants to do that
as it is trying to import through another distribution chain and wants to be able to use the
mark also or prevent the other co from using the mark so that their goods seem infereior.
Before assignment –Mepps distinguished Mepps in Fr –argument that it is now invalid is
based on the fact that after the assignment it still mean the wares of the Mepps Co in Fr. It
is not distinctive of the wares sold by Brecks
Fed C of A –reversed trial decision in favour of Brecks as it lacked distinctiveness –they
said the use by Brecks would not have distinguished the wares Brecks was selling from
those of the French manufacturer or any other distributor of those wares in Can –they
have not shown themselves to be the distinctive source in Can.
Ratio –Sup Crt affirms this decision by stating that distribution deal is only 5yrs
renewable and will be transferred back to Mepps –if not then they would not be able to
choose another distributor in Can. To allow the TM to be transferred on a change of
distribution is not what this is supposed to be about. Not untrammelled assignment –still
care of what that assignment shows –it boils down to what the public can expect. Not
protecting the public interest by saying cannot be advertised. There can be assignment. If
going to prevent the public from being confused about source have to rely on defn of
distinctiveness and applicability of s.18(1)(b) –if not indicative of registrant then has to
be struck so as to avoid consumer confusion.
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Better option would have been licensing rather than a transfer –Mepps was the owner and
Brecks was the licensee and then the mark would have identified the French manufacturer
as the source. Licensing however does present its own set of concerns. At one time even
licensing was not permitted, in 1953 new TM Act permitted this but with big condition,
that licensee was the registered licensee. When applying to register the arrangement had
to explain the condition and control that was being exercised -conducive to strong source
theory of Tm protection. New law in s.50 –specifies circumstances under which use by
the licensee will be deemed to be use by the licensor –the key consideration for a
licensing arrangement.
s.50(1) -if owner has ultimate control over the mark then it is considered to be the
same as for any use by the owner –they are only building the brand for the licensor
and there are no conflicting ideas on source and no threat to the distinctiveness of
the mark. This is also the same for proposed marks, can be a licensee of one.
Control has to be active, cannot be passive over the quality or character, but can be
indirect or direct. Should be able to define standards to assess and reinforce them.
s.50(2) -if there is public notice of the arrangement then the necessary amount of
control in the licensing relationship will be presumed –only a presumption however
and can be rebutted.
s.50(3) -unless there is something negotiated on in the agreement the licensee can make
out their own infringement actions, only if the licensor does not bring an action –can be
brought in their name if the owner does not do this within 2mths of being told of this.
Recognises that the licensor does have an interest to be protected here.
Rationalising licensing of TM‟s–if going with a quality theory then as long as the quality
is the same then no one is hurt, in the source theory it is a little harder to rationalise. But
in modern commerce it is common that others act on their behalf –“mere use of a
trademark by a licensee in a typical modern licensing situation does not in itself result in
a second „source‟” –p.519
It is not just about ownership –it is about looking for the active element of control.
Dynatec Automation Systems Inc. v. Dynatech Corp.
Facts –P proceeds under s.45 against D, suggesting lack of use beyond 3 years as per the
criteria of s.45.
Ratio -D brings evidence of use but all evidence pertains to subsidiary companies. On
analysis it is revealed that D 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 D.
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.
The demonstrated “use” in this case is irrelevant; under s.45 the mark is expunged
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6. INFRINGMENT
s.19, 20 and 22
s.19 –registrants rights being infringed where another person uses without permission the
exact mark on the exact same goods and services for which it is registered. Does not
depend on any demonstration of confusion –goes beyond what is shown in the common
law. Protects the exclusive right to use the mark anywhere in Can, as it is registered.
s.20 – right of the owner to the exclusive use of its marks shall be infringed when a
confusingly similar, as distinguished in s.6 on fact determination, mark is used –can be on
diff gds and services. The nature of the use is sale, distribution or advertisement –wider
than s.4, advertising is not in s.4
s.22 –not about use as a TM to distinguish source, it is about using it so that the goodwill
in it is depreciated –prompts Q‟s of free speech and overreaching concerns –the US idea
of dilution enters in Can here but it is limited to uses in s.4 and arguably flowing from the
lang of the act would suggest same mark in association with the same wares.
See table –all expand, see p.540 quote
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A. Confusing Usage
Still relying on s.6; whether in same business etc –but diff emphasis placed within that
here –when trying to prove confusion for infringement the onus is on P to show
reasonable probability of confusion; where an applicant, when applying for registration,
must show the absence of all reasonable prospect of confusion.
Pepsi-Cola Co. of Canada v. Coca-Cola Co. of Canada
Facts –Arising from an action when Coke claimed that Pepsi‟s use of the word cola in
Pepsi-Cola was confusing with their own Coca-Cola TM. Was it likely to cause confusion
as to source through the inference of the term? Q of fact and determined on case by case
analysis therefore past precedents will not help –must look at statute and then the facts of
the individual case. Here all that is used is the term cola.
Ratio -What is protected is the whole mark but there may be a taking of a
substantial part which will mean taking the whole. Comparing the marks as a whole to
see what has been taken and if that is enough to amount to confusion –diff mark and
instantly dealing with s.20 instead of s.19. Even when it is only the descriptive part
that is taken there can still be infringement as that is part of the whole. What is taken
is not what makes the mark and Coca Cola has no right in the word cola standing on its
own. If that is given then they would have a monopoly over that word –we have to allow
free comp and cannot disadvantage competitors. Furthermore the difference in the
marks is apparent –also the decision was based on the peaceful co-existence of the
mark, as there was no evidence of actual confusion.
Mr. Submarine Ltd. v. Amandista Investments Ltd. (Mr. Subs n‟ Pizza)
Facts - Action of infringement brought by Mr. Sub under s.19 and s.20.
Claim 1 - By using “Mr. Subs” as part of its TM or trade name D had copied part of the
appellant‟s TM and thereby infringed the exclusive rights conferred by s.19. –however
there has to be a direct copy, not just part of it to claim infringement under s.19
Claim 2 -The use of “Mr. Subs” as part of D‟s TM or trade name is confusing with P‟s
TM, thus infringing under s. 20.
As both refer to the use of food services and there is substantial similarity in their names,
the formation, Mr + the food stuff there is seen to be the potential for confusion. This is
despite the fact that over the long time that both businesses have been in operation there
has not been any instances of actual confusion. This is only supposed to be a
consideration however, nothing more. Show that differences can be subordinated to
the similarities.
In terms of s.6(5)(a) they are both inherently weak –only known in certain areas, may be
seen as descriptive etc.
Whilst the two do not sound alike they do suggest the same thing –but should this be so
weighty in the reasoning as both are involved in same business.
Could be seen that they were both associated and D was perhaps licensee also selling
pizza.
General rules from cases on confusion
-In common law if put disclaimer etc then there would be no passing off. Here we are
looking at whether there is a likelihood of confusion.
-Marks are being compared as a whole, even the non-registerable portions etc.
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-If just take the portion that is not in itself distinctive then it is unlikely there is to be
confusion found.
-Average buyer is the test, who may have an imperfect recollection.
-One of the consideration may be the value of the goods, if just canned drink then there
may be less attention paid and confusion occur
-Actual evidence of confusion is not determinative but may be helpful
=We are looking for differences and similarities and deciding which one is going to win
out overall.
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B. Bona Fide Use Defence
Exception for bona fide use –not expansive and virtually useless. If using an accurate
description of the character or quality of the goods of wares other than as a TM and not
depreciating the good will then TM law would not apply anyway –if not using as a
trademark and if not deprecating the goodwill then will not be caught by s.19, 20 or 22
anyway –there is no need for this exception. Can call your company your name but
cannot use this as a TM if confusing and cannot depreciate the goodwill. Even if there is
ability to register descriptive mark as gained distinctiveness then can use this as an
accurate description of your wares if done in good faith and not deprecating the goodwill.
Everyone has the right to describe their product and use their name in association with
their business but it is limited when up against a registered TM.
In an action you would begin by attacking others TM, then say not dealing with the mark
in a way that is an infringement –these are different wares, these are a different mark –
s.19, or it is not confusing –s.20 or not used as a TM and then last ditch attempt using in
good faith.
Bagagerie S.A. v. Bagagerie Willy Ltee
Facts -Paris handbag company, “La Bagagerie” is challenging D, with the trade name
“La Bagagerie Willy” citing s.20 and s.22 of the Act. D is a small operator with luggage
repairs accounting for 75% of the business and sales of luggage the remaining 25%.
“Bagagerie” is a made-up word that linguists show is in common use for luggage. D
argues that as s.20(1)(b)(ii) allows for an exclusion as “an accurate description of the
character and quality of wares or services”. It was seen as confusing and therefore needs
a defence. It is that it is an accurate description of the wares that he sells. Confusion over
what the word actually means in French.
Ratio -While the s.20(1)(b)(ii) exclusion was allowed at trial, on appeal the judge states
that under the circumstances the trial judge misinterpreted the connotation of “bagagerie”
as it was in the French language, and thus not eligible for protection as if it were
recognizable in English. Citing dictionaries, although these are not meant to be
determinative, it is stated that in French this word means luggage and not their container,
the suitcase which was the subject of the business here.
Hence, the court finds on prima facie confusion as per s.6(1) of the Act.
Guccio Gucci S.p.A v. Meubles Renel Inc.
Facts –Concerned Paolo Gucci, a breakaway scion of the well-known Gucci family
marking furniture as "Designed by Paolo Gucci" and this was challenged as using the TM
Gucci as a trade name. In the action he tried to rely on s. 20(1)(b)(ii) exclusion from s. 20
– allows for any bona fide use, other than as a trademark, of any accurate description of
the character or quality of his wares or services, in such a manner as is not likely to have
the effect of depreciating the value of the goodwill attaching to the trademark
Ratio -Crt stated that to rely on exception must satisfy 4 conditions:
1. bona fide use
2. use other than as a trademark
3. an accurate description of the character of the wares or services; AND
4. in such a manner as not likely to have the effect of depreciating the value of the good
will attaching to the trademark
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No explicit findings as to bona fides by the trial judge as unnecessary in light of the
appellant‟s failure to qualify for the exception under the other conditions.
For the mark was seen to be acting as a TM denoting Paolo Gucci as the source of the
wares but this was not accurate as this could not always be proved, and it was seen to be
impacting on the registered Gucci TM.
When it is accepted that the mark is valid, then have to turn to non-infringement
defences, e.g. out of the scope that TM protects etc.
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C. Concurrent Use –s.21
If the mark has become incontestable by virtue of s.17(2) as registered for more than 5yrs
then s.21 gives leeway if you adopted the mark in good faith and before the
registrant applied to register their mark. This allows that in those scenarios it is
possible for the crt to issue an order of concurrent use.
When this is given they are allowed to use the mark not withstanding that it is confusing
with the mark of P. This is limited as it cannot be contrary to the public interest, one
that will not cause confusion to them and crt can make other determinations as it sees
just. Also use only allowed within a defined area and with a distinction that you do
not have the registered mark. Under s.21(2) the person with the concurrent use order
can enter this on the register in association with the trademark.
B uses, A applies, A registers –after 5yrs by s.17(2) B has no claim; this gives certain
rights to B.
A could have use before B but the date goes from the date A applies –this does not affect
s.21, but will affect s.17 as they can not claim better entitlement.
Kayser-Roth Canada Ltd. v. Fascination Lingerie Inc.
Facts -P sells lingerie under the TM “Fascination Lingerie” across Canada, and sells it
as “Kayser Lingerie” in Quebec. D operate in Quebec with the company name (registered
in Quebec only) “Lingerie Fascination”.
Ratio - Although s. 21(1) permits, under the circumstance that two “similar” marks may
be allowed in the same geographic area, to achieve this D must show that it has used the
mark consistently in the area prior to P‟s registration (if they could they would achieve a
court supported alteration of P‟s protection, allowing D to a restricted geographic area of
P‟s coverage). However, D cannot show use before P‟s registration, and the court
reasons anyway that allowing two similar marks in the same geographic area flies in the
face of the objectives of the TM‟s Act overall. Injunction granted against D.
Concurrent use only kicks in 5yrs after registration and where s.17(2) applies –
where there is no knowledge of the prior use. Registered owner must have adopted the
mark without bad faith themselves and then have to meet the requirements of s.21. Must
be met before the date of registration and also not contrary to the public interest for that
party to use that mark.
Proceedings were not commenced 5yrs after the registration. It would still be open to
challenge the validity of Kaiser Roth mark so the base condition does not apply –s.17(2)
does not apply so we cannot refer to s.21. It does not have better title and could not have
the mark expunged on that basis.
Other timeline problem is that it did not use it before KR‟s application. D adopted the
Fascination mark after the registration had been applied for –it does not fit into the
timeline that had been established for this type of claim.
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Kayser-Roth v Fascination Lingerie – Timeline
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
(Evidence unclear)
Therefore court CANNOT grant a s. 21(1) order
allowing concurrent use
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D. Comparative Advertising
If making false or misleading statements about competitors then there will be an action
through s.7 and would also exist in the common law. Passing off would also catch false
statements. If used anothers TM suggesting some false connection could be caught by
s.22 but this can also stop truthful statements if they have a negative action on their
goodwill.
In comparative advertising there is the struggle between the registered owner of the mark
wanting to keep in tact the positive connotations that it has created and the competitor
wanting to engage in free expression in the commercial context –in this way is this a
breach of the Charter right? If TM‟s are used to show source then others have to be able
to use the mark to show the source of what they are talking of. There is a limit to what
TM law should be able to protect.
In this there is nothing that could have created an action in the common law –there was
no deception and there was no action within the tort of passing off.
Clairol International Corp. v. Thomas Supply & Equipment Co. Ltd.
Facts – Clairol moved to stop the use of its marks on comparison charts found on
"Revlon" hair-rinse packages, it was comparing Clairol and Revlon colours and using
their TM‟s in relation to that. The marketing strategy was to show that their products
were just the same and just as good as P‟s.
Ratio -The appearance of the TM is a use but when on the brochures it is not use in the
meaning of s.4 as only in relation to advertising if for services not wares. But in relation
to s.19 and the packaging this claim fails as it is not using it as a TM -no one thinks that
the Clairol mark is distinguishing source on the Revlon products. Uses of another‟s mark
for comparison or critical purposes are never likely to fall within s.19 but that does not
mean that they are always allowed. For if it can be seen that the use is deprecating the
goodwill in the mark then it will be contrary to s.22. This is the equivalent to the US
dilution of marks. Have to find where the limits to s.22 lie, as it can be very broad. The
use has to be one in the course of trading; limitation obviously present as statute relates to
trademarks and unfair competition. Clearly contemplated by virtue of the fact that by
virtue of the facts the info must be in relation to wares and services. Use of corporate
logos by trade unions may be exceptions to this act and it also may help review,
criticisms and parodies of products. Something more has to apply too –uses must be in
the technical TM sense as in s.4. As such there was no infringement of the brochures on
either count as this does not include advertising. Ppl will register for services so that they
get the broadest protection as this includes protection for advertising.
Here the TM was used in relation to the wares in a commercial context whereas the
brochures were not in connection to the transaction and were not related to the
commercial sale.
Depricating the goodwill is seen here as any diversion of custom or any lack of respect
shown to a TM will suffice –perhaps a loss of profits or customers would be a better test,
in the US this is what is required in the dilution context. What is happening here is that
they are trying to get consumers familiar with Clairol to move to Revlon, and that is seen
as wrong and precisely what is trying to be prevented.
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Ratio -Use of P‟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). P‟s
TM was mentioned on the chart and this was what made the depreciation of goodwill
obvious.
Arbitrary and the policy is not clear –it is hard to rationalise the distinctions that the law
wants us to draw but that is what we have to do.
UNDERSTANDING THE CLAIROL CASE
The TM on Packaging
The Mark The Goods The ‘Use’ The Function/ Infringement?
Effect
s. 19
(the same) (the same) s. 4 use Not as a TM No
s. 22
(the same) (the same) s. 4 use Depreciating
Goodwill Yes
The TM on Brochures
The Mark The Goods The ‘Use’ The Function/ Infringement?
Effect
s. 19
(the same) (the same) Not s. 4 use Not as a TM No
s. 22
(the same) (the same) Not s. 4 use Depreciating No
Goodwill
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Eye Masters Ltd. v. Ross King Holdings Ltd.
Facts - Parties were rivals in retain business of fitting and supplying eyeglasses. D‟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 P‟s registered mark and made a claim under s. 22
Ratio -Crt held that the advertisement would depreciate P‟s mark through the enticement
of its customers and an injunction was granted.
N.B. -This appears to go against the Clairol case – judge specifically mentions this
example as not appropriate for application of s. 22
Future Shop Ltd. v. A. & B. Sound Ltd.
Facts - D referred to “The Future Shop” in a price-comparison advertisement for the
services of retail sale of electronic products
Crt tries to get around Eye Master decision If the advertisement was to stress the
differences bewteen the wares or services of rivals, then is should not be caught by
s.22(1). Only when similarities are stressed should s. 22(1) opearated because then
the defendant would be attempting to appropriate a part of its rival’s goodwill
N.B. -Clairol case – was a comparison chart on the packages – stressing the similarities
In the UK the concern is with taking advantage –the Eye Masters case is at odds with this
case as they were favourably showing the similarities of the wares yet the difference in
the price –this case seems to over simplify the advertising issues. This does show that
there may be a weaker interpretation of s.22 which many want to see.
It is important that it is limited but it appears non-sensical in its difference in view to
wares and services –should the issue not be whether it is false advertising or if you are
trying to disparage them ungrounded.
Are we dealing with the mark as registered and the same mark –it flows from the
language of the Act but it has never come from the cases. What of when there are
differences?
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E. Dilution
Source Perrier S.A. v. Fira –Less Marketing Co. Ltd.
Facts – P claims that D is using a mark that is likely to depreciation the value of the good
will attaching to its TM. D is advertising, distributing and marketing bottled water in
association with the name “Pierre Eh!” – P claims that the bottles are substantially similar
to their “Perrier” bottles. “Pierre Eh!” product is being marketed as a humorous political
spoof or satire directed at the Prime Minister and Government of Canada.
Ratio - “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”
P allowed protection under s. 20 – defendant is likely to create confusion in the minds of
customers
Free expression argument used here but that did not find favour –if there is any limit on
freedom of expression it extends to TM‟s and shows that idea that a TM is being regarded
as property.
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