trademarks craig f05 2 by CF6hC8G

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									   What is a Trademark?
   Gives the owner of the trademark the exclusive right to use that symbol in relation to that
    product/service
   Trademark law recognizes what entrepreneurs do with their logos, and protects them and the
    public from confusion in the market
   Describe them in terms of their function, and therefore a trademark can be anything that is capable
    of acting in that way- even a phrase, word, etc.
   Tm law isn’t there to encourage or reward the creation of the mark- no one cares who actually
    develops the logo- tm recognizes the way that that logo functions in the market place and it is
    protected because of its recognition to the consumer
   Tms are more than an indicator of source; they protect the brand, the message of the brand, and
    the ability to pack associations into a brand; the ability to market a product
   Source theory:
   Trademarks to indicate the source of the product in the marketplace
   Guarantee theory:
    The reason why we care about trademarks that indicate source, guarantees quality in turn- if you
    know you like Dove products, when you see the Dove mark, then you can expect Dove quality
   BUT the validity of a mark depends on the ability to indicate SOURCE- not the ability to indicate
    quality
   Passing Off:
   The infringement of a trademark right in the common law
   When dealing with unregistered marks, passing off is a TORT
   Passing off one’s wares or services as being that of another trader (aka. Free-riding)
   Defendant is presumably seeking to gain from the plaintiff’s reputation in the marketplace even
    though they have not earned or deserved it
   The question of INTENTION is IRRELEVANT
   What matters is that the public is MISLED
   A private law matter between the traders; the public has no action
   Common law of trademarks serves to protect traders in the marketplace; and the potential loss of
    control over their brand in the marketplace
   Use:
   The validity of any mark and the existence of any right depends upon use of the mark in the
    marketplace; both in the common law and in the statutory system
   Distinctiveness:
   To do with the quality that allows the mark to distinguish the trader
   The mark must be distinctive in order to indicate the source of the product
   Confusion:
   What underlies the trademark system- the key to the tort of passing off
   The public must be confused in order for there to be an action
   Association:
   In the common law the right exists only so long as the association does
   There is only association so long as there is use

   Jacoby Article
   The unconscious thought process is the most important, and may be what makes you choose one
    brand over another
   All trademark law is premised upon human states of mind and assumptions about how the
    consumer’s mind works when faced with a symbol
   Process of thinking is one of spreading activation; creates info chunks by activating a single core
    node
   Marketers try to pack as many positive, associative feelings into that core node as possible
   This affects distinctiveness, use and confusion; all dependant on the working of the human mind
    and the way that we store information
   The capacity of the trademark to chunk the information is related to the worth of the trademark
   Posner Article
   Encouragement to invest in the creation of a brand rather than creation of a quality product
   Creates problems for the consumer who is not reaping the benefits of that brand
   Kazinski Article
   Trademarks are a product in themselves
   Manufacturer’s logo is an integral part of the product, as impt or more impt than the product itself
   The signaling function vs the expressive function
   If we begin protecting the expressive function, by preventing use of the mark for expressive
    purposes then we are regulating expression
   Discusses moral claims over trademarks- the Lockean fruits of labour concept
   The person who created the brand should have the right to benefit from it
   Rolex and Mets examples
   Utilitarian aspect- that tm rights fulfill a purpose and have a utility and should therefore be
    protected;
   Keith Aoki article
   We increasingly see trademarks as a form of author that creates a brand
   Tms as property in themselves, and protecting them as such rather than as indicators of source
   The scope of protection is therefore much wider


Classic Passing Off

   Powell v Birmingham Vinegar Company (Yorkshire Relish)
   Yorkshire relish- sauce made with secret recipe- very profitable business
   The use of the words YORKSHIRE RELISH and the packaging are the distinguishing features
   The defendant also calls his product Yorkshire Relish; different recipe; similar packaging
   The standard: the ordinary unwary customer- would they be misled by the mark on the defendant’s
    product?
   The right: to use the mark in connection with the goods, and to prevent deception
   The job of tm law is ONLY to protect the mark to the extent that it indicates the source of the
    product
   Everyone may use the words Yorkshire Relish, but not to the extent that it would cause
    CONFUSION as to the source of the product
   If the simple use of the words Yorkshire Relish results in confusion, that is passing off
   The differences between the products are not enough to avoid confusion
   Therefore the defendant is trading on a reputation he has not earned
   The interest is in the GOODWILL attached to the mark; the property is therefore in the goodwill
    and not in the mark itself
   POLICY ISSUES: freedom in the marketplace vs freedom from unfair competition in the
    marketplace
   The more the court intervenes to make competition more fair, the less fair it may be (like if we
    prevent the use of the words, then they may not be able to compete at all!)
   CONCLUSION: if it is impossible to use the words Yorkshire Relish without causing confusion,
    then they may not use them, even though we may be allowing a DE FACTO MONOPOLY over
    the words in the marketplace

Extended Passing Off

   Erven Warnick BV v J Townend & Sons (Advocaat)
   The kind of confusion is not between different sources in this case, but between different TYPES
    of wares that are represented as being the same
   Advocaat- significant reputation, lots of advertising; responsible for the popularity of the drink
   Egg flip- made with wine and not spirits; call it Old English Advocaat
   Capture a sizable portion of the market; free riding and benefiting from the Advocaat brand
   There is NO CONFUSION about the SOURCE- people knew that they were not buying the
    original Advocaat
   BUT CONFUSION over the NATURE of the product- they thought that they were getting the
    SAME PRODUCT as Advocaat, the same quality of ingredients
   The use of the name Advocaat by the egg flip people was misleading the public; damage to the
    plaintiff by way of sales, reputation and goodwill that they had earned over the years
   5 PRONG TEST FOR PASSING OFF:
   1- that there is a misrepresentation
   2- that the misrepresentation is made by a trader in the course of trade
   3- that the misrepresentation is made to prospective customers/ultimate customers
   4- that the misrepresentation injures the business or goodwill of the trader
   5- that this causes actual damage to the business or good will of the trader
   To qualify as passing off these 5 elements must be present
   The misrepresentation must be significant- not just “trade puffery”- but should include any misrep
    that is material to customers where the misrep is likely to cause the plaintiff harm
   POLICY: concern over hampering competition between rival traders; but passing off should apply
    even though the goodwill may apply to an entire class of traders
   SO in extended passing off there must be a DEFINABLE CLASS of traders
   The reputation attached to the TYPE of product is relevant, NOT the reputation attached to
    INDIVIDUAL traders


   Eaux de Vie v St Andres Wines (Canadian Champagne)
   It used to be required that those manufacturers that sold sparkling wine under the name
    champagne had to call it “Canadian champagne”
   When the signifying function of the mark becomes muddied by other people using it you have no
    more claim to the mark
   Passing off is intended beyond its original meaning to encompass the use of the word champagne
    to induce customers to believe that what it indeed being sold is actually champagne and not
    sparkling wine
   In this case no customer is actually being misled; they don’t actually believe that they are in fact
    buying champagne; and without misrepresentation there is no tort!
   The word champagne has been diluted over the years of use of the word by the sparkling wine
    people and no longer signifies that source to customers
   The reputation attached to Canadian Champagne shows that the word champagne no longer has
    the meaning it once had; people are buying it expecting Canadian sparkling wine!
   There is ONLY a tortious act if there is CONFUSION

   Cadbury Shweppes v Pub Squash Co.
   What we are protecting is the goodwill that attaches to the mark as an indicator of source
   Solo lemon drink; lots of advertising; rugged masculinity and nostalgia concepts
   Adverts had enormous impact; the drink was very popular!
   Defendant launched its pub squash with the same advertising themes; Solo loses sales
   The court agrees that the common law of passing off may embrace advertising but that material
    must have a distinctive character and the use by someone else would have to create confusion
   The themes were never a distinguishing feature of the product; that people do not automatically
    associate the theme of masculinity with Solo; not an identifier of the product
   A defendant does NO WRONG by entering the market of another, and trademark law should not
    interfere with free and fair competition
   Was the public misled by the packaging, formula and advertising of the defendant’s product into
    believing that they were buying the plaintiff’s product to qualify as passing off
   The court finds that there is NO CONFUSION; that buying a can of lemonade is a casual purchase
   But even though this is a casual transaction people are still not confused!
   Even though the defendant has successfully capitalized on the plaintiff’s market, and done them
    harm as a result there is NO TORTIOUS ACT!
   POLICY: fair competition and good consumer information VS free competition and greater
    consumer choices
   Consumers Distributing v Seiko
   Seiko Canada has the sole right to distribute the watches to dealers
   CD is not an authorized dealer of STC in the marketplace, but began to import them and sell them
    (lawfully obtained from a diverting distributor)
   Guarantee is only effective if watch purchased from an authorized dealer; and so the guarantee is
    void if the watch comes from CD
   CD posted a notice in the store that they were not an authorized dealer
   But Seiko want to be the exclusive dealers with no competition; argument that because they are
    trading on the goodwill of STC, then they would be deceiving the public
   That STC is not just selling a watch but the whole package including a particular level of service
    and guarantee and that CD is damaging goodwill by selling just the watch
   The CA found that CD was benefiting and deceiving the public; but this conclusion was entirely
    unsupported by the evidence; there is no confusion that caused people to believe that they were
    buying a watch from an authorized dealer and therefore no confusion and no passing off…
   Ultimately the choice is the consumer’s as long as they are not being misled
   POLICY: Cannot deprive the public of the choice to buy a watch from an unauthorized dealer if
    they so choose; otherwise you are creating a monopoly!

   Reckitt and Coleman v Borden (Lemon Juice)
   The only company in the British market selling lemon juice in squeezy lemons is Jif- extensive
    reputation and goodwill; brand loyalty
   Claim that the lemon is a DISTINGUISHING GUISE that identifies them in the marketplace as
    the source of the product
   Defendant tries to sell their juice in a squeezy lemon bottle too- try to distinguish with a tag and a
    different coloured top
   The Three Prong Test for Passing Off:
   1- plaintiff must establish good will or reputation attached to the goods or services in the mind of
    the purchasing public by association with the relevant indicia (the trademark)
   2- the plaintiff must establish a misrepresentation to the public likely to cause the public to
    associate the defendant’s product with the plaintiff’s product
   3- the plaintiff must demonstrate that he suffers or is likely to suffer damage from the resulting
    confusion
   The plaintiff would have to show that the lemon get up is in the minds of the public distinctive of
    Jif lemon juice and is associated exclusively with the plaintiff
   Also would have to show that the D’s proposed get up would amount to a misrepresentation likely
    to mislead the public into buying D’s product thinking it was P’s
   It is not material that someone tries to distinguish their product; if that one distinguishing feature
    is enough to mislead then that is all that is needed for passing off; in this case the lemon was so
    distinctive of Jif, that the use of it in any way is enough to cause confusion
   The court is satisfied that the public does associate the lemon guise only with Jif
   The plastic lemon is not the product; the product is lemon juice; therefore there is no monopoly
    issue; anyone is still free to sell juice- just package it in a way that is not misleading to consumers
   Functionality issue- you could just create another bottle; it would still work, it just can’t look like
    a lemon
   Descriptiveness issue- the initial meaning may be merely descriptive, but use in the market over
    time has caused it to acquire secondary meaning as an indicator or source; so worthy of protection

   Ciba Geigy Canada Ltd. v Apotex Inc.
   Get up- the whole visible external appearance of a product in the form that they are likely to be
    seen in before purchase
   The get up has to acquire a reputation and become an indicator of source in order to be protected
   Pink and blue tablets- the D is now trying to sell their generic version with the same guise
   Argument that confusion is likely to result from the use of the same guise, and it will affect
    physicians, dentists and pharmacists who buy it and prescribe it; not the ultimate patient that takes
    the drug, because they do not choose which drug they get
   If there is no possibility of choice then there is no possibility of confusion
   CA says that it is wrong to dismiss the ultimate consumer in the action- passing off is meant o
    protect ALL PERSONS affected by the product
   Employ the Reckitt 3 prong test: goodwill, deception, and actual or potential harm
   Explore the idea of ownership in the trademark context
   The trader has a proprietary interest in the goodwill of the business, and that has to be protected
    without impairing the free market system; the assumption that flows is that ultimately everybody
    benefits; passing off is not just about the manufacturer; its about safeguarding the rights of the
    public
   People may have reasons for choosing one product over another and those reasons have to be
    respected
   It IS passing off for a manufacturer to enable a distributor to mislead a consumer
   The patients therefore MUST be included in the category of people to be misled; otherwise would
    be deprived of the means to protect themselves through information
   Court satisfied that there was distinctiveness in the get up, and the distinctiveness was an indiactor
    of source, and that it represented goodwill, and that confusion was a possibility
   POLICY: potentially very damaging ti the manufacturers of generic drugs and ultimately to the
    public interest who end up lacking choices, and the health care system that will have to fork over
    for brand name drugs

   Orkin Exterminating v Pestco
   Orkin’s reputation not limited to the geographic area where they operated
   When Canadians traveled to the US they encounter that reputation, and thousands of Canadians
    have properties in the US
   Issue is loss over the impact of the name in the D’s jurisdiction; would potentially lose Ontario
    customers that it now has in the US, and future Ontario customers too; and potential loss of use of
    the trade name when they actually do want to expand into Canada
   Damage would be to reputation; an interest that deserves protection
   D has never acquired any rights with respect to the Orkin mark
   POLICY: that the public should be protected from confusion with respect to the source of the
    product; no concern over a right to compete- there are infinite names to choose from!
   Court saw that because there was confusion, they infer that there is reputation
   The fact that P chose the name at all is evidence that there is reputation in the name (weak
    reasoning, because you will then find reputation in all cases!)


   Ray Plastics v Dustbane Products (snow squeegee)
   The more unique the guise, the more distinctive it is
   Court relies upon clear intentional copying
   The direct attempt to mimic the black and yellow unique guise is evidence of the distinctiveness
   There were prospective customers to be misled (Orkin)
   Even though intention is not supposed to be relevant the court uses intention to infer requisite
    reputation…is this appropriate? Logical?



   Walt Disney Productions v Fantasyland Hotel Inc.
   There were numbers that suggested that some people were misled, but the further away from
    Edmonton, the less of a connection between the mall and Fantasyland
   Are there a SUBSTANTIAL number of people who are confused? Must be an appreciable
    number, enough to overcome the de minimis rule
   The relevant confusion is not that the mall is actually run by Disney- its confusion that there is a
    business connection (through being a licensee or a subsidiary) and that is enough to be actionable
   The stronger the public think that trademark law is, then the stronger it actually is; the public
    creates the rights in this way
   The use of the name Fantasyland causes people to think that there is some sort of business
    association with Disney, and this amounts to confusion
   Direct loss of trade or diversion of business is not the issue- it’s the loss over the CONTROL of
    the impact of the tm
   Any deficiency in the services provided by the mall may cause people to associate that with the
    services provided by Disney in their theme parks; potential harm to Disney’s repuatation

   W&H Ventures v Manitoba Lotteries Corp. (Michel’s Baguette)
   If you actually put into evidence the costs that are spent on advertising, then those figures would
    be more likely to show that you have established a reputation in connection with the mark
   It is not enough to say that your business is long standing and successful; that doesn’t mean that
    the mark is attached to you, or a certain reputation; there must be an association proven with the
    mark that you are trying to protect
   Substantial sales do not necessarily go to the strength of the mark, or even a reputation in the
    marketplace; and certainly do not show a reputation associated with a tradename; the success may
    be attributed to other factors that do not necessarily have anything to do with the brand
   What really matters is if the loss of sales is caused by confusion; not any external factors, or fair
    competition;
   The key is whether there is CONFUSION that would result in damage

   Kisber & Co. v Ray Kisber & Associates
   Fear that the reputation he has established will be affected by his brother using the same name
   But Kisber is just a name; so the onus is heavy on the plaintiff to show that the name is in fact a
    trademark capable of distinguishing a particular source in the marketplace
   Because anybody else in the marketplace with the same name could sell the same thing;
   The name is not associated with liquidation sales by the consumers; and so advertisements will not
    be enough
   You have to demonstrate the effect of the advertisements of the public
   Majority judgment: impressed found that there was a reputation that was attached to the name
    Kisber in the market of liquidation sales
   The defendant was intending to usurp the goodwill that was attached to the name; there was no
    attempt to differentiate from his brother’s business that was already well known
   Evidence of actual confusion through anecdotal evidence; clients who had used the defendant’s
    services and been unhappy with them, but thought that he was receiving the services of the
    plaintiff
   You have to sufficiently distinguish yourself if you want to use the same name
    Should be allowed to compete in the same market, and use your own name, but in doing so you
    cannot cause confusion
   NB: Confusion might be more likely if the products are interchangeable
   When dealing with the same field of activity it is more likely that we are dealing with a classic
    passing off scenario;
   When dealing with different categories then the damage would be more the loss of control over
    ones reputation, rather than a diversion of sales

   McCulloch v Lewis (Uncle Mac’s Puffed Wheat)
   The plaintiff brings action on the basis that the cereal people are attempting to cash in on the
    reputation and goodwill established by the character Uncle Mac
   This is not something that is owned; you can’t stop the use of the words Uncle Mac in any field of
    business; where is the confusion?
   The problem is that the plaintiff is selling nothing;
   This case is before the time of endorsement; when a public personality is associated with a product
    it should be with their permission; and the personality in that case is in itself a commodity and has
    value in the marketplace; and that person has to have control over their personality in the
    marketplace
   The lack of publicity rights, rights in personality at the time of this case
   This case emphasized the necessity of classic passing off; the argument is that what is needed is to
    show connection between the 2 businesses;
   Even in terms of extended passing off there is a common field of activity involved; so according to
    this case, when there is not even a REMOTE connection between the businesses then there can be
    no passing off;

   Harrods Ltd. v Harrodian School
   P sells wares of every kind and so it is true that their commercial activity is virtually unlimited
   Yet, that does not mean that they have acquired a reputation in every field
   Passing off does not give a proprietary right in the mark itself- there is no exclusive right to the
    word “Harrods” but only the goodwill attached to the name
   The court is emphasizing that they have not acquired a reputation and goodwill that would extend
    to the name of a school
   The name may be recognized by everyone; but that does not mean that it will be connected with
    the trademark owner in every case and for every activity
   The court finds that there is no passing off here
   It is not that the absence of the common field of activity is irrelevant but rather that it is not fatal;
    it is still useful in determining likelihood of confusion and damage (not whether you have a
    reputation)
   Conclusion: that the absence if any common field of activity was not of particular significance, but
    there is no relation between the reputation in the retail sphere and the running of a school such that
    people be misled that the school was being run by Harrod’s
   Court believed that these 2 spheres of activity were as far apart as possible
   Craig: that the dissent is more convincing
   That it would not have been allowed for the school to be called Harrod’s School and that
    Harrodian is simply an extension of the word; and so there is passing off
   The dissent is not convinced that the difference in field of activity is enough to avert possibility of
    damage and confusion because all you need for passing off is a SUGGESTION of confusion
   NB: the job of the court is not to protect every potential market for the plaintiff; there is Air
    Harrod’s and Harrod’s Estates…but we have to ask if the court is actually limiting the scope of P’s
    market
   The more famous a mark is, the more likely it is to cause confusion, and the more likely the court
    is to protect it despite divergent fields of activity; in this way the mark can become a monopoly in
    itself across every field of activity

   Visa International v Visa Motel Corporation
   The mark at issue is a graphic logo (the 3 bands) and the word mark VISA, and the Visa company
    is asserting that they have a reputation in both
   Motel offices designed in a manner that resembles the Visa logo
   D’ argument is that the mark is being used in completely different sectors and that despite the
    similarity of the marks no one is going to assume that the motel is being run by Visa
   Court makes a point of noting that common field of activity is critical
   What matters is the potential false association that could damage P’s reputation and goodwill
   Court finds passing off despite the divergent fields of activity
   Craig: not surprisingly because of the fame of the Visa mark
   The point is that Visa did not have to show that they were involved in that field because confusion
    would be likely despite lack of a common field of activity

   Walt Disney Productions v Fantasyland Hotel Inc.
   Concerned with the right of the D to use Fantasyland in association with a hotel attached to the
    mall- a divergent field of activity
   Disney cannot establish that it has a right attached to hotels; trader does not have the right to
    protect all services
   P argues that it doesn’t matter that there is no reputation in hotels because they have already
    established a real connection/association with the word Fantasyland and any use is confusion
    which will result in loss of control over the reputation
   Court decides that P does not have a right to the name at large (follows the Harrods case)
   It is not enough to establish reputation by asserting the “cashing in” theory
   The court says that they have not met the requirements of the Reckitt trinity
   P didn’t establish reputation in hotels, and so there is less likelihood of confusion and therefore no
    damage
   BOTTOM LINE: common field of activity goes to CONFUSION NOT REPUTATION

   The Statutory System
   Problems with the common law system:
   If you want to bring an action to restrain the improper use of trademark, its expensive, delayed,
    and difficult because of the amount of evidence to be gathered
   The person under the common law is in a disadvantaged situation;
   The statutory scheme:
   Recognizes the registrants EXCLUSIVE RIGHT to use the mark that is registered
   And that means that they don’t have to establish their reputation every time they want to defend
    their mark, and only have to establish distinctiveness ONCE if at all in order to register
   And then they are protected by the rights that flow from the statutory registered protection
   Allows competitors to operate without risking liability; and gives them systematic ways to
    discover who is using what mark
   Protects good faith entrepreneurs from making trademark infringements when they would not
    want to make those infringements!
   The statutory system is a federal system, and the common law operates at the provincial level
   In terms of efficiency you don’t want people to invest a lot of money in a trademark only to
    discover after the fact that someone has already been using it!
   So the statutory scheme allows research of existing registered trademarks so as not to waste the
    initial expense
   Even if you are dealing with a registered trademark, always consider what the passing off action
    would look like if the validity was called into question using s7 (on the exam too)
   But its still true that no market reputation has to be shown at any point; we care about use, but not
    about what reputation that use has entailed
   Common law passing off will only protect a symbol in the particular locality in which it has been
    in operation; so very geographically limited- BUT when you register a trademark the protection is
    NATIONWIDE- against anyone across the country using a confusing mark
   The registration increases not only the geographical scope, but the extent of the rights that you are
    given too
   The main infringement provision that makes it clear that we have a national monopoly is s19-
    gives the owner of the trademark the EXCLUSIVE RIGHT throughout Canada for the use of that
    mark; therefore no one else can use your trademark whether or not they are able to distinguish it,
    because your right is completely exclusive
   NB: Your rights that flow from the registration are not in the mark itself, but in the mark when
    used in association with particular products or services

   Registrability of Marks
   S38 (2)b- a statement of opposition may be based on the ground that the trademark is not
    registrable- so what makes a trademark unregistrable?
   S2- to be registered, something has to be a trademark! A mark that is used by a person for the
    purpose of distinguishing wares or services sold, leased, hired or performed by him from those
    sold leased, hired or performed by others
   Has to be capable of distinguishing- and so by definition if it is not distinctive, it is not a
    trademark
   Distinctive- actually distinguishes the wares, or is adapted so to distinguish them;
   Basically- Is the mark inherently capable of functioning as a trademark and is it capable of
    actually distinguishing sources in the marketplace?
   Registrar of Trademarks v Coles Book Stores
   S12a- cannot register a mark that is primarily merely a name or surname of an individual alive, or
    dead less than 30 yrs ago
   S12b- cannot register a mark that is merely descriptive
   BUT if you can show that the word, etc. has acquired a meaning OTHER than merely descriptive
    or a primarily merely a name, then it is possible to register it under s12(2)
   Application to trademark the name Coles refused on the basis of s31b- registrar refuses it because
    the trademark is NOT registrable because its is primarily merely a surname
   Reasoning of the trial judge is that Coles is NOT primarily merely a surname because it has
    another meaning- an old English word meaning “cabbage”
   And because Coles has a dictionary meaning, Cole is not merely a surname, and therefore should
    be registrable
   This decision was appealed; and the court said that this was not the point; the question to ask is
    whether the mark is PRIMARILY MERELY a name/surname
   The court is looking for the CHIEF principal meaning of the word-and that is NOT that Cole is a
    cabbage- the PRINCIPAL meaning is that it is a surname
   Looked at the Standard Oil case at the word FIOR- which was derived from the industrial process
    used- but there were a couple of people with that word as a surname
   On appeal it was held that the ordinary Canadian consumer educated in English or French would
    not respond to the mark primarily as a surname
   A person in Canada of ordinary intelligence would not be likely to know that Coles has a
    dictionary meaning, and would respond to the word as a surname- and so the word Coles IS
    PRIMARILY merely a surname
   Have to begin with the words “primarily merely”- therefore we are looking for the dominant
    characteristic of the word

   Galanos v Registrar of Trademarks
   Want to register the word Galanos as a trademark
   The court does not accept the position that the application should be rejected just because its his
    own surname- but the real question remains whether the mark is PRIMARILY MERELY a
    surname
   Galanos does have another meaning in Spanish- it means “elegant”
   Uses the Standard Oil reasoning-
   1-is the word a surname?
   2-Is it MERELY a surname?
   3-If it has another meaning is it PRIMARILY merely a name?
   Because the standard is an ordinary Canadian educated in English or French then the Spanish
    meaning of the word is not really applicable
   There are 3 categories of words potentially at issue:
   1- dictionary words
   2- names
   3- invented words
   Another potential category:
   4- unknown foreign words that would be unknown to the ordinary Canadian
   If that meaning has no significance to the average Canadian, then that word may as well be
    invented
   The court finds that the word Galanos has no dictionary meaning in French or English- but it
    doesn’t necessarily follow that its primarily merely a name- still have to determine the response of
    the ordinary public
   Because the word is a foreign word, it can be described as an invented word sought to be used as a
    trademark;
   A Canadian of ordinary intelligence would be AS LIKELY to think of it as an invented word or
    the name of a brand, as thinking of it as a name of an individual
   When names are not common then they MAY be registrable even if a couple people do have that
    surname, because it can function as an invented word
   So it is registrable under s12(2)
   Gerhard Horn v Registrar of Trademarks (Marco Pecci)
   At issue is whether you can register a name that is just made up, and not the name of an individual
    living or died in the last 30 years
   The name Marco Pecci is made up just to have a name that sounded Italian
   Problem- it is a name, and so you would think that it could not be registered- BUT it’s a
    FICTITIOUS name
   The Registrar argues that consumers can not distinguish between fictitious or actual names- and so
    the general public would assume that it is a name
   BUT on appeal, the judge focuses on the fact that the name must be of an INDIVIDUAL
   And there is no evidence of an individual with the name Marco Pecci!
   And so the name of a fictitious person is not precluded from registration unless it is by chance also
    the name of an actual person!
   The first and foremost consideration has to be that the name is ACTUALLY the name of an
    INDIVIDUAL who is alive or has dies in the last 30 years- this part of the provision is actually
    important- the drafters of the statute would not have included this provision if they didn’t want it
    to be used
   So there is a rule that:
    If something is a name or surname that belongs to an individual, it may not be registrable
   And if it is, THEN you consider if there is another meaning
   And if it HAS another meaning consider what is the PRIMARY meaning recognized by the
    ordinary Canadian public

   Descriptive/Deceptively Misdescriptive Marks
   S12 (1) b- a mark is registrable if it is not clearly descriptive or deceptively misdescriptive…
   Concern about the ability of a mark to actually distinguish the source of a product
   common word having reference to the character and quality of the goods cannot be a method of
    distinguishing one mark from another;
   In other words, if your mark is clearly descriptive, it cannot be distinguishing
   Concern over equality of traders- the scope of the monopoly is a concern
   You cannot have a monopoly over descriptive words
   Whether or not a mark is descriptive has to be determined in relation to the product that it is
    describing; it depends upon the wares to which it is attached
   Concern for the public too- not good if they are being misled about the origin/character of a
    product; but more focus on the concern over the equality between traders
   If someone has a deceptively misdescriptive mark they may prevent others from making accurate
    descriptions of their own products
   Something must be CLEARLY descriptive- plainly, easily understood as descriptive- plainly
    intended to be descriptive
   but businesses WANT their trademarks to have evocative qualities of their product; so there is a
    fine line between CLEARLY descriptive and merely EVOCATIVE
   deceptively misdescriptive- if it is likely to deceive the public about the character or the source of
    the wares- qualities that the product may not actually have
   it can be hard to find a happy medium between being clearly descriptive or deceptively
    misdescriptive- but keep in mind that trademarks that do either of these things are weak- they
    cannot be distinctive
   the character or quality, the conditions of the persons employed in the production of the wares, the
    place of origin or the products or services are the things that have to be misdescribed or described
    in order to be within the character of 12 (1) b

   Procter & Gamble v Nabisco Brands Ltd.
   Mr Christie’s Crisp and Chewy
   That the words crisp and chewy are clearly descriptive of the product
   In terms of the Mr Christie part of the mark, Christie is primarily merely a surname and so
    therefore not registrable
   But the mark is not ONLY composed as a surname- the WHOLE mark is Mr Christie’s Crisp and
    Chewy
   Although crisp and chewy may be misdescriptive or descriptive, the WHOLE mark is not
   The final ground of opposition is that the trademark is not distinctive, or capable of distinguishing
    the applicant’s products from other traders called Christie who have crisp and chewy cookies- its
    just a name plus a description, and that is not inherently descriptive
   But the Christie brand is already famous and well established, and recognizable by most
    Canadians- a significant degree of ACQUIRED distinctiveness in association with the mark;
   Remember that the prima facie rule against Registrability goes to its INHERENT distinctiveness-
    and that distinctiveness MAY be acquired through USE- as in this case

   Deputy Attorney General of Canada v Biggs Laboratories (Shammi)
   Registration of the trademark “shammi” for a polyethylene glove
   Genuine “shammi” Utility Glove- but it does not contain one scintilla of shammy!
   So if consumers seeing the mark believe that the product contains shammy, then they are being
    misled
   Mislead the public as to character, quality or COMPOSITION- so it’s a deceptive misdescription
   Not registrable
   You cannot avoid the implications of 12 (1)b simply by changing the spelling of a word because
    of the “depicted, written or sounded” part of the provision- if you would sound the mark as
    “shammy” then it has the same effect regardless of the way it is spelled
   Even if the product DID contain shammi it still would not be registrable because then it would
    violate 12(1)b for being clearly descriptive!

   Atlantic Promotions v Registrar of Trademarks (Milan Showergel)
   The product does not come from Italy- and furthermore, Milan is the name of the person who
    owns the company
   But they have disclaimed their right over the word Milan, but what they want to register is the
    whole mark of Milan written in that particular script
   So you have to look at the mark in its totality
   The use of the word Milan itself could not be the basis of the problem- but the problem is whether
    the mark is still confusing with that word written in script form
   The court finds that even in script form the word Milan is still a word and there is nothing about
    the way that its written that really detracts from it being really a word- the particular style of type
    is devoid of any real particular irregularities that prevents the word from being interpreted in a
    particular way
   The element of deception is crucial to their reasoning in the case- if you are CLEARLY
    misdescribing your product- then it might be OK! The more clear the MISDESCRIPTION, the
    less deceptive that it is!
   The court finds that a geographic word is either descriptive or misdescriptive- that Milan is such a
    well known place that it has a geographic significance that is overwhelming
   And so the ordinary Canadian when faced with that word, WILL think that of it as a geographic
    place
   And so the trademark is not registrable because either it described the product as coming from
    there, or misdescribes it because it doesn’t come from there

   Pepsi Cola v Coca Cola
   Although terms may be descriptive, the way that they are joined and written in a particular way
    may render them registrable, and not foul of 12(1)b
   The words when joined together in this form are capable of forming a trademark, distinguishing a
    particular source
   But there is no monopoly over any one of the terms- its only over Coca-Cola, the two words
    together in a particular script
   When the only similarity between the marks is “cola” because it is a descriptive term, and not
    distinctive; establishes the scope of the rights that the trademark owner can assert; you cannot
    have a monopoly over the word cola in itself
   you can create a compound mark that may be enough to overcome the 12(1) b prohibition
   descriptive + descriptive + script in which its written = distinctive
   Home Juice v Orange Maison
   Attempt by defendant to register Home Juice
   That its confusing because it’s a literal translation of Orange Maison into English
   Then Home Juice tried to strike out the Orange Maison as being clearly descriptive- colour, and
    home made (quality)
   They want to restrict the mark Orange Maison to use in Quebec, so they could use Home Juice in
    the rest of Canada- because the trademark would be limited to the area in which they have
    acquired distinctiveness, acquired reputation; the reality is that they have only used their mark and
    acquired their reputation in Quebec
   They argue that the usage of Maison is irrelevant because it is not a descriptive meaning in
    Quebec French as it is in France French
   But the court says that English and French have to be considered in their entirety because they are
    international languages; can’t take into account al different dialects; have to look at just French, on
    all levels of French
   The adding of the words “jus de” is irrelevant, because they are already clearly understood through
    relation to the product
   Descriptiveness is assessed in terms of relatedness to the product- if and so in this case Orange is
    an elliptical description of the character of the wares; something is an ellipsis if it lacks words
    needed to complete the meaning; words are omitted that are necessary to complete the entire
    meaning
   Orange is an ellipsis because it does not say “jus de” but in connection with the product we can
    understand, and fill in the gap
   Is this use of ellipsis enough to avoid the s12 (1) b prohibition? The court says no; you can’t just
    misspell a word or use an ellipsis in order to render an unregistrable mark registrable
   Together all we have is a mark that means good quality orange juice; both words together are
    STILL inherently descriptive of the product

   S.C. Johnson v Marketing International Ltd.
   Concern over the Registrability of the trademark “OFF!” when used in connection with bug spray
   The defendant is using BUGG OFF!
   Want to strike the original mark (OFF) for being invalid and unregistrable in light of s12(1)b- they
    said it never should have been registered in the first place
   The court looks at the meaning of OFF in the dictionary- removal, to ward off, etc. and so the
    word off is descriptive of a substance for driving something away
   OFF, being elliptical is registrable as a word standing alone with an exclamation mark
   just OFF alone is elliptical because you don’t know what it refers to if you’re looking at just the
    mark on its own
   without additional words it cannot be clearly descriptive
   this may be contrary to the reasoning we just saw in Orange Maison
   the trial judge failed to consider that it was an elliptical use of the word but in association with the
    repellant it is clearly descriptive of the wares- in association with the repellant, it is a clear
    reference to the product, and clearly descriptive
   the court disapproves however on the attempt to monopolize such a commonly used word
   concerned that the plaintiff is claiming an exclusive proprietary right in the word OFF for insect
    repellant- they are claiming something not claimable
   you would be withdrawing from use the most apt and descriptive words for this class of words
   the SCC is criticizing the trial judge for failing to give enough recognition to the commonality of
    the word, and how often they are used by traders

   Fiesta BBQs v General Housewares Corp.
   the problem: is just adding a design element is enough to get by 12 (1) b because of the wording
    “depicted, written or sounded”
   The mark was refused by the registrar because when sounded it was clearly descriptive- gear just
    means equipment, and grill is a synonym for BBQ, and so when sounded its just a description of
    rBBQ stuff, which it is
   And so falls foul of 12(1)b
   The argument is that the mark should be assessed as a design mark- there is no reason why a
    design mark that happens to contain descriptive words should not be registrable
   On appeal the court does not agree with the registrar’s conclusion that the words Grill Gear are not
    necessarily clearly descriptive
   The applicant put forward more evidence showing that competitors in the BBQ industry had never
    used the words Grill Gear in connection with their wares, even descriptively
   And so no evidence that allowing the mark would deprive traders of the opportunity to describe
    their wares in a way that they already did
   Evidence of a common usage of a word, or its common use on the register may be an indicator or
    descriptiveness of a word- the more common, the less apt it is to work as a trademark- state of the
    register evidence
   Also the court says that the registrar was wrong in the “sounded” part of the analysis- because as a
    DESIGN mark, you cannot sound all the parts of the design- its only the verbal component that
    has anything to do with the sounded part, but the MARK SHOULD BE ASSESSED AS A
    WHOLE and viewed in this way, in combination with the design elements, it is OK and
    registrable
   Grill Gear on its own would not necessarily be registrable, but you can’t pick apart a trademark
    that is also a design mark- you have to look at the whole thing together, not just the individual
    parts

   Best Canadian Motor Inns v Best Western
   Arrives at the opposite conclusion- that the design features cannot lend enough distinctiveness to
    protect it from s12!
   The opponent is Best Western- their opposition is that the applicant does not have title to use the
    mark because they (opponent) had used their mark first, the mark lacks distinctiveness, the mark is
    confusing w/ Best Western…etc.
   The most important argument is that it should not be registered because of 12(1) b- that it is
    clearly descriptive or deceptively misdescriptive of the wares or services- the Registrar refused
    registration on this ground
   The words are clearly descriptive, the particularities of the lettering, the disclaimed maple leaf are
    not enough…and that when sounded the words “best Canadian…” are clearly descriptive
   The court insists that the part that should be focused on is the “when sounded” part, and that a
    mark that CAN be sounded should be considered from that perspective
   Doesn’t seem fair or reasonable that a design mark should be unregistrable just because you add a
    descriptive word, but on the other hand the descriptiveness should be assessed as by the wording
    of the act, by how it is sounded
   The judge says that the court has the obligation to apply the statute AS IT IS DRAFTED and NOT
    as it OUGHT TO HAVE BEEN DRAFTED- you have to interpret statutes as they are- its not up
    to the court to draft new legislation as they feel that it should be drafted; there is no policy reason
    that seems to be at issue here that would cause the court to give the words anything other than
    their ordinary meaning
   If the mark is prima facie descriptive when sounded the onus should be to show that
    distinctiveness in the mark has been acquired under 12(2)
   So this case is totally conflicting with Grill Gear…and there is no higher court decision telling us
    who is right
   NB: Although there is no statement of law on this point it seems that the rule that has emerged, is
    the relevance of the words of the mark being the DOMINANT FEATURE of the mark; that if the
    clearly descriptive words are the main part, and its really a word mark with some design elements
    added, then it should be assessed in the way that Best Canadian was assessed
   It would seem that if the design feature of a composite mark is dominant and the descriptive words
    are added and secondary, then the descriptive words may not undermine the Registrability of the
    mark; on the other hand if the design features are secondary to the descriptive words, then the
    mere addition of the design features may not be enough to avoid s12(1)b
   Abercrombie & Fitch v Hunting World
   Gives us order to the things we already have learned about distinctiveness of marks
   What we are concerned with in terms of Registrability is WHETHER SOMETHING CAN BE
    CONSIDERED A PRIVATE RIGHT
   The spectrum of distinctiveness:
   Unregistrable:               Registrable:
   Generic- descriptive         Descriptive and acquired meaningsuggestive fanciful/arbitrary
   A generic mark is the name of the wares or services, which is never the appropriate subject matter
    of trademark protection
   In the Canadian context this rule is established in 12(1) c- this is a strict prohibition- it is
    concerned with the name in ANY LANGUAGE not just English or French- the name of a product
    cannot function to distinguish the wares as coming from one producer or another- the name of the
    ware is not distinctive of source in any way
   Descriptive words- The law is striking a balance between the hardships to the competitor in
    hampering the use of an appropriate descriptive word, and hardships to the owner that has invested
    money in acquiring distinctiveness in the descriptive word
   When someone invests money and manages to establish secondary meaning, then that should take
    priority over the prima facie rule (12)2 that descriptive words cannot be registered under 12(1)b
   Fanciful words- words that are made up out of no where
   Arbitrary- words that exist but are used in an unfamiliar way, or a way that has no relation to the
    wares its associated with

   Suggestive Marks
   Require thought, imagination and perception to ascertain the nature of the goods
   Not truly fanciful but not merely descriptive
   requires a cognitive step to figure out what it is
   Capable of registration without acquired distinctiveness- prima facie registrable
   Language has a wealth of synonyms and related words that they can choose from to describe and
    connote their product- no policy reason to keep these words public
   Balance between the competitor who can not use a protected word, or the trader who has used a
    descriptive word but has managed to acquire a reputation
   The validity is determined where suggestive ends and descriptive begins

   Generic Marks
   the name of the product itself- not registrable and CANNOT become registrable because of
    acquired distinctiveness
   Policy reasons- that people would not be able to describe their product at all! Like how would you
    describe “wine” if the word wine was no longer available?
   The usage of the mark can change the category to which the mark belongs- with usage inherently
    distinctive marks can become generic, etc.
   NB: its not the labour or the efforts of the trader that we are rewarding; it happens that when the
    mark becomes too successful (like Kleenex) it can become generic, and then not protected
    anymore because it loses its distinctiveness

   Jordan & St Michelle Cellars v St Andres Wines
   Opposition to the registration of the name Nostrano- alleging that that is the name that is given to
    a particular vine that bears wine in peasant Italian-Switzerland
   There is an affidavit saying that this is the use that is made for that word, and that there is an entry
    in the Dictionary of Wine that confirms this usage
   Argument that if anything it’s a descriptive mark in Italian, because it means “home grown” in
    Italian; and that it is not just used as the name of the wine itself; that it could follow Galanos as a
    fanciful or arbitrary mark
   And that its use as such is only used by the peasant wine producers in that area;
   And so because of the limited use in this way it should not be prohibited by virtue of 12(1)c in
    Canada
   But the question is not the way that the ordinary Cdn public would understand the mark; its
    whether it’s a generic name or not in ANY language
   you cannot entertain regional differences; this word is generic in a language, period
   NB: The prohibition in 12(1)c is absolute
   This provision has huge potential breadth in the things that it can prevent from being registered
   This is consistent with the doctrine of equivalence in international trademark; what would it mean
    if we were to translate it in English or French? Treat it as if you are from the place where that was
    the name of the product
   This allows international trade to be relatively unhindered in naming their product without causing
    confusion in the jurisdictions in which they trade

   Jacoby article
   It doesn’t matter whether the qualities are one thing over another; it only matter that when the
    public sees the mark it triggers recognition acting as an indicator of source
   The cognitive network that tm seeks to protect
   It has to have a secondary meaning; becomes characteristic of ONLY ONE item in the market
    place; only one source
   Could be descriptive of various items
   Distinguishes from products with the same qualities; with the acquired distinctiveness that tm is
    characteristic of only one item in the marketplace
   Whether or not there is secondary meaning is merely a question about what consumers think that
    the mark signifies
   Can be acquired through extensive sales or advertising

   Secondary Meaning/ Acquired Distinctiveness
   S32- relates to trademarks that are claimed to be registrable under s12(2)- have to provide
    evidence to the registrar establishing the time during which the trademark has been used in
    Canada; the nature of the use; the way in which the mark has been associated with the wares and
    services; the geographical area in which the use and advertising has taken place
   This use has to be proved in every province if they want a national mark
   They must specify how long the mark has been in use
   Registration should be restricted to the defined territorial area in Canada in which the mark is
    shown to have become distinctive;
    you are not guaranteed the same protection as a prima facie registrable mark; you have to prove
    the areas in which the mark has acquired distinctiveness
   Secondary meaning is about acquiring the meaning that renders the trademark a trademark; as an
    indicator of source

   Canadian Shredded Wheat v Kellogs
   Claiming an injunction from using the words “shredded wheat” which is the mark under
    discussion
   There was a patent that was acquired in order to make shredded wheat; which aptly described the
    product
   And after the patent’s expiration they continued to enjoy their exclusive presence in the ,market
   They registered shredded wheat as a tm
   Kellogs then started selling shredded wheat under the name “Kellogs shredded wheat” – there
    would be no protection in the common law because there would be no confusion; because the
    name Kellogs clearly prevents confusion
   But under the statute this is clearly an infringement
   But the question is whether the words shredded wheat actually distinguish the plaintiff as the
    SOURCE of the wares, or do they merely describe what the plaintiff sells
   In the interval between the expiry of the patent, were the words more than a description, and were
    they distinctive of the source form which the cereal was coming
   The onus on the person who attempts to establish this secondary meaning is heavy
   The court finds that the words in this case were used as a description rather than an indicator of
    source; not indicative of the origin of the goods, but as a way to indicate what the product was
   And because that was the WAY that the words were used, they had failed to prove acquired
    secondary meaning
   NB: Trademark law should not be used as a substitute for a patent

   Confusing Marks
   S12(1)d- Provides another basis for opposing a registration
   That the mark is CONFUSING with a registered trademark
   It says that a marks Registrability depends on the lack of confusion with a mark that is already on
    the register
   If the registrar spots confusion with a registered trademark, then they deem it not registrable under
    37(d) because of 12(1)d
   Or once the mark is registered under 18(1)a it should not have been registered because it was
    confusing with something on the register
   Confusing with a mark that has an application pending is not OK either;
   The first application takes precedence but if you feel that yours should be registrable over theirs,
    apply under s38
   The onus is on the applicant to show that their mark is not confusing
   So what is a confusing mark?
   S6- trademarks are confusing if the use of both of them in the same geographical area would lead
    consumers to believe that the marks come from the same source
   Would the marks be LIKELY to cause confusion (it is not necessary that they DO or that they
    HAVE in the past actually caused any confusion)
   They need not be the same wares or services to be considered confusing
   Controversy over the extent to which the difference between the wares or services may actually be
    relevant
   A judicial determination of a PRACTICAL question of FACT


   Determining Likelihood of Confusion:
   A checklist of things that one should have regard to in addition to all the surrounding
    circumstances which are relevant; s6(5)
   1- inherent distinctiveness
   2- the extent to which the marks have become known (acquired distinctiveness)- which brings into
    question the famousness of the mark
   3-the length of time that the mark has been in use
   4- the nature of the wares, services, or business- the closer the relation between the wares, the
    more likely the confusion will be
   (while it is not necessary for the marks to be used for the same wares or services, it is
    RELEVANT)
   5- the nature of the trade- the way that the consumer will encounter the product
   6- the target market, the nature of the customers that the trademark is serving
   7- the degree of resemblance between the marks, in appearance, sound, ideas that the suggest- this
    is probably the most important of the factors
   Confusion will be clear if these factors are present
   Judges will go through the process, but essentially what they are asking is whether people would
    be likely to infer the same source
   Marks might look the same but sound completely different, or may look different and sound
    different but convey the same ideas and that may be enough for the court to infer confusion

   Benson and Hedges v St Regis Tobacco Corp.
   Golden Circlet is opposed by B&H who sells an are the trademark owner of Gold Band
   And so they argue that the mark is unregistrable under s12(1)d, and will have to argue this under
    s6 (and at this stage the onus will be on the applicant to show that the mark is not confusing)
   Confusion= the inference of a common source
   The registrar allowed the registration because he thought that the marks were sufficiently
    different- the opponent says that this decision was incorrectly reached solely on the basis of 6(5)e
   trial judge considered how well known the Gold Band trademark was known in Canada, and that
    the Golden Circlet was not known at all, and that the wares were similar and would be sold over
    the same counter , and that all of this combined leads to the inference that the wares would come
    from the same source; but then the trial judge deferred to the Registrar;
   The SCC says that the registrar’s decision should be given great weight, but it CAN be set aside
    because this is an exercise of determination of FACT; and so the court is open to hold that the
    registrar’s decision is not correct;
   And so they agree with the reasoning of the trial judge, but then overturn the decision of the
    registrar
   The court says that there is no substantial difference between Gold and Golden, and Circlet and
    Band- even though the words sound different, they suggest EXACTLY the same idea, and that
    results in the likelihood of confusion

   Molson Companies v John Labbat Ltd.
   Molson Golden is opposing the registration of Winchester Gold
   Based on 38(2)b- that the mark is unregistrable because of confusion under 12(1)d that it would be
    confusing in the marketplace
   The Fed court of appeal found it NOT confusing and that the mark was registrable
   Here no confusion is found even though it is similar in element to the Benson and Hedges case
   It is not the proper approach to break up the trademark into elements however, and to conclude
    that because there are similar elements that as a whole the marks are confusing- you have to look
    at whether the marks are confusing AS A WHOLE, especially when one of the elements of the
    mark is descriptive
   Note that the court refuses to lose sight of the descriptiveness of the mark- that there is nothing
    inherently distinctive about the opponent’s trademark- and this has an important bearing on the
    determination of the likelihood of confusion
   Even if you manage to register yourself under 12 (2) you still have to face the fact that you have
    registered a weak mark, and that will come to bear when someone else tries to register a mark
   You cannot monopolize a descriptive word; the distinctiveness is acquired by the word Molson’s
    NOT the Golden part; and so because the mark is descriptive, then SMALL DIFFERENCES may
    be enough to avoid confusion

   Weetabix v Kellogs
   Froot Loops and Fruit Dots – i.e. products are the same, nature of wares are the same, again, one is
    famous
   The argument is that the marks is not confusing because there are lots of similar words / marks
    already on the register
   “Froot” is simply phonetically the same as “Fruit” – that component is that same not with standing
    the visual dissimilarity (that’s the same as Gold and Golden)
   And “loops” versus “dots” – dots might simply be a diminutive forms of “loops” (like gold and
    golden) even though the differ in appearance and sounds but it’s arguable that they suggest similar
    ideas
   Courts holds that the registrar erred in not registering Fruit Dots and finds that it is not confusing
    emphasizing the difference in the spelling of the first word and the sound, meaning and spelling of
    the second word
   Court notes that both of the words are lacking in distinctiveness and thus the mark as a whole have
    “very limited inherent distinctiveness”
   NB: both parties have disclaimed the word “fruit” in the mark
   When you engage in confusion analysis you must take into account the whole mark and you must
    also take into account the disclaimed parts – disclaiming is NOT a carte blanche to claiming
    distinctiveness
   Fame of the Froot Loops brand: we should look at the mark from the stand point that it is a famous
    mark to begin with and thus we should give it a wider ambit of protection – but for the court, the
    fame of the mark didn’t make up for the inherent weakness in distinctiveness
   It seems relevant that strong marks are famous marks and deserve wider ambit of protection and
    this is something under consideration by SCC
    comes into issue under s.6(5)(a) which says that we need to take into account the extent to which
    a mark has become known (even though it lacks inherent distinctiveness

   Jacoby article
   Info which has a strong sense of associative links in your mind – that info is more accessible in
    our minds because it has a strong network built around
   Because of this that strong marks are given a wider scope of protection than weaker marks
   In Canada, famous marks are not given a special treatment – they’re given the same treatment as
    any other mark
   It’s not that the protection is wider but rather that because confusion is more likely (not just
    because they’re famous) that they have a wider area of demanding protection
   Craig: the key should be whether confusion is more or less likely because of the fame?
   We’re suspicious of anyone who wants to cash in thus we might end up overprotecting the famous
    mark because we disapprove of the this type of cashing in / free-riding
    the danger is that if we buy into this, the mark comes to look more and more like property that is
    owned absolutely

   McDonald’s v Coffee Hut Stores
   Application to register the mark “McBeans” by Coffee Hut stores for use in association with
    coffee products
   Argument: McBeans will be confusing with the family of marks that McDonalds owns
   When people see “Mc” + product, will assume association with McDonalds
   They need to consider the whole of the operations: McBean is a store and M is a fast food
    restaurant, M doesn’t sell beans, and just because it happens to sell coffee it doesn’t mean that the
    fame is associated with coffee
   Also there’s an absence of evidence of confusion despite coexistence in the same mall
   Ultimately the court refused to give importance to the fame of the family of marks that M has and
    instead looks at the similarity of trade
    Concluded that they were dissimilar enough that there won’t be confusion
   There seems to be a desire to limit the scope of the monopoly
    Differences in the nature of the ware and the nature of the trade seems to be the deciding factor
    even in the face of a wide known mark (s.5)
    The court seems to quite consistently say we protect the right now not as they may be in the
    future

   Famous Marks
   How relevant is fame in pushing the limits of protection of a mark beyond your own sphere

   Miss Universe v Bohna
   Application to register Miss Nude Universe for use in association with nude beauty pageants
   The trial judge says no confusion because of the nature of the services offered by the applicant and
    the opponent
   If looking at s6 the one mark has been in use for many years, and the applicant’s mark was not in
    use at all
   In comparing the services, they are very different, with different audiences, etc. and that likely no
    one could be confused
   And the trial judge said that the addition of the word “NUDE” was of arresting enough
    significance in order to avoid confusion
   BUT at the CA the court clearly disagrees with this reasoning
   Outlining the applicable principles: statement that the stronger the mark, the greater the ambit of
    protection, and the greater the onus of proving that the mark is not likely to cause confusion
   A trademark may be so generally identified with a particular source, that its use ANYWHERE
    else, would remind us of that source, and we will naturally make the association with the
    registered owner
   And that is enough to refuse the application its obvious WHY the applicant has chosen the
    particular name- because it is a name with a huge reputation, etc. and so they obviously just want
    to capitalize on that
   In light of the fame, they are MINIMIZING the importance of 6(5) d and e
   The court says that there is no reason to give equal weight to the sections under s6- you can give
    more weight to certain sections more than others depending on the circumstances of the case
   The association and the likelihood of making that association is of great concern to the court
   The CA says that the trial judge should have started with this concern- and starting from the
    position that the mark was famous and deserved protection, than he would not have focused so
    much on the nature of the wares and services
   And it is likely that people would think that Miss Nude Universe is associated as a division of
    Miss Universe
   And that the applicant’s association may tarnish the reputation that Miss Universe has acquired
   Is this really just a desire to protect the strong and successful entrepreneur against the
    opportunistic free-rider? This seems to underlie the court’s whole decision

   Pink Panther Beauty Corp. v United Artists Corp.
   Application to register the words Pink Panther in association with haircare products
   This was opposed by United Artists because they owned the TM Pink Panther in association with
    motion pictures, records, etc.
   We know that it is possible to register a mark if the wares are different enough
   The Registrar says that there is no likelihood of confusion; notwithstanding that the marks are
    virtually identical, the wares are so different
   At the Federal Court they said that given the fame of the mark, it was worthy of protection
   And the court found that d and e (the resemblance) that confusion was likely
   The differences (c) were found to be less significant than they would otherwise be because of the
    fame of the mark
   The CA goes over the procedure for confusion under s6
   Contemplates: The source theory, where to draw the line between the right to copy and the right to
    compete; what is truly worthy of the status of property, and what should be open for all to use in
    the marketplace?
   Concludes that we must be careful that the line is drawn fairly between the exclusive use of an
    idea, and the right to compete and earn a livelihood
   “All the surrounding circumstances” is a general overriding factor- should be taken into account as
    if it was (f)
   Because of the fame of the mark it is necessary to adjust the weight given to the individual factors
   And that the onus on other factors may become heavier; so if you downplay the importance of
    some factors, others will be more important, but they will not of themselves change the nature of
    the inquiry
   NB: The mark are not entitled to extended protection SIMPLY because they are famous; you are
    still trying to determine the likelihood of confusion;
   The notion of CONNECTION- that if there is no known connection, it is difficult to justify the
    protection from use in that very different area- if there is NO connection at all, then it is unlikely
    that there would be confusion;
   The CA says that there is no connection between the beauty services and the film industry; to
    prevent the mark, that would extend the protection of the mark to EVERY FIELD IMAGINABLE
   There would be no area that Hollywood’s marketing machine could not control; they could have a
    monopoly over all kinds of unrelated words
   Critique of the case: The argument against Pink Panther is that the case set up a rule regarding the
    necessity of connection- but this is not suggested or intended by the act; we should be solely
    concerned with confusion, and also with fame;
   Counter argument- that it says that connection may be important without it being a RULE- but
    there are arguments that Pink Panther goes to far with the connection argument
   Toyota v Lexus Foods
   The applicant is Lexus foods; they want to register the mark Lexus in connection with canned fruit
    and vegetables
   The trial judge had found that 6 out of 10 Canadians recognized the name lexus as a car, and
    therefore it is a famous mark, and so difference between the nature of the wares is irrelevant
   He says that Pink Panther is not applicable because this case is about a coined term; and that if the
    car company had never existed, then the name would not have existed
   In the CA they say that appropriate weight mst be given to each factor; and that although the wares
    need not be of the same general class, confusion will probably require that there be SOME
    LINKAGE between the 2 products
   But where wares are as dramatically different as cars and canned veggies, then that factor should
    be given some weight!
   The question must be “what associations do people make when they see the trademark in
    connection with THOSE PARTICLUAR WARES
   So when people see the canned vegetables with the name Lexus, what do they think then?
   The trial judge was too concerned with the fame aspect of the mark; and that the court does not
    have an obligation to nurture and support successful marks for simply the fame reason
   And even if the applicant had deliberately chosen the Lexus mark for the purpose of benefiting
    from it, they are free to do that so long as they do not cause confusion in doing so!
   There is NO doctrine of MENS REA in the field of trademarks!
   If you can benefit from the positive connotations of a trademark without causing any confusion,
    then you are free to do so

   Obscene Marks
   S12 1 E- with focus on s9 (1) j- which is about prohibiting the adoption of marks that are
    scandalous, obscene or immoral
   These marks cannot be registered because they are marks whose adoption is prohibited by s(9)1
   First 38(2)b, that the mark is not registrable
   Then not registrable by virtue of s12(1)e
   And what it is that makes it non-registrable under s(9) 1
   Argument that a trademark is not a right, and the decision to protect a trademark is a public policy
    decision, and there may be marks that we are not willing to protect
   And marks that are obscene may not be desirable of protection
   On the other hand there are commercial considerations, and we should not be evaluating the worth
    of any mark- and marks that are so scandalous as to render them economically unwise will just not
    succeed

   Kimberly Pace article
   That the First Amendment allows for disparaging marks in American law, but the act does not
    allow for their registration
   And that trademarks are at the core of the right to freedom of expression
   Given what the trademark symbolizes it is the center of commercial speech, and to limit a
    trademark is to limit commercial speech
   Argument that the limitation is merely a limitation on registration; you’re not stopped from using
    it, but the government is not going to waste time and money protecting it
   S12(1) E says that prohibited marks are not registrable; and s9 goes further and says that you may
    not ADOPT such marks
   Goes beyond Registrability; tells us that no person shall adopt, as a trademark or otherwise an
    immoral or scandalous word
   This means that the speech implications may be greater; and no one knows how far s9 can go- but
    it could potentially be incredibly expansive
   Miss Universe v Bohna
   Argument that Miss Nude Universe cannot be registered because of obscenity under s9(1) j-
   The standards by which obscenity is to be determined are those of the present day;
   The difficulty is to determine what today’s standards are; and what would be obscene by a
    substantial number of people
   The opponent ahs to at least bring enough to the table to put the onus on the applicant to show that
    their mark IS registrable;
   In this case they find that they have not brought enough to the table to have a case; the word
    “nude” in itself is not enough to be scandalous
   Must also be considered in connection with the wares and services with which it is to be registered
   This case seems to ignore the context of the mark; but keep in mind that the court’s job is not to
    determine whether or not they actually approve of the wares or services in question
   Own feelings is not the proper test; the applicant’s services are not the subject of the review
   Even in the CONTEXT the public at large would not view the trademark, and the word nude in the
    tm, as obscene, scandalous or immoral

   In Re Old Glory Condom Corp.
   At issue the “Make Love not War” trademark that includes an American flag shaped as a condom
   Used in order to promote safe sex, and public awareness
   But the TM was initially refused by the registrar
   They reasoned that the majority of the US public would be offended by the use of the flag to
    promote sexual activity
   Because the flag is so revered and highly respected, etc.
   This decision is overruled at the higher courts
   They say that the scandalous nature of the mark must be judged in context, and the PURPOSE of
    the mark; and they say that in this way it cannot be found to be scandalous;
   They say that the context in which it is used is relevant, and in light of the values of today’s public
   It is very clear from the cases that whether something is obscene or not is a FACTUAL inquiry;
    and so evidence is required! Even if its survey evidence
   The changing nature of the public opinion must always be kept in mind too; what was scandalous
    20 years ago may not be now

   Harjo v Pro Football Inc. (Washington Redskins)
   Initially the Redskins were not allowed to register their mark; but in the US they are not stopped
    from USING the mark; they can still protect it under passing off actions under the common law
   In Canada, you would have to STOP USING IT!
   So in that way the Canadian prohibition goes much farther
   The opposition was that it was disparaging to native Americans
   And they brought evidence that the term redskins was used derogatively amongst natives
   The football says that the mark also has positive connotations of the bravery of native Americans
   But the court is concerned about the use of the term among the disparaging group and not as
    important if it doesn’t offend everyone
   On appeal; the evidence was how the word was received but NOT how the word was received in
    association with the football team!!
   The evidence must be IN CONTEXT

   False Endorsement
   S9(1)(k) and (l) - you should not be using marks that suggest connections with people when in fact
    there really is no such connection
   So the section is creating rights in an individuals personality, or protecting a feature that may
    cause an individual to be known or recognized by the public
   This survives for 30 years after death for use of a portrait or signature, and while the individual is
    living for use of anything that may cause a false connection between that person and the source
   No person shall adopt this kind of mark in connection with a business, as a trademark or otherwise
   Even if its not being used as a trademark you cannot use it is connection with your business is any
    way
   When considering Registrability we have been concerned with the inherent character of the marks;
    but in s9 we are concerned with larger public policy issues, whether they are good marks or not;
    the concern that is reflected is a concern of the rights of the individual for whom a connection is
    being falsely suggested
   The prohibition is only activated is you do not have the consent of the person
   In 9(2)a- nothing prevents the adoption of a mark described in 9(1) if you have the consent of the
    person that is intended to be protected by the section
   This is laying the possibility for endorsement contracts; that its OK to use a personality in
    connection with a business with that person’s consent
   It is that consent that businesses pay for, because in its absence, you cannot adopt something that
    even suggests a connection with that person
   S12(1)(a) will still possibly cause you problems if you are trying to register a name; you would
    have to go under 12(2) to prove acquired distinctiveness of that name

   Carson v Reynolds
   The trademark that is being applied for is Here’s Johnny in association with porta-potties
   The opponent’s position is that the phrase has become so associated with Johnny Carson in the
    minds of the public that they will make an inference that he is connected with the product; an
    inference that he does not want
   The court considers the level of fame he has attained, and the level of the fame that the catch
    phrase itself has attained
   The survey evidence reveals that up to 63% of respondents mentioned the Johnny Carson show
    when they heard the phrase Here’s Johnny
   This prohibition in s9 does not depend on proof of injury or damage to the person, because this is
    not the common law; if relying in the s9 prohibition you only have to show that a connection with
    the person is suggested to the public
   Businesses should not be free to exploit living individuals without their consent;
   The court says tat the mark Here’s Johnny is not registrable without Johnny Carson’s consent
    because the use of the mark does suggest a connection with him to the public
   subsequent decisions have limited the applicability of the section to false endorsement; that the
    rights in 9(1)k are limited to those who have a significant public reputation throughout Canada,
    and that in the absence of such a reputation, such claims tend not to succeed; even though the
    provision says ANY LIVING INDIVIDUAL; which suggests that anybody should be able to
    complain;
   But it seems that only famous people can; but the reason is that if someone is not famous, the
    public are unlikely to make the connection, and so the prohibition is not activated

   Fawcett v Linfa Lingerie
   Wanted to register FARA in connection with lingerie and women’s clothing
   The court says there was evidence lacking that she was very famous in Canada
   She thought that the use of Fara will make people think that she is associated with the lingerie
   She also argues that the mark is not distinctive
   If the opponent’s reputation is in doubt you will probably fail on the basis of a suggested
    connection
   Every ground of complaint fails because she could not establish notoriety for her name Farrah
    Fawcett, let alone only her first name Farrah
   It would have to be shown that when people see Fara, they would immediately make the
    connection to Farrah Fawcett-Majors
   This case demonstrates that you need a significant public reputation, and that because of that the
    mark will suggest a connection in the minds of the ordinary Canadian
   The basis of the prohibition seems to require that certain level of fame

   John Cacharel v Reitman’s Canada
   The mark sought to be registered is Cashalaine
   The guy’s real name is John Bousquet; but he suggests that the registration of the tm Cashalaine
    would suggest an association with John Cacharel (which is the name that he is known by in the
    business)
   There is a burden upon the opponent to adduce sufficient evidence that the name John Bousquet
    would be connected with the use of the word Cacharel
   The court says that the opponent has not shown that the name Cacharel identifies a living
    individual to a significant number of people in Canada; the sales figures do not establish that
    Cacharel is well known as a mark, and they certainly do not establish that the name Cacharel is
    known as a surname, associated with a particular person;
   So when they see Cacharel, they may not even think of John Cacharel, or John Bousquet, let alone
    when they see the word Cashalaine
   What these cases reveal is that the courts are unwilling to allow the prohibition in 9(1)k or l in a
    way that allows someone to take a short cut in preventing the endorsement of the trademark, or in
    endorsing a mark

   Baron Philippe deRothschild v Casa Habana
   The estate of Philippe de Rothschild is the opponent
   The defendant is Casa de Habana Inc, that put up the name Rothschild on his sign at his shop in
    Yorkville
   The Rothschild family is known for their wine; but upon reading the case there is not a ton of
    evidence
   The court may just be accepting the assertion of fame; they accept that a significant number of
    Cdns would make the connection when they see the Rothschild name
   The sign was adopted to benefit from the quality and prestige of the name; and the court looks
    badly upon this motivation;
   They say that he was trying to convey luxury by using the name; and that he was trying to benefit
    in that way by using the name
   The court goes on to find that there is an appropriation of personality too; because one cannot
    commercially exploit another’s name or likeness without his permission; this is relying on the tort
    of misappropriation of personality from the common law;
   The court is recognizing the right of a famous person to control their personality in connection
    with business ventures

   Gould Estate v Stoddard Publishing
   Tort of misappropriation of personality
   reputation and fame is a capital asset that one nurtures and it should be devisable to heirs;
   The larger concern is over freedom of expression
   Like the tort the statute should be tailored to take this into account
   Distinction between sales and subject
   If the personality is being used to attract commercial value to the thing, then the tort of
    misappropriation; but if the individual is the SUBJECT of the work (rather than the means of
    promoting sales) then it may be OK; because that’s not a false endorsement; you may be a subject
    of a documentary and its OK
   The value of knowing about Gould’s life may trump the value of his personality commercially
   S9(1)k should be therefore tailored in respect of freedom of expression concerns

   Official Marks
   9(1)n (iii)- prohibits emblems, crests, official marks….etc.
   No person shall adopt this kind of mark in connection with a business; so that they so nearly
    resemble these marks that they are likely to be mistaken for them
   Certain public symbols that are precluded from being used as commercial symbols;
   Various levels of protection for things that are public symbols; in s9(2) the same exception
    applies; if you have the consent of the person, society, authority, then its ok
   Prohibition, but also consent is allowed


    Levels of protection:
   1- Prohibition of any commercial reproduction of the symbol regardless of the context; usually if
    the mark is of great significance or importance (like royal symbols, and crests) or of any member
    of the royal family
   These symbols are already in place as marks that are not allowed to be used in a commercial
    setting
   One of the reasons for giving this protection is that any use in a commercial setting is going to blur
    the significance of that mark
   2- Protection that is only limited to uses that amount to misrepresentations
   Any terms or marks that indicate royal patronage 9(1)(d)- we care about the inference from the use
    of these marks rather than an absolute prohibition
   Flags, emblems, abbreviations of names of intergovernmental associations
   The limit on this prohibition 9(2)b(ii)- you can use it unless the use of the mark is likely to mislead
    the public that there is a connection between the source and the protected mark
   3- protected only once public notice has been given that the symbol has been adopted, or upon the
    request of the agency
   9(n) does the same thing- that there has to be public notice of the adoption and views by the
    Registrar
   And that is the point at which the use of that mark by someone else becomes prohibited

   Controversy Over Official Marks
   Official marks have been controversial, because the idea is that they are public symbols that must
    be saved from commercial exploitation; but these days the party that is entitled to use them are
    using them in a commercial way; its just like having a trademark, but with much stronger rights
    and protection
   They can use the marks to prevent registration of confusing or similar marks under 12(1)e- and
    there is no need to prove any damage or injury
   Under s11- no person shall use any mark in connection with a business any mark prohibited under
    s9 or 10; that you can prevent a person from adopting (9 and 10) and using that mark (11) and
    registering the mark (12)
   A process that is conceived of originally to protect non-commercial authorities, has been
    transformed into a vehicle for those authorities to commercially exploit their marks
   For official marks:
   The protection is NOT dependant upon the distinctiveness of the mark;
   There is no renewal requirement
   There is no expungement procedure
   There are no grounds of validity that have to be satisfied
   The scheme for regulating official marks is not well thought-out, developed, or integrated with the
    trademark scheme itself
   Sp when someone requests that the Registrar give notice of adoption they don’t even check the
    register for whether or not there is a similar or confusing mark; there is no standard that these
    marks are held up to; and there is no procedure for opposing the adoption of an official marks;
    there is no equivalent to 12(1)d for official marks
   On the other hand, the owner of the official mark can easily oppose other people’s use, or
    registration of confusing marks
   Rights may become frozen at the time when the official mark comes into being;
   Official marks get far more expansive protection than ordinary trademarks, and they are far more
    easily acquired and maintained

   Chosen People Ministries (CPM) v Canadian Jewish Congress (CJC)
   The registrar gave public notice of the adoption of the menorah design mark for the CPM- which
    would prevent other people from using the menorah in connection with ANY other commercial
    business
   The mark is challenged on the basis that only public authorities may register official marks, and
    that CPM is NOT a public authority
   The claimants brought actions under s56 of the trademarks act which they framed as an appeal
    from the decision of the registrar; and also an application for judicial review unders18(1) of the
    Federal Court Act
   The court notes the extraordinary position of official marks in the trademark scheme
   That the protection granted is exclusivity that is NOT tied to specific wares and services
   There is no need to specify which wares and services with which the mark is being used
   There is no opposition procedure in place for official marks; and the result is to prevent ALL
    OTHERS from using a mark that RESEMBLES IT and the court notes that given this power it is
    strange that they may be obtained so much more easily than trademarks
   In terms of CPM’s claim to be a public authority, it was based on the charitable status of the
    organization; BUT its held here that this is not enough
   2 Step Test:
   1-Has a sufficient degree of control been exercised by the appropriate government over the body?
   2-Is any profit earned by the body for the public benefit, or private benefit?
   requirement for this test is getting stricter; now the courts are looking for government control is a
    very real sense; there has to be ongoing influence and government involvement in the decision-
    making process
   It is not sufficient to show charitable objectives, etc. the elements fo governmental control could
    be that substantial portion of resources from government funding, that there is a close relationship
    with other government bodies, that the government would have to dissolve the assets, etc.
   CPM is merely a US charitable organization that is operating in Canada
   The court also notes that it would be counter-productive to prohibit other Jewish organizations
    from using the menorah that is such an important symbol of Jewish culture

   Sullivan Entertainment v Anne of Green Gables Licensing Authority
   Marks at issue with regard to Anne of Green Gables
   AGGLA is responsible for licensing, distributing marks in relation to the characters, places, etc.
    described by Lucy Maud Montgomery
   Agreement between the heirs of LMM and the province of PEI; the heirs assigned all their marks
    to AGGLA
   Sullivan is the producer of films and mini-series relating to Anne of Green Gables, and wants to
    release Anne of Green Gables: The Continuing story
   If the heirs of LMM can assert trademarks over these things, then they’ll be OK
   Sullivan is concerned that AGGLA will disrupt the release of the movie because of their official
    marks
   They seek a declaration that AGGLA cannot benefit from the use of the official marks because
    they are not a public authority, and that they have neither adopted nor used the official marks,
    rendering the public notice of them void
   On the issue of whether they have used the marks, the issue becomes whether they may rely on
    their licensees; that they have licensed others to use their marks
   What does use mean in relation to official marks?
   NB: TMA s50- if you license the use of your mark to someone else, than that use is deemed to be
    use by YOU
   BUT this section only applies to trademarks, and not official marks
   The logic is that s9(2) considers the possibility of other people using the mark, but it does NOT
    say that the benefit of that use has to benefit the official mark owner
   The court suggests that the licensees use may only be attributed to the official mark owner IF the
    owner is a public authority
   This is a matter that is still awaiting resolution; it has not been answered in this case because it’s
    for summary judgment and summary judgment is denied
   All we know is that you have to be a public authority and public benefit; and whether the marks
    have been used and adopted; but the act does not define use and adoption in relation to official
    marks, so its still unclear to us
   Allied Corp v Canadian Olympic Association
   Raises 12(1)e, and the use of the mark not-withstanding registrability under s9
   Allied had commenced use of OLYMPIAN as a trademark since 1977, but did not apply to
    register the mark until 1982
   And at this stage it was opposed with reference to 9(1)e-
   Between the use of the mark by Allied as a trademark and the application for registration, notice of
    the official mark OLYMPIAN had been given by the Canadian Olympic Association
   Adoption and use of the official mark Olympian in 1980
   In the official mark context there is no basis for opposition; even if Allied had registered the
    trademark back in 1977, there is NOTHING they could do when the COA adopted the mark as an
    official mark in 1980
   no person SHALL ADOPT (is in the future tense); this means that a mark is only prohibited if the
    Registrar has given public notice in the PAST tense
   And so the adoption of the mark is only prospective in operation; and so Allied can continue to
    use it
   But the argument is that s11 is that you just can’t USE it at all; but the court says that s11 does not
    change the prospective nature of s9
   A mark is not adopted contrary to s9 if it was adopted BEFORE the public notice of the official
    mark
   Therefore the mark can continue to be used without penalty

   Big Sisters Association v Big Brothers of Canada
   Gave official notice of the adoption of the official marks BIG SISTERS OF CANADA
   Then the Big Brothers gave notice of adoption of the official mark BIG SISTERS AND
    BROTHERS OF CANADA
   And so this case is important for what constitutes “so nearly resembles” for an official mark
   This is different from the test for confusion for regular trademarks
   We are NOT concerned with confusion; we are concerned with RESEMBLANCE
   But the act does not define this or give us a test for resemblance!
   The plaintiff’s argument is that all you need to do is a straight comparison between the 2 marks,
    and look for resemblance that means that they are substantially similar to one another
   Pg 415- there are various statements about this particular issue; the breadth of the rights; that the
    test is restricted to resemblance and there does not have to be confusion
   The question must be determined in the context of a person with an imperfect recollection of a
    mark would be deceived and confused;
   The plaintiff argues with this test that it doesn’t recognize sufficiently the test of resemblance and
    that the test in s9 is NOT a marketplace test, but one of strict comparison
   The defendant’s argument is that the test that is the imperfect recollection- would you think that
    upon faced with the mark that it was the same one that you had seen before; not comparing them
    side by side
   The court concludes that the test is NOT as simple as straight comparison as the plaintiff suggests;
    they say that straight comparison suggests too close and careful examination
   The appropriate test is to consider resemblance in the context of imperfect recollection
   The conclusion is reached that the marks do not so resemble each other that they would be
    mistaken for one another
   NB: The confusion test does not apply here!

   The Lotteries of Quebec v Club Lotto International
   The issue is that the Lottery Society owns the official mark of Lotto 649
   The problem arises because the defendant is using the mark in the context of its business
    operations
   Groups of buyers that increases ticket buyer’s chances of winning the prize, and they make use of
    the Lotto 649 logo to describe what they do; so it is using the official mark for the purpose of
    business
   They argue that what they are trying to do is prevent a competitor from using the mark, and that
    this has nothing to do with why official marks should be protected
   The question is whether the trademark is being used in a way that violates s9 and s11
   Even if there were doubts about the adoption and use of the official marks as trademarks, then s9
    clears up the uncertainty with the words OR OTHERWISE; that it is at least a use as otherwise
    and so it is caught within s9 of the act
   Agree that official marks are given much more protection by the use of the words “or otherwise”
   The argument is made that the commercial activity of the plaintiff is inconsistent with the spirit of
    the official marks- but the court says that this argument while interesting, “does not hold water”

   Functionality of Marks
   A mark that is primarily functional in nature is not protected by trademark law
   Where a mark is primarily designed to perform a function, it is outside the scope of the appropriate
    subject matter of trademark law
   Not a rule that is expressly provided for in the statute, but it is supported by s13 in the Act
   Rule that is well established in the case law, drawing upon the common and statutory trademarks
    that functional marks are inappropriate
   Need for allowing competition in the marketplace that justifies the lines that are drawn around the
    trademark scheme
   The rule is intended to delineate the scope of the trademark system, and draw the line between
    trademarks and patents
   Tm law should not be used to ensure a perpetual monopoly that patent law cannot grant
   Best understood when considering equality in the marketplace

   Distinguishing Guises
   A shaping of the wares, the containers, or the mode of packaging of the wares acts as a trademark,
    then it will be considered a distinguishing guise and will therefore be registered as a trademark
   S13 reflects a legislative debate about the protection of distinguishing guises; wanted to ensure
    that if protection was available it would not hamper the industry in employing new materials,
    processes, etc, for merchandising; aka they did not want trademark law to hamper competition
   S13(1)a- distinguishing guise must have become distinctive at the date of filing the application;
    therefore it treats distinguishing guises in the way of distinctive marks, or names or surnames;
    they become registrable even though they inherently are not;
   Parallels s12(2) in the requirement for acquired distinctiveness; so you cannot have a proposed
    mark that is a distinguishing guise
   Also, another condition that even in the face of acquired distinctiveness, it must be shown that the
    exclusive use of the guise is not likely to limit the development of any art or industry
   This reflects the concern that registration of distinguishing guises might confer a monopoly
    indirectly over certain features of a mark; especially the shaping of the wares themselves
   Also a limitation in 13(2) on the scope of the rights that are granted by virtue of the registration of
    the guise
   No registration of the guise may interfere with the utilitarian use of any of the features embodied
    in the guise; if the only thing that you have taken is the functional feature of the guise then no
    registration of the guise is going to prevent you from using it; even in the face of confusion
   In 13(3) the incorporation of an additional procedure for challenging registration on the basis that
    it is restricting development of art or industry
   You can appeal to the court to have the mark expunged on this basis

   Parke Davis v Empire Laboratories
   Plaintiffs want to restrain the defendant from advertising pills in association wit its registered
    trademarks which consist of cylindrical capsules with a coloured band around the middle
   They had 10 colours of bands registered
   There is no exclusive right of the plaintiff to sell the drug itself; the argument is that they just
    cannot sell pills with the band around them
   The defendant attacks the registration itself, and argues that the marks should be expunged;
    because the trademark in the gelatin band performs the function of sealing the capsule; and the
    evidence supports this
   On this ground the court disposes of the case; the coloured bands have a functional characteristic,
    and may not therefore be a registrable trademark
   To assert an exclusive rights to use this would be an abuse of the trademark system
   The court is concerned with the possibility that registrability would give them a monopoly over
    the functional aspect of the mark; and no one would be able to sell capsules of that type, with the
    gelatin band
   It would in essence be replacing the patent that had already expired; and so in this way it sought to
    perpetuate its monopoly that they had through the patent, by using trademark law

   Pizza Pizza v Registrar of Trademarks
   Mark is the phone number 967 1111
   Cannot be described as patentable subject matter, but it does have a function
   There is no doubt that the mark is being used to distinguish the wares and services f the plaintiff
    from others; it is prominent in their advertising
   This was a decision in their marketing, they chose that number on purpose
   Wanted to assert trademark rights in the phone number that had become central to how they were
    recognized in the minds of the public
   But it does function as a telephone number, allowing people to call another phone
   Argument that you cannot have a monopoly interest in a phone number
   CA- the question is not whether it performs a function, but whether the function precludes
    registration on the basis of the jurisprudence
   The question is whether the functionality is the SAME KIND that we have seen in other cases
   Attempt to distinguish between primarily functional, and peripherally functional

   WCC Containers v Haul All Equipment
   Application to have a mark expunged; the applicant is alleging that the marks are invalid on
    grounds of functionality (and therefore not registrable) and by invoking s13(3) on the grounds that
    the registration has become likely to limit the development of art or industry
   Concerned with the effects of the registration, and will be considered at the time when the
    application for expungement is being brought (which means that it could have been OK before,
    but is no longer)
   It is registered as a distinguishing guise (they had a industrial design registration before this)
   The overlap between trademarks and industrial design is not problematic, because neither is
    supposed to protect functionality
   But is their distinguishing guise invalid because of functionality?
   If it goes to the functional structure, and goes beyond the purpose of distinguishing the wares, then
    it is not a trademark
   Evidence was presented that every part of the bin in functional, from the sloped bin, to the lid, etc.
    and there is evidence that the registrant sells its product as a functional one, (that animals can’t get
    in, etc.) and evidence that the call for tenders was for such a bin because of its functional features
   The bin people argued that other people could make bins with similar functions, and there were
    other ways of achieving that function without infringing on the guise
   BUT nevertheless the distinguishing guise is primarily functional, and so not registrable
   The court notes that the registration was indeed restraining manufacture in this part of the market,
    and they were preventing others from submitting competitive bids, etc. and so the mark was
    subject to expungement
   But does this case stand for the fact that where a distinguishing guise is the de facto standard,
    could it be lost because of this type of ruling; that the more successful you are, the more at risk
    you are for having your design expunged on these grounds
   Kirkbi AG v Ritvik Holdings (Lego)
   There is no registered trademark; the action is brought under s7(b) which deals with passing off
   Does the mark meet the definition of a trademark in the act, in order to qualify for passing off
    under the act
   The marks that are claimed relate to the distinguishing guise of the classic Lego brick
   Is the classic shape of the Lego brick indicative of Lego as the source of the brick
   And so no one else could use that guise without confusing the public, and infringing on s7(b)
   Although all of the features of the brick are functional, and they are necessary to hold the bricks
    together
   BUT in terms of passing off there is nothing that suggests that a functional mark is INVALID; the
    only limitations are those in s13; it could still be a trademark, it could still be a distinguishing
    guise, and s13 is only about the limits to REGISTRATION of that mark; and so because this mark
    is not registered then this does not apply; we are merely dealing with the mark’s use in the
    marketplace
   The policy behind functionality is to prevent achievement of a patent where merely holding a
    trademark; conclusion that Lego has contravened this policy that underlies the doctrine of
    functionality;
   the relevance of s13 is explained in terms of making it clear that the public is not constrained from
    using utilitarian features; rather than superseding the common law doctrine of functionality,
    reinforces the idea that there is no right to the exclusive use of functional characteristics; and if a
    mark is primarily functional, following this reasoning, there is NO RIGHT TO USE THE MARK
    AT ALL
   The dissent however says that if functionality renders a mark invalid, then s13 has no purpose
    (counter argument that s13 is to do with marks that have a function as part of their guise, but it is
    NOT PRIMARILY functional)
   Even if something CAN be registered, it still cannot prevent people from using the functional
    characteristics of that mark
   The conclusion is that the Lego case is a perfect example for the policy against registrability and
    use of functional marks

   NB: Consider the dissent; once it is established by the dissent that the trademark is valid, he then
    finds that this is clearly a case of passing off, because there is goodwill, there is misrepresentation,
    and there is clearly damage
   So the dissent reveals the job that functionality does as a trump of distinctiveness; because even if
    you have all of this, you are not going to have a successful claim if your trademark is invalid
    because of functionality

   Better Title to Registration
   A trademark application may be opposed on the basis that the person is not the one entitled to
    register the mark; that someone else had better title to the mark
   S38(2)c- says the above
   The validity of the registration is vulnerable if the person is not the person entitled to secure the
    registration of the mark
   Title to register does not flow simply from being the person who uses a registrable trademark; you
    have to be the one entitled
   The basis upon which one is entitled to register is in s16
   S16(1) title to register can flow from using a mark, or making a mark known in Canada
   S16(2) title can flow from an application to register a mark that has been registered in a foreign
    country and used anywhere in the world in association with wares or services;
   S16(3)-title can flow from an application to register a mark that has a proposed use
   What the basis of entitlement might be; and priority; the general rule is that whoever is the first to
    do one of these things has the entitlement
   In Canada a compromise between a use-based system and an application-based system
   So if party A uses a mark before party B applies to register a mark, than party A will have
    entitlement; BUT if party A applies to register a proposed mark, and party B uses the mark, then
    party B will have the entitlement
   NB: S37; the registrar can refuse an application if he is satisfied that the person is NOT entitled to
    register the trademark, because the mark is confusing with another application that is PENDING
   There is room to enquire into title once the mark has been registered too via s18
   SO on the basis of these provisions a mark is always vulnerable to challenge on the basis that the
    person on the register is NOT the person with the entitlement to the mark
   In terms of18(1) someone would bring the trademark under s57 to be expunged because of
    invalidity; and then under s18(1) as a challenge to entitlement
   S17(1) No application shall be expunged in the ground of previous use or making known of a
    confusing mark except at the instance of that other person; in other words, if you are seeking
    expungement for a registered trademark on the basis that you have been the one that has made it
    known, then YOU are the one with the onus of proving prior use
   And if you are expunged then the other party doesn’t automatically get to be on the register; you
    still have to go through the usual application process
   S17(2) entitlement to register cannot be challenged on the basis of prior use once the trademark
    has been registered for 5 years
   This 5 year period only applies if the person who registered the trademark did so in good faith; so
    the question becomes, did A know that B was already using the mark when A adopted and sought
    to register the mark

   Entitlement and Confusion
   Even when considering entitlement, you must consider confusion under s6
   Because s16 deals with the attempt to use and register CONFUSING marks
   So you can prove that you have better title, OR that the marks are NOT confusing
   The priority date is the date of first use in Canada
   And the claim will be superior to anyone that uses, or tries to register AFTER that first date, but
    inferior to anyone that has done any of there things BEFORE

   Basis for Entitlement
   S16(1)- use in Canada in association with wares and services- use in s2 means anything that is
    deemed to be a use in s4, and s4 defines “use” in association with both wares and services
   The s4 “use” definition says that the trademark must be marked on the wares themselves or on the
    packaging of the wares; the mark must be present in any transfer of the possession or purchase of
    the wares
   There is no use of a trademark unless there is a transfer of the wares and also at the time of
    transfer this is to be in the normal course of trade
   The goods must change hands and this must be in the normal course of trade
   Strict interpretation based on the requirements specified in the Act
   Relevant to infringement too because you can only infringe a mark if you are using it
   With regard to services it is use or display when you are performing or advertising the services
    that you offer- so use in respect to adverts IS use with respect to services (but not wares)
   You have title to register if you have made the mark known in Canada
   “making known” is defined in s5: there must be s4 compliant use in another country of the Union
    (basically every industrialized country in the world), and either the wares are advertised in
    association with the mark, either through distribution of the goods in Canada or advertising in
    Canada through print, radio, TV, etc.
   You have to be able to fit into these s5 provisions to prove that you have made your mark well
    known
   This is a basis upon foreign traders can register in Canada
   Allows one’s reputation to proceed entry into the marketplace
   Trade is global but trademarks are territorial in nature
   S16(2) registration in a Union country and use anywhere in the world

   Evidentiary Requirements
   S31 sets out the evidentiary requirements- like a certified copy of the registration and evidence of
    use to the Registrar
   Upon proof of foreign registration a convention application is examined against a less stringent
    standard of registrability
   S14 is referred to define registrability- notwithstanding s12, a mark that is registered abroad is
    registrable if it is (a) not confusing, (b) not without distinctive character, (c) contrary to morality
    or public order, or something that will deceive the public, (d) it is not a trademark because of S9 or
    S10
   6 month priority right- according to s34(1) the date of filing the application is treated as the day it
    was filed in CANADA, and you can go back up to 6 months back to the day that you filed in your
    other country
   So it has to be within 6 months of the original application

   Proposed Marks/Entitlement
   16 (3)- proposed trademarks
   S2- definition- a mark that is proposed to be used by a person…to distinguish wares and services
    from those of others
   Adapted to distinguish but not yet capable because it has not yet been used
   S40 (2)- the application is made, and then notice is given, and then wait for a receipt of a
    declaration of actual use
   The idea is to preserve the integrity of a use based system, even when we allow priority
   The certification of actual use must be filed within 6 months of the notice of the Registrar, or three
    years after the original filing date, whichever deadline is later
   Basically you have to be using it before you can benefit from trademark protection; but in the
    meantime, you can be preventing other people from attempting to register the same mark; but if
    you do not give the proof of use, your trademark will be deemed to have been abandoned s16(5)-
    and then you cannot claim entitlement to the mark
   This system encourages early applications; so that you can prepare use of your mark, and shield it
    from others who might also want to use the mark, and so you may set the date of priority

   Lin Trading v CBM (Q & Q watches case)
   Ground of opposition is under s38(2)c- that they may not register because they are not the person
    entitled to use the mark
   CBM has obtained registrations in various countries and wants to enter into the market
   Tried to find Cdn distributor by sending samples to Lin Trading; they were invoiced for the
    samples, and they paid for them
   Then they tried to register the Q&Q mark in their own name
   Argument that they are not entitled because s16(1)a that they have not established prior use
   Does the shipment constitute use in Canada
   The Q&Q was marked on the box, and the watches too (s4 reference, to make the transfer of
    property fit)
   Lin Trading says that the shipment of the watches do not amount to use IN THE NORMAL
    COURSE OF TRADE (a s4 (1) requirement of use)
   This does not exclude sale by the foreign owner by the wholesaler
   That the sale of the watches was for the objective of gaining sales in Canada; and that constitutes
    use in Canada; even though the actual sales to the customer did not take place by them
   The first use in Canada was when that shipment happened from CBM to Lin Trading; so Lynn is
    NOT the party entitled to register the mark
   Argument that it was Lin Trading that dealt with the mark in the marketplace, and when people
    bought the watches they were buying them in the normal course of trade

   Citrus Growers Assn. v William Branson
   The mark Ortanique in association with a fruit developed in Jamaica
   The application to expunge based on better title is brought under s57 on the basis that the
    registration is not accurate; and s16(1)a which is prior use by the foreign supplier in Canada
   The court holds that its clear that an importer or agent has NO RIGHT to register a trademark
    owned by a foreign principle or for its own benefit
   The use made by the distributor was in fact use by the foreign owner; so when Branson received
    the Ortaniques from Jamaica, this was use by the Jamaicans, not Branson
   When the use is for the exporter’s benefit, the use is BY THEM; not by the distributor
   The reasoning is that there is no use in Canada by Branson; and so there is no title to register
    under s16(1)
   Also the fiduciary obligation between the distributor and the manufacturer (that the distributor is
    the agent and the manufacturer is the principle)
   The court also looks at s16 and s4, finding that the use by the importer was NOT use on the basis
    of s4 or 16(1)
   And the activity by Branson would actually constitute use by the CGA as use in Canada- use on
    their behalf!
   The question is not WHO is using the mark but WHOSE mark is being used!
   And it follows that the question to be asked is WHO IS THE MARK DISTINGUISHING IN THE
    MARKETPLACE- WHO IS THE SOURCE? Obviously it’s the manufacturer

   Sequa Chemicals v United Color and Chemicals
   Turns upon the difference between normal course of trade, and other use
   Situation where the distributor’s registration is allowed over a call for expungement by a foreign
    wholesaler
   The court agrees with the general rule about use by a wholesaler; but distinguishes the facts from
    CGA
   the court finds that there is NO evidence of use prior to 1985 that would satisfy s16(1)a
   There is no sales of the trademark SUNREZ by the respondent in Canada other than TOKEN USE
    or token sales
   The numbers for 1985 onwards are a lot better!
   None of the shipments could satisfy the requirements of a standard coating mill- and so they
    characterize the delivery of the Sunrez at that time as for PROMOTIONAL purposes; and NOT
    according to the normal course of trade
   And so the shipment pf token quantities of a product is NOT evidence of use in the normal course
    of trade
   No evidence that the trademark is used in that the TM was present on the wares, packaging, etc.
    either (s4 use)
   When United went from being the distributor to being the independent supplier, the figures rose
    significantly, after the relationship between them had been dissolved;
   SO it is United’s use in 1985 meets the requirements of use and they have better title to register

   British Petroleum v Bombardier (23 Skidoo)
   Attempt to register 23 Skidoo as a motor lubricant
   Bombardier opposes on the basis that this is confusing with its mark Skidoo for use with motor
    oils
   Asserts confusion because the wares are similar
   Accepted by the registrar; however Bombardier has never really USED the mark in association
    with oil; it is claiming use through the use of Castrol of that mark
   Castrol had assigned any rights in relation to the mark for oil to Bombardier
   Opposition based on 16(3)a - that Castrol was the predecessor in title that had used the mark; and
    now Bombardier gets that title
   The question is whether Castrol ever actually used the word Skidoo as a trademark; if they did
    NOT, then they do not have better title; because then it had no trademark interests that it could
    actually assign to Bombardier
   So does the use by Castrol meet the definitions under s4- there is evidence that the mark did
    appear on the containers for a period of time
   So this appears to fit the s4 definition; the problem is that next to the trademark there is a
    disclaimer that says that the trademark is the property of Bombardier
   The reference is to Bombardier’s trademark when it was on the oil
   SO that is the distinction; because there is a disclaimer saying that the trademark was NEVER
    actually Castrol’s property; and so Castrol never used the trademark in connection with oil!
   So that is not use under the meaning in s4
   SO if Bombardier wanted to challenge the registration, they had to establish prior use, and they
    couldn’t do that

   Robert C Wian Enterprises v Mady (Big Boy)
   Expungement action on the basis of s57; claim that the mark is invalid because of lack of
    entitlement; so a claim of invalidity of registration because not entitled under s18(1);
   And that claim is made under 16(1)a- because they are claiming that the claim to title is based
    upon use in Canada
   The issue is the entitlement of the US company because their US used mark has become well
    known in Canada
   The court deals with what is required under s5, the definition of MAKING KNOWN- that the
    confusing mark was USED by them in a Union country and that use must be use in the meaning of
    s4; and have to show that the mark was confusing under s6; and show that the wares were
    advertised in association of the mark in Canada under 5b; AND that by virtue of advertising the
    mark in Canada, the mark was made well known in Canada under the meaning in s5;
   A publication that is circulated in Canada in the ordinary course of commerce; they DO NOT
    consider menus, napkins etc. because these are NOT considered publications circulated in the
    ordinary course of commerce; and so not relevant to making known in Canada
   Evidence of radio advertising in a Detroit station that were received in Windsor; and this was
    accepted as evidence under 5b(2) BUT the problem is that there is the additional requirement of
    WELL known by virtue of these broadcasts received in Windsor;
   The mark may have been well known in Windsor, but that is not enough; it must be known in
    Canada to a substantial extent; not just in one small location in order to qualify as WELL
    KNOWN
   There must be GENERAL recognition of the wares across Canada; and that was not established

   Valle’s Steakhouse v Tessier
   The plaintiff has to show that it had made the mark known in Canada prior to the use by the
    defendant
   The methods in s5 for making known are regarded as a rule of substance- you have to have made
    known through the ways enumerated in s5 ONLY
   And so it is irrelevant that many Cds may have seen billboards related to the trademark or been to
    the restaurant in the US; exposure MUST be in CANADA to qualify as making known in Canada
   But this case does water down the requirement of well known in Canada
   The mark was made well known in eastern provinces and Quebec; and these uses fit s5b; and so
    they say that this is enough to qualify as well known in Canada
   The argument that this is NOT enough is based on the notion that it is not known THROUGHOUT
    Canada; but the court says that this is not what the court meant; just that being known within the
    boundaries of some locality is not OK; but you have to be known in a substantial part of the
    country to be OK; and that this is satisfied here
   NB. Even where a foreign owner can assert that they have a registrable title in Canada by virtue of
    s5, they may still have a cause of action in Canada because of a confusing mark

   Expungement
   A mark that is registered may be expunged under s57; gives the court jurisdiction on the interest of
    any interested person to expunge; and that does not define existing rights
   This application to expunge according to s58 made on an originating notice of motion may be
    made as a counterclaim on the assertion that the register is wrong
   The expungement will happen if the registration of the trademark is invalid; under s18
   One basis of invalidity under s18(1) is because of better title, and then you refer to s16 to show on
    what basis you have the better title
   Registration may be struck out if the trademark was not registrable under 18(1)a on the date of
    registration, and anyone can claim that
   If you succeed in getting an expungement in this way then that mark will be struck from the
    register; if you want to argue that the mark has since become valid then you have to start from the
    beginning to do that
   You can also argue under 18(1)c that the trademark has been abandoned, that there is no intention
    to use it
   Or s45 that there is failure to use the trademark

   Grounds of Expungement
   Abandonment- s18(1) c
   The registration of a trademark is invalid if the tm has been abandoned
   Similar to non-use; abandonment involves non-use; but also there must be an intention to abandon
   Failure to prevent use by others may result in an inference of intention to abandon; passivity may
    be regarded as abandonment
   The applicant has the onus of showing that the trademark has been abandoned
   Non-use- s45 the onus is on the registrant to prove use; so its opposite, and that means that they
    should be analyzed separately
   Even if you don’t use it you may not have lost the intention to use it, and then the person would
    have to apply for expungement under s45;
   So the difference is in intention too
   Notice is given to the registrant requiring notice of use of the mark in association with the wares
    or services with which it is registered
   Use at any time within 3 years must be demonstrated
   Any genuine transaction in which the mark was used; use does not have to be continuous, but the
    definition of use still applies (like in the normal course of trade)
   If you cannot show use in the last 3 years you have to show the date it was last used, and provide
    an explanation for the absence of use since that date
   Basic rule= use or excuse
   S45(3)- that if there is no use or excuse then the registration is liable to be expunged- the registrar
    has the power to expunge it, but there is some discretion because there is no obligation to expunge
    it
   If someone registers a proposed mark on the basis of foreign use, you risk expungement for non-
    use of you do not use the mark in Canada within 3 years
   Abandonment through Deviation- the changing of the mark; use of a mark that is not the same
    as the one on the register
   So if you are using a new mark you may have lost the intention to use the registered one; and so
    variations on a trademark are dangerous
   Non-Distinctiveness- S18(1)b- that the mark is invalid because it is not distinctive at the time that
    the trademark is called into question
   At any time the distinctiveness of a trademark could be challenged, and could result in
    expungement from the Register
   Transferring and licensing must be done very carefully to avoid losing the distinctiveness of the
    mark
   Allowing ongoing infringement of the mark will also lead to loss of distinctiveness
   Genericization of the mark may be an issue here too (like Kleenex)- no longer identifies a single
    source, and becomes the generic name of the product itself

   Aladdin Industries v Canadian Thermos Products
   “Thermos” for use with vacuum sealed cups and flask
   Argument is that it has become generic
   Brought a challenge based on 18(1)(a) and argued (like Shredded Wheat) because they had had a
    patent and it had expired that they were trying to replace it with a trademark
   If you look at their website – they never use the word “Thermos” as a noun – never uses the word
    to describe their product- Aladdin do use the word to describe their products
   The dictionary definitions that are looked at by the court, says that it is both recognized as a noun
    as well as a trademark
   Court notes that currently Aladdin is suffering a economic disadvantage because they cannot use
    the word “thermos” but customers looks for that word to describe the product
   Evidence:
    1) the word “thermos” has come into popular use in Canada
    2) an appreciable number of people know and use the tm Thermos
   The mark is used at the same time generically, descriptively, and as a trademark
   “there is no absolute incompatibility between what is descriptive and distinctive (s.12(1)(b) and
    s.12(2) – descriptiveness + distinctiveness = registrability
   But S12(1)c- generic names are absolutely barred: generic + distinctive does not = registrable
   Court privileges the distinctive characteristic so the distinctiveness allows its to stay on the
    registrar notwithstanding it’s descriptiveness
   The main reason behind this is to protect the public from confusion
   Conflicting interests at stake – person seeking to have mark expunged is suffering a competitive
    disadvantage (applicant’s right to equality in the marketplace) versus the public’s rights to avoid
    confusion in the marketplace and an appreciable number of recognize it as a tm
   But public interest is paramount
   Here the public interest is reduced to the interest not to be confused but you can ask if it’s really in
    the public interest to prevent the use of the word that has entered into the public domain
    Also maybe the dual meaning of the mark is harming the public because they’re not really buying
    the flask because the need to get it from Thermos but they still pay more for it even though that
    might not be what they want.
   Bottom line: you can use the public interest to explain whatever result you want to reach
   Uneasiness about striking a tm that has become generic from the register- it is hard work and
    success that has got them to this point
   Note: s.20 – bona fide use defense: “if a person can use an accurate description of his wares…..” –
    very narrow exception and they general rule is still that under registration, there is exclusive use in
    the sense that no one can attach the word to their wares – thus you can ask if Aladdin can really
    use the word the way that it did

   Heintzman v 751056 Ontario Ltd.
   Case about the meaning of the mark becoming muddy / misplaced
   About how to transfer the tm – remember that tm will only remain valid so long as it continues to
    indicate source
   Court notes that the function and purpose of the T is to indicate the source from which the goods
    come
   Heintzman mark attached to pianos (originally manufactured in Ontario) – the H company was
    sold down a chain of owners and the mark transferred with each sale
   The real problem is when the mark was being attached to pianos being brought in from the US and
    Korea (i.e. no long manufactured by the Ontario manufacturers that the pubic has come to
    association it with)
   None of the adverts indicated any change in meaning – in fact they specifically tried to impress
    upon the public that this was the same brand the same quality
   What happened is that the mark signified a different source – no longer the original source
    associated with the mark
   Court reached the conclusion that the mark lost it’s distinctiveness when the mark was used with a
    different source
   The mark must identify the source and the validity of the tm will depend on the unity of that
    message (i.e. validity depend on the fact that the tm conveys the appropriate message)


   Promafil Canada v Munsingwear
   Corpulent penguin vs slim penguin
   Does the use of the corpulent penguin constitute use of the slim penguin?
   If not then the registered slim penguin may be expunged for abandonment under 18(1)c
   Registered in 1977 but since 1982 only the corpulent version has been used;
   Do they share enough features that this is essentially use of the same mark?
   A variant will constitute use as long as it is not substantially different from the registered mark
   Compare the 2, and determine whether the differences are so unimportant that the purchaser would
    think that they come from the same source
   Essentially a question of whether the marks are confusing
   The CA feels that the mark has not been abandoned and that the difference between the marks is
    not so substantial because the dominant features of the mark have been preserved
   Canadian law emphasizes the maintenance of identity and the preservation of dominant features
    and recognizability
   NB: Canadian law can tolerate multiple variants of a mark as registered
   BUT with every variation the owner of the mark is “playing with fire”
   The law understands that marketing strategies evolve, and we need to afford flexibility in
    developing the mark
   But the flexibility ends when marks become too different
   Consider the scope of the monopoly that allowing variations will provide- you cannot afford a
    monopoly over penguins; but if you make too many variations you are risking expungement of the
    original

   Addams v Nestle case
   Example of how non-use may come into play
   In s45 you use what we already know about use; the definition of use, and that it has to be used as
    a trademark;
   MUST be s4 use
   Yorkie chocolate bar- Canadian company importing the bars
   But the tm does not belong to the importer; it belongs to Nestle-Rowntree
   And so that party has to show use; they claimed that use through the importer selling the product
    in Canada
   Issue: Does this constitute use by the registered owner?
   On the evidence, there is nothing to establish that the bars came from the registered owner as the
    source of the products
   The onus is on the registered owner to demonstrate use
   And because they cannot prove the registered owner’s use in Canada, the mark is liable for
    expungement
   You can still explain your non-use to save your mark from expungement

   McCain Foods v Chef America
   Concerns the registration of the Hot Pockets mark in Canada
   Chef America registered the mark for Hot Pockets, Breakfast Pockets ahead of time before the
    launch in Canada
   Registered in 1982; but in 1994 they received a s45 notice;
   But they claim that they were attempting to launch the mark in Canada but had a series of
    problems:
   The earthquake was beyond the control of the registrant, and so that is more likely to be a special
    circumstance
   Cumulatively when the court considers all the reasons its enough to constitute an excuse for non-
    use
   The court lists all the problems that prevented use of the mark; and ultimately all of this put
    together is enough to excuse the non-use
   And the court recognizes the intention to launch the product later that year, which is proven by all
    of the market research, and the translation of the packaging etc.
   They do not want to shut out people who are generally interested in using the mark in the near
    future
   But they will now have to show use in the future to keep the registration; they actually have to
    follow through with their intentions


   Assignment of Marks
   S48- assignment provisions
   Means the transfer of the mark- an outright sale of the mark
   Usually occurs along with the sale of a business
   Under S48 trademarks are transferable- but under S48(1) marks are transferable either in
    connection with or separate from the goodwill of the business
   You can just assign the trademark- it does not have to be along with the goodwill
   You cannot transfer a mark territorially within Canada because the system is a national system
   Also consider that while the transfer of the mark is permitted it must still meet all the requirements
    of being a trademark
   So as a result of transfer, you still have to prevent confusion of the marks, and maintain the
    distinctiveness of the mark; you should not assign marks if it will lead to confusion
   The registrar under S48(3) will re-register the transfer when it has taken place but there is nothing
    that requires the re-registration as a condition of the transfer
   The mark must after that continue to be used by the person that is now the new registered owner
   The protection of the public interest must still be present in the legislative scheme
   Just because you can assign without goodwill does not mean that you can ignore the need for an
    associative connection with the source of the wares
   S2 and S18 make sure that marks remain distinctive and operational as marks
   The meaning of the mark cannot change even though the owner of the mark may have
   Still a dangerous business; what you end up with must still be a valid trademark!
   You are not excused from any of the other requirements just because you are an assignee

   Licensing of Marks
   In S50- if an entity is licensed to use a tm, and the owner has direct or indirect control of the
    quality of the wares or services then the use of the mark by the licensee is deemed to be the same
    as the use of the display of the mark by the licensor
   Control over the wares themselves means that anything to do with the mark is deemed to be
    controlled by the licensor, or the registrant
   A licensing relationship is deemed to exist where there is public notice and the identity of the
    owner is given
   Something that actually brings to the attention of the buying public that there is a licensed use, and
    that would indicate that it satisfies the requirements of S50- but that is a mere inference
   That presumption may be displaced, so you may still have to prove the requisite control
   Control over the character and quality of the wares and services with which it is used
   S50(1) all that is required is consistency in the quality of the wares- but this is not a reason for
    protecting a mark (quality) all we are concerned with is protecting a source
   In a typical modern licensing scenario it is not true to say that there is a proliferation of sources;
    there is in actual fact only one source, the licensor; and so by gaining control over character and
    quality, we are ensuring that there is really only one source
   In this way licensing is brought into the source theory of trademark protection
   In terms of what is required to meet S50(1)- the control has to be ACTIVE- but it may be direct or
    indirect- but the control must be over the nature or the characteristics of the goods or services
   Which really means that the licensor should be in a position to define the standards for the
    products, quality of the services; should be enforcing those standards too!
   That quality is what the goodwill ultimately identifies


   Brecks Sporting Goods v Sportcam Co.
   Fishing tackle and lures
   Brecks is the importer of the lures in Canada
   Originally Mepps had registered the mark in Canada; and then they assigned all their rights to a
    US company who then assigned all the rights in the trademark to Brecks; and so they are on the
    register as the owner of the Mepps mark
   They still use the mark in connection with the imported rules
   Another company that imports Mepps lures and sells them in Canada is seeking expungement of
    the mark as belonging to Brecks
   The French manufacturer is the origin of the wares; and so the argument is that after assignment
    the Mepps trademark still indicated this company as the owner of the wares; and there is no
    evidence that the mark ever became distinctive of Brecks
   It was held at the CA that the mark was invalid for lack of distinctiveness and this is upheld at the
    SCC
   The logic is that the use of the Mepps mark by Brecks would not have distinguished their wares
    from anyone else selling the Mepps lures in Canada- so it does not identify it as a single source in
    the Canadian market
   The mark never indicated Brecks as the importer as the source of the wares
   The tm Mepps still identifies the French manufacturer as the source and nothing was done to
    change that


   Dynatec Automation v Dynatech Corp.
   The Dynatech mark registered for various wares relating to thermal engineering stuff
   The motion is a request for evidence of use pursuant to S45
   The requesting party is arguing that whatever use they have managed to show is NOT use that
    accrues to the registered owner
   The mark is being used but it is being used only by the registrant’s subsidiaries
   Case where if they show that they are using the mark then they have to show that the use by the
    subsidiaries= use by the owner/parent company
   They argue that the fact that they are the parent company is enough
   But the court looks at the language of S50 to decide if this is relevant use; the trademark must
    have control; and you cannot show control by merely pointing to the ownership structure of the
    company
   Not enough to show actual exercise of control; the power to prevent the manufacturing of wares is
    not enough to show control; control merely by share ownership does NOT satisfy s50(1) because
    they must have control over the quality of the wares; control of USE of the mark, or the power to
    revoke the use of the mark by the licensee is NOT sufficient
   More than a mere subsidiary/parent relationship is required
   There is no evidence of ACTIVE control, and so the use is NOT deemed to be use buy the
    licensor; and so the S45 order to expunge is issued
   This shows that although the tm system has tried to accommodate the economic model, it has not
    gone so far as to allow uncontrolled use of the mark

   Infringement
   S19, 20, 21, 22
   S19- The exclusive right to use the mark as a trademark in relation to the wares or services with
    which it is registered
   This does not depend upon any showing of confusion or damage;
   difference between the statutory right and the common law; all you have to show if that the same
    mark has been used in relation to the same wares
   4 considerations at stake in infringement analysis:
   1- the mark
   2-the goods or services
   3- the use that is made of the tm (when is it s4 use)
   4- the function or effect of the mark- is it being used as a trademark in a way that distinguishes the
    source
   The mark in S19 is the EXACT SAME design as it appears on the register
   Must be being used in respect to the SAME wares or services with which the mark is registered to
    be within S19
   The use must be use within the meaning of S4- throughout Canada
   So if the defendant is not using the mark within S4 then it will not come within S19
   S19 provides an absolute exclusive right to the mark; so then it is more protection in this sense
    than the common law
   S20- The right of the owner of a registered mark shall be deemed to be infringed by a person who
    distributes wares or services in association with a confusing mark
   The concept of confusion from s6 to determine if marks are confusing
   And consider the S6(5) factors
   It may be harder to show confusion that amounts to infringement than confusion that prevents
    registration…but we are always referring back to S6
   The wares do not have to be the same in order for there to be confusion
   It may be that the mark is the same but the wares are different, and that would move you into S20
    (and out of S19)
   Or same wares but different mark, or both different…
   Use in S20 does not have to be S4 use- just that you cannot sell, distribute or advertise wares…and
    this is broader than S4 because it captures advertising in association with WARES (and S4 only
    captures advertising of services)
   The use need not fit precisely within S4 use when invoking S20
   But the function/effect aspect must still be USE as a TRADEMARK
   S22- Protects against the dilution of the trademark, and the goodwill that is attached to it
   Potentially the furthest reaching provision in the act; although the courts try to reign it in
   S22- use may be made in a non-confusing way, or use that is not use as a trademark, and it may
    still be infringement!
   It would be use that has an effect of depreciating the value of the mark
   Does the trademark have to be the trademark as registered?
   In order to narrow the ambit of the section, then YES- it has to be the trademark as registered and
    also in association with the same wares
   The court has not given a final word on this issue; the issue of whether S22 has to be the same
    mark, and the same wares
   As of right now a matter of opinion and not a matter of law
   BUT use in S22 MUST be S4 use
   Function and effect of the mark in this section does not require use as a trademark; the thing that
    we are concerned with is the depreciating value of the mark, not that there is confusion
   The potential scope of the section-
   1- Could catch people just free-riding or cashing by employing the mark to catch people’s
    attention but not using it as an indicator of source;
   2-Using the mark to make statements about the product or the owner of the mark (could be making
    true statements that are negative that may depreciate the value of the mark);
   3-May just be a matter of free expression;
   4-Comparative advertising
   5-Trade unions using the company’s mark in their protests
   6-Could include just making a negative comment on the mark in conversation!
   The use therefore MUST be COMMERCIAL S4 USE

   Pepsi Cola of Canada v Coca Cola of Canada
   Infringement because of confusion under s20
   Likelihood of confusion is determined by using s6(5)
   Necessary to establish a CLOSER likeness than if using S6(5) to refuse registration based on
    confusion
   Same case as dealing with registrability- when Pepsi failed to get Coca Cola struck of the register
   And because they failed to do that they now have to answer to the charge that they are infringing
    the Coke mark because of confusion
   What is protected is the WHOLE mark as registered but a part of the mark may be taken and used
    that would be substantial enough to be taken as a confusing use
   Include even parts of the mark that was disclaimed at registration because they will still be part of
    the rights…
   Look at the whole mark, the similarities and the differences
   Cola itself may not be protected but Coca Cola in a particular script is distinctive
   The only thing that appears in both marks is the non-distinctive element, the descriptive word
    “cola”
   The plaintiff could not assert a monopoly over the descriptive word cola- they only have a right
    over the whole mark Coca Cola in a particular script
   Commercial justice of the situation kept in mind
   The sound, appearance and general impression of the mark is considered and found to not be
    confusing on that basis
   Also impossible for Coca Cola to show evidence of actual confusion, and that is weighty evidence
    that confusion is not likely to occur

   Mr. Submarine Ltd. v Amandista Investments Ltd. (Mr. Subs ‘n Pizza)
   Sandwich shop vs delivery service of subs and pizzas
   Allege that Mr. Sub is included in Mr. Submarine
   The court dismisses this – the extent of the exclusive right by S19 is defined by the mark as
    registered- so it would have to be THE SAME
   And that S20 is used to expand the protection…
   Any right for infringement must arise then after S20, or maybe S22
   Because we are not dealing with the same mark
   Is the different mark nevertheless confusing?
   One of the things that is impt to note is that the marks are relatively weak; but the distinctiveness
    comes from the compound of the words MR SUBMARINE- the combination of the 2 common
    and un-distinctive words
   This is also true of Mr. Subs ‘n Pizza
   They ARE copying the element of the mark that make it distinctive (opposite of Pepsi who took
    the non-distinctive part)
   The court finds that the marks do suggest similar ideas and are manifestly similar in the
    combination of Mr. and Sub
   And so in a phonebook or something someone would be likely to infer the same source- a
    connected product, like Mr. Sub ‘n Pizza was a branch of Mr. Sub
   The similarities are enough that confusion is likely
   Comparing the Pepsi case, this decision is not withstanding absence of evidence of actual
    confusion over the last 10 years that the marks were operating simultaneously
   S20(1)- you are not prevented from BONA FIDE use…this gives you an EXCUSE- a non-
    infringement defense
   The bona fide use defense is particularly tailored to point out the weaknesses in distinctiveness of
    an acquired distinctiveness mark
   Given how narrowly it is drawn however, makes it almost irrelevant
   Like gives you the bona fide use of your own name as a tradename but not for a mark, etc.
   It does not actually amount to a defense for a trademark USE
   You must not be seeking a commercial advantage through that use
   MUST be in a way that does not depreciate the value of the goodwill
   It is almost meaningless because generally if you are using something as a description then you
    are not really infringing trademark anyways
   And if you are not depreciating goodwill then you are not caught by s22 anyways

   Bagagerie SA v Bagagerie Willy Ltee
   Repairing suitcases VS selling suitcases
   The tradename will amount to an infringement under s20 unless the defendant can show that the
    tradename is merely an accurate description of the wares
   Bagagerie is synonymous with a suitcase containing effects; but the defendant is in the business of
    selling EMPTY suitacases
   In conclusion the current usage of Bagagerie is at most suggestive; it is an evocative word and
    makes one think of travel, but it is not clearly descriptive of the wares or services; and so does not
    come within the bona fide use defense because the defense requires that it be clearly descriptive
    and it is not, it is merely evocative
   Guccio Gucci v Meubles Renel Inc.
   Paolo Designed by Paolo Gucci
   PG is related to the Gucci family, but has broken out on his own
   It is not PG that is the Defendant but someone that is selling his wares
   He still uses hos Gucci name for his stuff
   This underscores the conditions that you have to meet to fit yourself in the defense
   4 conditions:
   1-Good faith
   2-Other than as a trademark, or with the effect of distinguishing
   3-An accurate description
   4-Not likely to depreciate goodwill
   ALL 4 conditions must be met
   The court gives the benefit of the doubt for good faith; but with a famous mark its pretty clear that
    you are trying to gain from that and that is enough often
   Fails on the use of a trademark; and that is enough to fail the conditions and be unable to use the
    defense
   The intention was to identify the origin
   Given that they trademark is Paolo Designed by Paolo Gucci, then the wares would actually have
    to have been designed by him and this is not true (so fails the accurate description part too)
   And the diminution of the Gucci mark is likely because of the Paolo Gucci mark, and so the
    defense fails on this ground as well
   The final possibility for a defendant that has fallen within S20 is to request the CONCURRENT
    usage of the mark

   Concurrent Usage
   Even if you have been found to have been using the confusing mark, the court may allow you to
    keep using it in very limited circumstances in S21(1)
   We also saw this in S17(2), challenging entitlement)
   S17(2) once a mark has been registered for 5 years or more you can not challenge the better
    entitlement for prior use or making known first
   And the mark becomes uncontestable unless originally adopted with knowledgde of prior use in
    which case the time limit does not apply
   S21 deals with this situation when the 5 years have passed and the mark is no longer challengeable
    under s17(2)
   And where a mark is entitled to the protection of S17(2), a defendant has in good faith used a
    confusing mark before the application to register the mark was filed, then the court may allow
    them to continue using the trademark
   The use will only be allowed within a defined area, and there must be a specified distinction from
    the registered owner (a disclaimer or something) and the use must not result in any confusion to
    the public (not contrary to the public interest)
   Gives the court discretion to allow a good faith user to keep using their mark
   The permitted party enters their use on the register, so they are kind of registered as being OK

   Kayser Roth
   Use of the mark Fascination in association with lingerie
   Argue that under S20 (1) a they should be allowed to use their tradename- but they fail because it
    has to be a PERSONAL name
   So they use the prior use argument
   S21 can only operate with respect to marks that are protected by S17(2)- marks that should or
    could’ve been declared invalid but can’t be anymore because of the limitation period
   You still have to prove the material facts that the trademark is protected under S17(2)- lack of
    prior knowledge, and registered for at least 5 years
   In this case 5 years has NOT passed since the date of registration, and so S21 is NOT available
   And the reason that they are not challenging entitlement under S16 because it is clear that their
    first use occurred after the title to register the mark by the other guy
   They were trying to expand the notion of S21- but the section is narrow and specific- and you
    have to bring yourself within it, or it will NOT apply
   Concurrent use would be limited to a specific area, and sufficiently disclaimed, and must not be
    contrary to the interest of the public
   Concern with marketing using another person’s mark
   Reveal the peculiarities of the infringement provisions
   POLICY: In terms of the interests at stake:
   Allowing competition between traders
   The right of the register to prevent the mark from being used in a way that will depreciate the
    value of the mark, the tarnishing of its reputation and goodwill

   Clairol v Thomas Supply & Equipment
   Mark at issue is the trademark for Clairol Hair Color Bath
   Brochures used by Revlon; the packages and the brochures at issue do use the Revlon mark to
    identify their product
   BUT they also depict the Clairol Color Bath mark too in the context of hair color comparison
    charts
   They say that their colors are so close to Clairol’s that they are just as good
   Claim that this is an infringement of S19 right to exclusive use, and that Revlon’s use of the mark
    depreciates the goodwill under S22
   No need to establish confusion- its whether the use of the mark is an infringement of the rights in
    the mark
   Is the use S19 use?
   Apparent that the presence of the plaintiff’s mark n the packaging is a S4 use- a mark is used if it
    appears on the packages…
   The presence of the marks on the brochures is NOT a S4 use because they are not packaging
   So not a use of a trademark pursuant to S4(1)
   3 out of 4 conditions have been met for S19 infringement for the package
   The court surmises that the use under S19 must be use AS A TRADEMARK as defined in S2
   For the purpose of distinguishing the trade source and distinguishing the wares as being those of
    the owner of the trademark
   The court notes that the Revlon mark appears clearly on the packaging to identify the source of the
    wares; therefore clear that the Miss Clairol mark are NOT intended to indicate that the contents of
    the package are the plaintiff’s
   That is CLEAR and so that is NOT use as a trademark
   And NOT a S19 infringement
   Generally speaking, informative uses of another person’s mark for the purposes of comparing
    yourself with their products is very unlikely to be caught within S19
   The same reasoning may also apply to S20 which depends on use as a trademark too
   What about S22?
   It does not allow the scope of the rights to go beyond traditional infringement
   Court is wary about the potential breadth of the section
   The language seems broad enough to include a conversation in which someone criticizes the
    mark…and that cannot be the true breadth of the section
   Limitations:
   contemplates an element of COMMERCIAL use- use in the course of trading
   Court says that even this still leaves too wide a scope for the prohibition
   S22 can only include uses that fall within S4
   In applying this to the facts:
   The presence of the mark on the packages is S4 use, but not in the brochures
   So the brochures can not fall foul of S22 any more than they can of S19
   The function or effect of the use of the mark- no need for use of the mark as a trademark, it just
    has to depreciate the value of the mark
   What does it mean to depreciate value?
   Goodwill- the whole advantage of the reputation pr connection that has been gained by lots of hard
    work, expense, etc.
   Good will is the thing that is attached to the mark that gives you an advantage in the capacity to
    draw customers to you
   Depreciation is to reduce that advantage in some way, and to reduce the drawing power of the
    mark
   This advantage can be reduced through reduction of esteem in which it is held, or through the
    direct persuasion of customers
   Like seeing a very prestigious mark connected with cheap wares may be enough to depreciate the
    value of it
   Or changing the mind of customers who would otherwise have bought the brand is also
    depreciating the goodwill
   The court says that the use of the mark on the packaging DOES depreciate the goodwill; and so
    they have infringed under S22
   So a trader can NOT use a competitor’s trademark in a way to try to convince them to buy your
    product instead

   Eye Masters v Ross King Holdings
   Underscores the difference between comparative advertising with respect to wares, and with
    respect to services because of S4(1) and (2)
   The comparative use of trademarks is more likely to be infringing when used in relation to
    services because advertising is a s4 use with respect to services but not to wares
   The case is an attempt for an interlocutory injunction for comparative advertising comparing the
    prices of 2 pairs of glasses from different eye glass outlets
   The services that they offer is the SALE of the wares
   Could encourage people to register their marks in relations to services AND wares so that you get
    more protection
   They argue that comparative advertising is NOT ok in relation to wares based on the Clairol
    decision
   The court agrees and says that although it is a bizarre conclusion, it is consistent with the
    interpretation of the law in Clairol, and so there is a genuine issue for trial
   But warns that it could cause people to dream-up some services so that they may be better
    protected than if they were merely protected as wares…
   But Craig says that the scope of the protection should be the same for both

   Future Shop v A&B Sound
   Claim that use of the Future Shop trademark violated S22
   Use of the same mark, same kind of services, is a S4 use, and given how Future Shop is portrayed
    it is likely to depreciate the goodwill
   BUT the court is concerned about the scope of S22- because it is capable of a “sweeping ambit”
   Deny the injunction distinguishing between 2 different kinds of comparative advertising
   Focusing on the depreciation of goodwill and following Clairol:
   Distinguishes between advertisements that stress the differences between products and services,
    and those that emphasize similarities
   And says that those that focus on the differences do NOT depreciate the value of the mark
   It does not attach itself to the goodwill; it seeks to distance itself from that goodwill
   And so almost all comparative advertising will NOT be caught by S22
   That they are not relying upon the goodwill to sell the product- you are not misappropriating the
    goodwill to sell the product
   So for S22 you are looking for a free riding misappropriation, NOT differentiation through
    comparative advertising where the intention is to distance yourself from the goodwill of the mark
    in question
   Problems with this reasoning:
   They are still trying to entice customers away
   And this is at odds with the Eye Masters case
   And oversimplifies the distinction between emphasizing differences and emphasizing similarities
   and so relies on the fact that Future Shop has a very successful brand…and the reasoning is
    difficult to apply
   S22 is limited by S4 use, and what depreciation means
   And the requirement that the wares and the mark be the SAME so that parodies will not be caught
    by the section

								
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