Trademarks cans by 3Jinfig4

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									                                                   Trademarks

Introduction and constitutional issues

Kirkbi v. Pitvic Holdings, SCC 2005
 A purely functional design may not be the subject of trademark protection
 The tort of passing off , s. 7(b) can not be used to propagate an expired monopoly under expired patents
 The trademarks act creates a regulatory scheme for both registered and unregistered marks – but the rights of
   registered marks are more extensive
 Registration give the registrant exclusive right to use the mark in association with the goods or services
   throughout canada.
 Trademarks are intended to protect the good will or reputation associated with a particular business and prevent
   confusion in the market place
 Trademarks seek to indicate the source of a particular product, process or service in a distinctive manner, so
   that customers know what they are buying and from whom
 The foundation of trademarks is distinctiveness, because only distinctive marks will allow the consumer to
   identify the source of the goods
 The mark must NOT be confused with the product itself – it is a signal of the connection between a source and
   a product
 The doctrine of functionality – s. 13 (2) – trademarks can not be used to protect utilitarian features of a
   distinguishing guise, and reinforces the ides that trademark law is not intended to prevent competitive use of
   utilitarian features – only serves a source distinguishing function
 The doctrine of passing off – this has to do with the policy of promoting honesty and fairness in competition
   and to ensure that consumers know where the products they are buying come from
    Three elements need to be established:
         The existence of good will
             With respect to the distinctiveness of the product (evidence of good will that attaches solely to the
                process or technique to create the product will not do )- it must be a guise, get-up, or name or
                symbol that identifies the product
         Deception to the public due to a misrepresentation
             Misrepresentation may be willful, thus deceit, but there can also be negligent or careless
                misrepresentation by a trader
         Actual or potential damage to the plaintiff

Distinctiveness

Bojangles’ International v. Bojangles Café, 2006
    The plaintiff operates restaurants in the US but not canada, and the defendant has two in canada.
    The material time is the time of the opposition, and the question to be asked is whether the mark was
      adapted to distinguish the wares and services of the defendant.
    The mark “bojangles” has a high level of inherent distinctiveness
    If the applicant can demonstrate that a substantial segment of the Canadian market associates the trademark
      with the foreign owner of the mark rather than the Canadian respondent at the material time, the mark
      would not be distinctive of the respondent, and therefore not valid.
          o This requires evidence of substantial reputation at the material time
    It must be shown that the opposing mark is knows to some extent at least, NOT that it is well known or that
      it has been made known by the means in s. 5. – just has to be sufficiently known to negate the
      distinctiveness of the mark under attack – the reputation should be substantial, significant or sufficient
    There needs to be evidence that the foreign mark has established significant good will and reputation in
      canada
    The evidentiary burden is on the party claiming that the reputation of his mark makes the other mark non-
      distinctive – however, the applicant must still prove that his mark is distinctive
    To show that a mark is distinctive, three things must be shown:
           o That the mark and the product are associated
           o That an owner uses this association between the mark and his product, and
           o That this association enables the owner of the mark to distinguish his product form that of others

Philip Morris v. Imperial Tobacco (no.1)
    A trademark is invalid, according to s. 18(1) if
           o It was not register able at the time of registration
           o It is not distinctive as of the time proceedings bringing the validity of it are commenced
           o The trademark has been abandoned
           o And subject to s. 17 if the applicant for registration was not the person entitled to registration
    Distinctiveness in question has to be in relation to other products offered in the same market, thus within
       Canada
    Although spillover effects of advertising may be of relevance with respect to initial registration of the mark
       in canada, it is NOT be deemed to create a new use in Canada that can then invalidate a legitimate
       registration based on a valid transfer of title to the Canadian registrant.
    Failure to proceed in respect to infringements which do not amount to use sufficient to affect the
       distinctiveness of the mark does not affect the owners right even if he is aware of them

AstraCenca v. NovoPharm, FCA 2003
    If a distinguishing feature is common to the trade, it does not in fact distinguish the wares of the applicant
    A mark usually distinguished by acquiring distinctiveness through use, resulting in distinctiveness in fact.
    A mark that is adapted so as to distinguish is one that does not depend upon the use for its distinctiveness
      because it is inherently distinctive
    To register colour and shape of a precuts as a trademark – the applicant must show that the colour and
      shape have, though use, actually distinguish its wares from that of others – thus that those who use it,
      pharmacists and doctors to some extent relied on the colour and shape to identify the pills
    Colour alone is not distinctive, unless it can be shown to have a secondary meaning

Molson Breweries v. John Labbatt, FC 2000
   Labatt opposed the application of Molson to register the mark “export” in association with brewed
      alcoholic beverages, either because it is either clearly descriptive or misleadingly descriptive of the
      character and quality of the beverage
   S. 12(1)(b) states that a mark that is clearly descriptive is not register able, however, under s. 12(2), if by
      long use of the mark in association with the goods, it has become distinctive of he appellants wares a the
      date of application for registration of the mark, such that the clearly descriptive connotation of the mark is
      subordinated to its distinctiveness, then it may be registered
   S. 19 gives the registered owner a right to exclusive use throughout canada, subject to s. 21, 32, 67
   S. 32 states that a trademark that has acquired distinctiveness under s. 12(2) or 13, can have its registration
      limited to the territory in canada where it is shown to have become distinctive
   The relevant date to determine distinctiveness is the date of filing of the application for registration
          o There is not need to show that he is the sole user of the mark
          o Evidence of use of the mark by others in association with similar wares is relevant in determining
              distinctiveness in fact, exclusive use is not essential.
   Here the court held that the word export was always used with Molson, so that Molson export has acquired
      distinctiveness, not export alone
   Distinctiveness must be determined from the point of view of the everyday user of the wares, and is a
      matter of first impression

British Petroleum v. Bombardier
     Use of a trademark is any use that by s. 4 is deemed to be a use in association with the wares or services.
     The identification of a trade mark as being owned by another, is indication that the mark was not being used
        as a trademark – any rights have been clearly disclaimed
      To base opposition on reputation, reputation must be proven, before one considers the possibility of
       confusion
      There needs to be either intention by the user that the mark be a trademark use, OR recognition by the
       public of such trademark use, but there needs not be both, only one is enough
      A transfer of a registered mark that was not used as a trade mark, and was not distinctive of the wares,
       transfers nothing

Bombardier v. British Petroleum
   Agreed with the trial judge that the use of the word skidoo was as to indicate a possible use, and not so as to
     distinguish, and did not in fact distinguish the products, and as such can not be considered a previous
     trademark in existence in Canada in relation to motor oil

Trademark use under. S. 4

BMB Compuscience v. Bramalea, FCTD 1988
   This was an application to expunge a registered mark based on prior use
   It is not essential that the trademark actually attach to the wares or places on the packages in which they are
     distributed, but it is sufficient if the trademark is in any other manner so associated with the wares that
     notice of the association is given to the person to whom the property or possession of the wares is
     transferred
   All that is needed is that the mark be so associated to give notice AND must take place at the time of
     transfer of property in or possession of he wares, or there is not adequate trademark use

Siscoe v. Munn
     This was an action to expunge the trademark “Micafil”. The evidence of prior use was one when sending
       samples to siscoe with no sales made or contemplated in the correspondence, and the second was on
       material provided for information to the applicant.
     There was also no evidence that the respondent made the mark known in canada by distribution of the
       product or by advertisement in canada
     The court held that this was not use, because it was not in the ordinary course of trade. The purpose of the
       sample was not in the ordinary course of trade, because the sample was in connection with negotiation to
       allow the applicant to manufacture his own goods, not to affect a sale

Grants of St James v. Andres Wines
    The previous use claimed was on shipments to canada for preparatory testing in canada.
    Two shipments for that purpose were held not to constitute the normal course of trade, and there was no
       further attempt to use the mark

Aft-Societe v. Charles de Borgne
     That is needed by the statute is such distribution of the wares in association with the mark and in such
       quantities as would serve to make the mark known by persons engaged in trading in such wares in canada
       or their customers
     Isolates uses are not enough, NOR are sales from a parent to a subsidiary only once (no sale to the public)

Porter v. Don the Beachcomber
    There was no evidence of actual performance of the services in canada, in respect to which the trademark
       was registered, at the martial time
    For services, the use has to be in canada, and in order for there to be use of the trademark, it must be used
       or displayed in the performance or advertising of services. Two elements are required to constitute use:
       (1)services to be distinguished by the trademark, and (2) use or display of the mark in performance of
       advertising of the services. – BOTH elements have to be performed in canada

Saks v. Registrar of Trademarks
      The question was whether saks has used the trademark in the ordinary course of business in association
       with the wares and services described under the registration
      Saks had active accounts in canda, good were delivered to Canadian customers.
      There was evidence that saks responded to mail and telephone orders from canada, advertised its products
       and services in canada, arranged for delivery in canada, and honored warranties to Canadian customers.
      All these services were department store services and were furnishing of the service in Canada
      Persons in canada, unlike in don the beach comber, could benefit from the servieces


Entitlement to register

Effigi v. Canada, FCA 2005
     The question was whether the registrar may refuse to register on the basis of a later filed application that
        claims an earlier use
     S. 16 – states that a person is entitled to register a trademark so long as it is not confusing because of
        previous use.
     S. 37 - states that the registrar has to register an trademark, unless the application does not conform with
        s.30, the mark is not registerable, OR it is confusing with another trademark, the registration of which is
        pending (this last part is NOT because of s. 16 – but because of confusion with a pending application
        ONLY)
     Pending, refers to an application filed prior to the date of the subsequent filing – the material date being the
        date of filing – a subsequent application is NOT pending in relation to a previous application
     A person who alleges prior use, must oppose the application under s. 38, and then can resort to s. 16, but the
        registrar may not do so based on an allegation of prior use – this requires evidence


Registerable Trademarks

                                                 Disclaimer practice
Lake Ontario Cement v. Registrar of trademarks
    An appeal from the refusal to register the trademark “premier” with respect to sand, gravel and concrete –
      because it is either clearly descriptive or deceptively misdescriptive (s.12(1)(b))
    The applicant disclaimed the right to exclusive use of the work premier apart from the trademark, pursuant
      to s. 35 –
    Even when parts of a mark taken separately may not be capable of registration, the mark when taken as a
      whole may be distinctive and registerable.
    A disclaimers allows a registration to contain matter which standing alone is non-distinctive
    Disclaimers should only be used in relation to non-distinctive matters, and does NOT affect the question of
      likelihood of deception (disclaimer does not appear in the mark)
    Disclaimers can be used to overcome objections of clearly descriptive but NOT objection to registration as
      to conducing resemblance to an earlier mark or to a deceptively misdescriptive mark
    A mark may be misdescriptive, but in order to prevent registration it MUST be deceptively misdescriptive
    Purely laudatory terms are not necessarily deceptive if they are an indirect reference to quality of the goods

                                                  Personal names
Erhard Horn v. Registrar of trademarks
    An appeal form the decision not to allow registration of the mark “marco Pecci” as a trademark in
      association with women’s clothing – on the basis that it was primarily merely a name of an individual and
      thus not registerable by virtue of s. 12(1)(a)
    The name was fictitious and not real
    The concluding words of s. 12(1)(a) make is clear that a name is registerable so long as it is not the name of
      a person who is currently alive or has died in the past 30 years – there is no bar to the registration of a
      fictitious name
      (1) is the word or words in fact the name of a person who is alive or who has dies in the past 30 years?
       Only if yes, then – not enough that it resembles a name or may be taken a name
      (2) consider whether the trademark is primarily merely a name or a surname rather than something else

Standard Oil v. Registrar of Trademarks
    The name FIOR was found in directories in canada and was reasonably assumed to be the surname of living
      individuals in canada
    It is irrelevant whether the general public associated the name with a person, so long as those who know
      him do
    There are three kinds of words for trademark purposes
          o Dictionary words
          o Names
          o Invented words
    Since FIOR is the surname of a living person, the next question is whether it is primarily merely a name, or
      primarily something else
    The word FIOR was invented, thus was not merely a name, but is it primarily merely a name or Primarily a
      name?
          o A word is not merely a name if it was not chosen by the applicant because it is a name
          o A woes is not primarily a name if it is equally as likely to be a name as some other thing when
               heard by the ordinary person
          o A word is not primarily merely a name if it is picked as a name , but it is equally likely to be a
               name as a trademark, or have some other recognizable meaning (dictionary, slang, invented)
    Whether FIOR is primarily a name goes to the character of the word – is it principally used as a name or
      principally or equally a word invented to be a trademark – based on the response of the general public in
      canada

Registrar of Trademarks v. Cole Books, SCC
    The application to register coles was refused because it was primarily merely a surname.
    The name coles is a well known surname in canada, and the dictionary meaning was obsolete, rare and little
       known to the general public in canada. – thus the only common use of the work by a person of ordinary
       intelligence is as a surname.
    The question is whether the primary (chief, principal, first importance) if the word is merely (only, nothing
       more than) a surname?

Elder’s Beverages v. Registrar of Trademarks
    The word “elder’s” was sought to be registered, and was in use for a long time – but was denied because the
       name was primarily merely a surname
    The court held that the word had through use lost it’s primary meaning and acquired a secondary
       significance as to denote the wares of the appellant
    The word elder is a surname and also has dictionary meaning, thus not merely a surname.
    The character of the word as a surname and as a dictionary word are equally substantial, and thus it is not
       primarily a surname
    The adding of an ‘s makes it more likely that a person will be seen as the source of the product

                                                Descriptive Mark
General Motors v. Bellows, SCC
    The trademark was “frigidair” in association with refrigerators
    The court must be careful with words that are common to all in a particular trade
    The court said that the combination of two common words does not make it a invented word, and
      distinctive per se
    Frigidair was held to be descriptive of the essence of the refrigerator, a functional property of the article
      itself – the application should have been rejected without proof that it had become distinctive through use
      Similar in relation to trade marks, trade names or distinguishing guises, describes marks, names or guises so
       resembling each other or so clearly suggesting the idea conveyed by each other that the contemporaneous
       use of both in the same area in association with the ware of the same kind would be likely to cause dealer of
       consumers of them to assume that the same person assumed responsibility for their character, quality, or the
       conditions under which the class of persons by whom they were produced, or their place of origin.
      BUT when the party reaches within the common trade vocabulary, the range of protection given is narrow,
       and some confusion is given and will be tolerated so as not to allow monopoly of the common word.
      In determining confusion between marks, regard must be had to the entire circumstance of the trade,
       including price, the class of person purchasing, and the ordinary manner in which they do so – the higher
       the price the more likely the consumer will be more discerning
      In this case, frozenair and frigidair were substantially dissimilar to allow for both to be registered

Drackett v. American Home products
    The trade mark “once a week” was held to be merely informative, descriptive or generic as applied to floor
      cleaner – likely used for the purpose to inform purchasers of the frequency with which to use the product
    A trade mark that is clearly descriptive on first impression, it is not register able unless it has acquired a
      secondary meaning
    Clearly means “easy to understand, self evident or plain” and NOT accurately
    Character in s. 12(1)(b) means a feature, trait or character of the product
    To be meaningless with reference to a product, the word should be so obviously and notoriously
      inappropriate as to not be calculated to give a description

Imperial Tobacco v. Benson and Hedges
    The application was for proposed use of “right” in association with cigarettes
    It was opposed on the basis of either being clearly descriptive or deceptively misdescriptive, And as not
      being distinctive in that it is not adapted to distinguish the applicants wares
    Whether a word is clearly descriptive or deceptively misdescriptive is a question of first impression sought
      in the manner, subject or occasion where it is used
    Right in this case as used as a laudatory term meaning desirable – thus is contrary to s. 12(1)(b) and being
      for proposed use there can be no acquired distinctiveness under s. 12(2).

Deputy Attorney General of Canada v. Biggs Laboratories
    This was an application to register the word SHAMMY in connection to a transparent polyethylene glove
    This was held to be invalid on the basis of s. 7(d)(i) a description in association with wares that is false in a
      material sense and likely to mislead the public as to character, quality, quantity or composition AND s.
      12(1)(b) as being deceptively misdescriptive of the character or quality of the product - because it did not
      contain any bit of shammy or chamois.

Proenzano v. Registrar of trademarks
    This was an appeal from the refusal to register KOOL ONE in relation to beer on the basis of s. 12(1)(b).
    To be objectionable under s. 12(1)(b) the word must be clearly descriptive NOT merely suggestive and, for
      a word to be clearly descriptive it must be material to the composition of the goods or product.
    The adjective Cold when applied to beer is in no way descriptive of he intrinsic character or quality of the
      product – unlike ice cream – the temperature has nothing to do with the character or quality of beer
    To be mis descriptive, not only must the word refer to an intrinsic character or composition of the product,
      but in addition to being mis descriptive, it must also be deceptively so

Thomson Research associates v. Registrar of trademarks
    This was an appeal from a refusal to register “ultra fresh” in association with bactro and fungostats, and had
     disclaimed any exclusive right to the word fresh
    The words ultra fresh were clearly descriptive of the products function – quality and character of a product
     includes its function
TG Bright v. Institute National
    This was an appeal from a refusal to register bights French house to be used with wines, because they were
      either clearly descriptive or deceptively mis descriptive of the origin of the wares – even with the
      disclaimer of exclusive use of French and House apart from the trademark
    Would the general public of canada be deceived as to the geographic origin of the product?
    Disclaimers can not be used with deceptively mis-descriptive parts of a mark, to render the mark as a whole
      valid where the unregisterable matter is the dominant feature of the composite mark
    Wines that were blended and not pure, would be deceptively misdescribed by the mark
    The reason geographic names are clearly descriptive or deceptively misdescriptive is to not allow a person
      to gain a monopoly over wares of a region or misrepresent his wares as a product of a region

Atlantic Promotions v. Registrar of trademarks
     This was an appeal from the refusal to register “Milan Showergels” because it was deceptively
       misdecriptive of the origin of the product
     Milan was also the name of the registrant and was disclaimed in the application
     Disclaimed portions can not form the basis of infringement action, but they are relevant when considering
       confusion
     Milan, being a famous city, would be immediately understood by persons of ordinary intelligence to be
       meant to be the source of the product – Milan is also the primary meaning of the work as in the city

                                          Name of goods and services
Canadian Shredded wheat v. Kellogg
    Descriptive words may develop a secondary meaning , and thus come to distinguish the wares of one party
      from others – the onus is on the party wishing to establish a secondary meaning
    The words being not only descriptive but also the name of he product, make it very hard to prove that they
      are indicative of the origin of the goods
    Where the word indicated the thing or product and not the manufacturer, what it is composed of not who
      made it, then it can not be registered

                                             Confusing trademarks
Matelle v. 3894207, SCC 2006
   An opposition to register Barbie in association with restaurants, on the basis that even though it related to
        different service and wares, it would be confusing
   The name Barbie has low inherent distinctiveness, being a common name, but has over the years taken on
        a secondary meaning in relation to dolls
   Trademarks have to be used or they are lost (s.45(3))
   In opposition proceedings the court will allow for protection that transcends traditional product lines
        UNLESS the applicant shows that the likelihood that registration will NOT create confusion in the
        marketplace.
   Confusion is defined in s. 6 – what is the likelihood that in an areas where both marks are used, prospective
        purchasers will incorrectly infer that the wares and services, tough not of the same general class, are
        nevertheless supplied b y the same person
            o If there is NO source of a link between the products, there can be no likelihood of mistaken
                inference and no confusion
   Under s. 6(5) fie factors need to be considered in determining whether trademark is confusing in the
        surrounding circumstances
     a. the inherent distinctiveness of the trademarks AND the extent to which they have become known
      i. distinctiveness is the essence and the cardinal requirement of trademark law
     ii. a common word, unlike an invented word, is given less protection
    iii. attention should be paid to the similarities and the differences in the marks
     b. the length of time they have been in use
      i. important in determining whether the mark has really become distinctive
     c. the nature of the wares, services, or business
        i. while marks may leap over these barriers, doing so is a significant obstacle\
       ii. who the target consumer is an important consideration
       d. the nature of the trade
        i. the nature and kind of customer likely to buy the wares and services is a relevant consideration
       e. the degree of resemblance between the trademarks in appearance, or sound or in the ideas suggested
            by them
       f. other surrounding circumstances
        i. Evidence of actual confusion would be relevant but is not necessary, but an adverse inference may be
            drawn from the absence of such evidence, in circumstances where it would be readily available.
       ii. The motivation for the use of the mark, even if it is to gain a benefit by free riding on the other mark, is
            not a relevant consideration

        The frame of reference is the ordinary hurried customer with imperfect recollection of the trademark
        The amount of attention the average consumer pays to the product is relative to the nature of the purchase,
         being a more expensive or a routine item?
        S. 6 allows the extension of famous marks form their areas of activity BUT there must still be a connection
         in the mind of the consumer such that they are likely to be confused as to the products source

Ultraite Laboratories v. Whitehall Laboratories
     The application was for “dandress” for dandruff remover, and opposed by the owner of “resdan”
     Marks are not to be broken into their constituent parts, and confusion is a matter of first impression
     When a trader adopts common words of his trade, some confusion is inevitable, so small changes will be
        sufficient not to be confusing

                                            Official and Prohibited Marks
ICBC v. Registrar of trademarks
    S. 9(1)(n)(iii) refers to any mark adopted and used by a public authority in canada as an official mark for
      wares or services, and need not have he tradition semblance of power, only need to be a mark that is
      authorized by statute or the legislation
    The use of the word MAY in s. 9(1)( n) does not give the registrar any discretion – it is mandatory
    S. 9 in association with s. 11 allows a public authority to appropriate for itself a mark without restrictions,
      and one done others can not use it

Ontario association of Architects v. Ass. Of Architectural technologists, 2002
    To be a public authority it is not enough to be created by statute, there must be the requisite level of
       government control
    The three part test is:
   1. there must be a duty to the public
          a. there must be a duty to the public, but not necessarily a legally enforceable one by public law
   2. there must be a significant degree of government control, and
          a. the statutory origin of a body is NOT enough
          b. what is needed is some ongoing government supervision of the activities of the body
          c. there needs to be a power that enables the government, directly or through its nominees, to exercise
              a degree of ongoing influence in the bodies governance and decision making
          d. the need for legislative amendment is not sufficient government control
   3. any profit earned must be for the benefit of the public and not for private benefit
          a. to determine public benefit court may consider the objects of the body, its duties and powers as
              well as the distribution of its assets
          b. the fact that members as well as the public are receiving a benefit is not fatal

Canadian Jewish Congress v. Chosen People Ministries, 2002
    an official mark grants extraordinary protection and is not limited to wares and services
      an application for an official mark need not demonstrate distinctiveness or secondary meaning, all that is
       needed is that the applicant be a public authority
      one can challenge an official mark under s. 18(1) of the federal courts act – judicial review – and can only
       succeed by proving that the party is not a pubic authority
      to qualify under s. 9 the party has to be in canada and be subject to government control and display a duty
       to the public
      CPM apart from complying with regulations is not subject to government control; it property was not at the
       disposal of the government, it did not receive government funds, and it was no subject to government
       monitoring in any shape or form

Canadian Olympic Association v. Allied Corp.
    Allied was using OLYMPIAN since 1977, and in 1982 was denied registration because in 1980 it was
      published as an official mark by the appellant
    The prohibition of adoption in s. 9 looks to the future (no person shall adopt), and does not retrospectively
      prohibit the adoption of marks – looked at s. 11 and 12(1)(e)
    A mark adopted prior to public notice is not in violation of s. 9, however, s. 12 speaks of the resent, and
      with reference to registration, and therefore renders un-registerable a mark not yet registered the adoption
      of which runs a foul of s. 9, even if the mark is adopted and used prior to the giving of public notice
    Whatever rights flow out of adoption of the mark are undisturbed by the subsequent adoption of a
      confusingly similar official mark, however the right to register the mark is prohibited from the time of
      giving public notice

                                        Distinguishing guise and trade dress
Dominin lock v. Schlage
   A distinguishing guise had to be distinctive at the time it is filed for, and prior use by the applicant and
      others renders it non-distinctive
   Can not disturb established practice in a trade by excluding those already using it

Remington Rand v. Philips
   Features that have functional uses or characteristics can not be subject of trademark, NOR are the ordinary
      consequences of functional uses or characteristics
   The functionality has to be part of the wares in respect to which registration was sought, such that
      registration would grant a monopoly over those functional characteristics of the wares
   The functionality must go either to the mark itself or to the wares in order to render a guise unregistersble –
      secondary functionality, like a telephone number with no connection to the wares does not bar registration

Eli Lilly v. NOvoPharm, FCA 2000
     If the only meaning attaching to the guise, here the shape and colour of pills, is as to therapeutic effect and
        NOT as to a single trade source, then it is not distinctive of the wares of the appellant and not registerable
     The getup of pharmaceuticals des not render in every case represent a trade mark, but must have acquired a
        secondary meaning, such that similar one are likely to lead to confusion – there must be some evidence of
        confusion beyond de minimis

                                                   Certification marks
Defined in s. 2, and set out in s. 23 (registration), s. 24 (confusion with trademark), and s. 25 (descriptive mark).

Wool bureau v. Queenswear
   A certification mark certified good to be of a defined standard and distinguishes those that meet the
      standard from those that do not
   S. 23 limits the adoption of a certification mark to a organization that does NOT deal with the wares with
      respect to which the certification mark is associated - can not be a user of the mark
   It is included under the definition of trademark, thus all consideration apply to it unless the context
      demands otherwise
                                                Non-use of a trademark
Expungement under s. 45

RE Wolfville Holland Bakery
    The purpose behind s. 45 is to trim the register of marks that are no longer in use, and to safeguard the
     protection of the registered owner against unwanted attempts to have it expunged

Plough v. Aerosol Fillers
 Upon application under s. 45, the registered owner must provide affidavit or statutory declaration showing with
   respect to each of the wares and services specified in the registration, whether the mark is in use in Canada
   within the last three years, and if not when it was last used and why it has not been used since that date
 There needs to be evidence before the registrar to justify a finding of non-use, and merely stating that it is used
   by the owner is not enough – the affidavit must SHOW that the mark is being used

John Labatt v. Cotton Club Bottling
    Waiting for more favorable market conditions to use the mark is NOT special circumstances, but rather a
      voluntary act by the owner not to use, and does not fall under s. 45(3)

United Grain Growers v. Lang Michener
 The registrar expunged the mark “country living” because it did not distinguish the owners magazine from
   others
 Under s. 45, the registrar is NOT asked to re-examine whether the trademark is being used for the purpose of
   distinguishing or so as to distinguish – RATHER, he is only to determine with respect to the wares specified,
   whether the trademark, as it appears on the register, ha been used in the tree years prior to the request
 Country living was being used as in s. 4 – marked on the product at the time of transfer or property in the
   ordinary course of trade
 S. 45 is not meant to allow for determination of contested fact, must apply under s. 57 for that

                                           Expungement for abandonment
s. 18 states when registration is not valid, and s. 57 allows for the court to correct the register

Philip Morris v. Imperial Tobacco
    Mere non-use of a trademark is not sufficient to create abandonment, there must be a present intention to
       abandon
    The use and intention to use must be in the ordinary course of trade, and a mark used only as a token basis
       to maintain registration, rather than as an instrument in marketing wares, is not used as a trademark

                                   Use of trademark varying from registration
Registrar of trademarks v. Cie. Internationale
 By use as a composite, the registered owner did not make use of the registered trademark itself, UNLESS the
   make did not loose it identity and remained recognizable despite the difference in form in which it was
   registered and the form in which it was used
 Would a purchaser be likely to infer that despite the difference both marks identify goods having the same
   origin?

Promofil v. Munsingwear
    In order to find abandonment one needs (1) that the mark is no longer in use in canada, and (2) the
      intention to abandon the mark
    The use of a variant of a design mark will constitute use of the registered mark, provided that the variant is
      not substantially different from the registered design – are the dominant features maintained and differences
      trivial and not likely to mislead a purchaser?
                                                      Licensing
S. 50 (1) so long as the owner has under the license direct or indirect control of he character and quality of the
wares or services, then use has and is deemed to always have been use by the owner
(2) notice of license leads to presumption that owner has control over quality and character of the wares

Eli Lilli v. NovoPharm
     S 50 cures the previous problem that use by licensee’s rendered the mark non-distinctive
     S. 50 has a retroactive curative effect and includes oral licenses to use marks

                                                      Assignment
s. 48 (1) states that both registered and unregistered trademarks are transferable either with or without good will of
the business, and in respect to some or all of the wares or services in association with which it is used
(2) states that a trademark assigned to two or more people, and their use, may still render the mark non-distinctive
(3) a transfer may be registered even if the mark is not

Wilkinson Sword v. Juda
    If the trademark does not distinguish the wares of the registered owner from that of others, including that of
       the original owner of the mark, then it is not distinctive
    After an assignment the new owner should give notice to the Canadian pubic that he is the new manufacture
       or source, not the original owner – to avoid confusion in the mind of the public

                                                    Infringement
S. 19 and s. 20

      S. 19 – speak of the exclusive right of the registered owner to use the mark across canada, thus anyone who
       used an identical mark with respect to the same wares infringes s. 19
      S. 20 – deems infringement with respect to confusing trade marks and trade names, and has some
       exceptions

Mido G. Schearen v. Trucotte and Vido Engineering
    To cause confusion under s. 20, one has to look to s. 6 and consider the factors in s. 6(5) – thus the use of
      both in the same area would be likely to lead to an inference that the wares and services are sold by the
      same person

Bonus Foods v. Essex Packers
    The plaintiff owned the trademark BONUS in association with human canned food, and the defendant
      adopted it for use with dog food
    S. 19 does not apply because the mark is not being used in association with the wares as registered
    S. 20 – does NOT require that there be actual use in the same area, nor must there be proof of actual
      confusion – a purely hypothetical inquiry is sufficient because s. 19 gives the registered owner exclusive
      use across canada
    S. 20(1(b)(ii) allows words to be used a an accurate description of the character or quality of the wares in
      such a manner NOT likely to have an effect of depreciating the good will of the mark, if NOT primarily
      used as a trademark
    The court held that BONUS was used primarily as a trademark, and only secondarily referred to the
      premium offered, and the sale of dog food in association with the mark is likely to have the effect of
      depreciating the good will of the mark
    If none of the exception of s. 20 apply, and there is a likelihood of confusion, there is deemed infringement

Pro-c v. Computer city
    If there is no use within canada, and use being used with reference to s. 4- requiring the association in the
       transfer of ownership, then there is no infringement
    S. 20 does not require the use to be within canada, but still has to be use as in s. 4
                                                  Grey marketing
Smith and Nephew v. Glen Oak
    As a licensee the rights of the person are governed by s. 50, and the only rights that a licensee can exercise
       is that of the registered owner, and any defence that the defendant can use against the registered owner can
       be used against the licensee
    The purpose of trademark is to distinguish wares and identify the origin of the goods, and goods which
       originate in the stream of commerce with the owner of a trademark are not counterfeit simply because they
       have arrived in a particular geographic context where the owner does not wish them to be
    There can be no deception as to the origin of the goods, and the quality and character of the goods are
       controlled by the owner
    Absent a contractual limitation stopping the defendants from importing the goods, they are not infringing
       the trademark by importing the goods manufactured by the registered owner
    S. 7 passing off action can only be brought by the owner of the good will of the mark

Heinz Canada v. Edan Food sales
    The plaintiff, unlike in Glen Oark, is the registered owner of the trademark in canada, and the product
      produced in canada differs from the one produced in the US
    There is a likelihood of confusion between the products
    The good need not be manufactures in canada to infringe, only sold in canada in association with the
      confusing mark

                                              Depreciation of good will
s. 22 (1) prohibits the use by anyone of a trademark in a manner that is likely to have the effect of depreciating the
good will attaching to it
(2) allows the defendant to sell the good in his possession, if the court sees fit

Veuve Clicquot v. Boutiques Cliquot, SCC 2006
    S. 20 – the court held there was little of no chance of confusion as to source
    In an infringement proceedings, as opposed to an opposition proceedings, the burden is on the plaintiff to
       prove likelihood of confusion NOT on the defendant to disprove it
    S. 22 – need proof of depreciation of good will
    S. 22 does NOT require the plaintiff to show likelihood of confusion , only that the marks are sufficiently
       similar to their, to evoke in a relevant universe of consumers a mental association of those two marks that is
       likely to depreciate the value of the good will attaching to the appellants mark and has four elements
1. that a claimants registered trademark was used by the defendant in connection with ware or services, whether
   or not such wares and services are competitive with those of the claimant
   a. use is defined in s. 4. – there needs to be a link, connection or metal association in the consumers mind
       between the two marks. Without this linkage there can be no dilution.
2. that the claimants registered trade mark is sufficiently well known to have significant good will attached to it –
   there need to be good will to depreciate, but the mark need not be famous
   a. good will connotes the positive association that attracts consumers toward the owners ware or services as
       compared to those of another, and can include the goof repute associate with a name or mark.
   b. Consider factors including: the volume of sales, the dept of marker penetration, the extent and duration of
       advertising, the degree of inherent or acquired distinctiveness, the extent to which a mark is identified with
       a particular quality, etc. – to determine whether the good will extends beyond the product the mark is
       registered and used for
3. the claimants mark was used in a manner likely to have an effect on that good will – requires linkage
   a. this requires evidence and not speculation
4. the likely effect would be to depreciate the value of the good will – thus damage
   a. depreciation can occur as a result of the lesser distinctiveness that results by other sue of it
   b. depreciation can occur where the defendant created a negative association for the mark
   c. depreciation being possible is not sufficient, there needs to be proof of likelihood of depreciation
Source Perrier v. Fira-less Marketing
    freedom of expression under s. 2(b) of the charter does not include the freedom to depreciate the good will
      of registered trademarks, nor does it afford a license to impair the business integrity of the owner of the
      marks

                                               Unfair Competition

Passing off at common law

Ciba Geigy v. Apotex, SCC
    based on the statement that a man is not to sell his own goods under the pretense that they are the goods of
      another man
    in canada the tort has three elements:
          a. the existence of good will
          b. deception to the public due to a misrepresentation
          c. actual or potential damage to the plaintiff
    a manufacturer must avoid creating confusion in the mind of the public, whether deliberate or not, by a
      getup identical to the of one which has acquired distinctiveness by reason of its getup

Mr. Submarine v. Emma Foods
    the standard to be applied is “that of the ordinary person who is presented in a commercial background with
      a presentation of a product or business, which on first impression, would leave that person, who has at beast
      a general recollection of the product or business of the plaintiff, in a state of confusion as to whether the
      product or business of the defendant is that of the plaintiffs

Oxford Pendaflex v. Korr Marketing
    in an appearance or get-up case, it is not enough to simply say that the appearance of the goods is similar, it
      must be established that consumers have, by reasons of the appearance of the goods of the plaintiff, come to
      regard them as having one trade source, whether manufacturing or marketing, though it matters not that
      they have no idea at all of the identity of the trade source
    all that is needed in the belief in the minds of the consumer, that the good came from one trade source, Not
      that they are the plaintiffs

Erven Warkink v. J. Townend
    the misrepresentation needed for the tort of passing off is the representation of ones own goods as the goods
      of another
    a false representation by another that their businesses are connected, even if not competing, may damage
      the reputation of the other and thus the good will of the other
    this may even occur when a party tries to associate his goods with those of a limited number of traders
      entitled to make use of that name
    members of a class that have good will attached to a particular term that is descriptive of their goods, are
      entitled to have it protected – only good will that has in fact been gained is protected
    it matters not what the recognizable and distinctive qualities that have given rise to the good will are so
      long as there is:
        (a) the definition of the type of product,
        (b) establishing that it has qualities which are recognizable and distinguish it from every other type of
        product that competes with it in the market and which have gained for that market a reputation and good
        will, and
        (c) establish that the plaintiffs own business will suffer more than minimal damage to its good will by the
        defendants misrepresentations of his product being of that type
Orkin Extermination v. Pest co
    Ooking owned ORKIN in the US but did not carry on business in canada, though it has some reputation in
      canada because of spillover advertising
    Orkin was entitled to succeed under passing of to protects its good will in canada
    The damage here, since no business is carried out in Ontario, is the damage to orkin’s ability to control the
      impact of its trademark when it comes to canada
    There must be proof of significant potential purchasers in the territory where the imitator is using the mark,
      who are likely to be confused or mislead by the use
          o It may be presumed form the use of the mark that there were consumers to be mislead and that the
             name had good will

Statutory passing off under s. 7(b)

Asbjorn HOrgard v. Gibbs
    This is not limited to registered trademarks but also protects unregistered marks
    S. 7(b) has three elements
         o the direction of public attention to his wares, services or business
         o in such a way as to cause or be likely to cause confusion in canada
         o at the time he commenced so to direct attention to them, between his wares, services or business and
             wares, services, or business of another.
    s. 6 deals with what is deemed to be confusion – and if some evidence of confusion is presented it is
      appropriate to draw the inference of likelihood of confusion

Molson Breweries v. Moosehead breweries
   confusion under s. 7 requires the goods to be used in the same area, since s. makes reference to the same
      area (THIS DECISION IS NOT IN LINE WITH OTHER DECISIONS THAT STATE THAT THIS IS A
      HYPOTHETICAL INQUIRY, AND THERE IS NO NEED FOR ACTUAL CONFUSION TO BE
      PROVEN)

								
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