Trade marks Strategy by d9n1aQO


									                        TRADE-MARKS ANSWER STRATEGY

To succeed on its application for injunction, a ptf must establish:
   (i) a prima facie case or a serious issue to be tried,
   (ii) that the plaintiff will suffer irreparable harm if the injunction is not granted
   (iii) that the balance of convenience favours the granting of the injunction sought

Passing off is a common law right of action for TM infringement. It is a tort that is
available to owners of both registered and unregistered marks, however, it is most
frequently employed by owners of unregistered marks b/c owners of registered
marks have access to stronger (easier to prove) rights of action pursuant to the TMA.

Passing off it also prohibited by the TMA, under s. 7. Actions for passing off under
the common law may only be brought in the provincial courts, whereas actions under
s. 7 may be brought in either the Federal or Provincial Court.

Three things are required to make out an action for passing off (Ciba-Gigy), however
interpretation of passing off is continually evolving (Seiko Time Canada):
       1. Goodwill or Reputation attached to the ptf’s goods or services
       -A descriptive name, if it has enough goodwill, will be protected at common
       law just as a distinctive TM (Warnink)
       -Goodwill must be attached to the TM not the business generally (W&H
               -Evidence of commercial success and/or length of use is insufficient,
               since sales can be do to other factors besides the goodwill attaching to
               the mark and using a mark for a long time establishes nothing
       -The goodwill earned through specific wares or services does not extend to
       wares or services not traded in, or at large (Walt Disney)
       -In making out a case for a passing off action, the claimant must establish
       goodwill in respect of the distinctiveness of the product – evidence of goodwill
       solely attached to the techniques and processes which create the product will
       not do (Kirkibi).
       Evidence: Proof of advertising in various countries/regions, survey evidence
       showing reputation (must be of correct pertinent population)
       2. Misrepresentation Leading to Confusion – An intentional or
       unintentional act which has led or likely to lead the public to believe that
       goods or services offered by the dft are those of the ptf or authorized by the
       -Non-registered marks are not protectable against similar/identical marks that
       are not confusing with the original mark (Powell)
       -A person may sell their product in a similar get-up to that of another
       distributor so long as they avoided confusion of the public (Reckitt)
               -In practice, however, it is unclear how this can be accomplished in
               some cases, thereby creating a de facto monopoly over certain get-ups
               for the time being.
       -The appropriate definition of “consumers” in the case of prescription drugs
       includes physicians, pharmacists, dentists and patients (Ciba-Geigy)
               -There seems no reason to exclude patients from the definition of
               consumers, as they are the people who purchase and consume the
               drugs, though they may be administered by health care professionals.
       -Where goodwill and misrepresentation have been established, confusion may
       be presumed (Walt Disney)

-OVERRULED: Where there is no common field of activity there is unlikely to
be any confusion (McCulloch)
         -Must show connection b/w two businesses
-Must show likely confusion among the common customers of the parties
         -Absence of common field of activity is not fatal; but it is an important
         and highly relevant consideration in deciding whether there is a
         likelihood of confusion
         -Where there is no or only a tenuous degree of overlap between the
         parties’ respective fields of activity the burden of proving the likelihood
         of confusion and resulting damage is a heavy one
         -Where it is a household name, the degree of overlap may be less
-A trade mark can cause confusion whether or not such wares or services are
of the same general class (s. 6(2), (3), (4) “whether or not the wares or
services are of the same general class”). As long as the inference of common
origin is likely, the criteria of confusion are satisfied (Visa)
         -The question is whether the use of both trademarks in the same area
         will be likely to lead to the inference that the wares and services
         associated with such trade marks are provided by the same person.
         -The true test is whether the totality of the proposed TM is such that it
         is likely to cause mistake or deception, or confusion, in the minds of
         persons accustomed to the existing TM.
-Evidence of the junior mark having an audience/consumer following of its
own will cripple a misrepresentation claim (Andres Wines)
-You must have confusion or deception of the public in order to meet the
requirements of the tort of passing off (Seiko)
         -Obvious disclaimers are a defence to confusion/misrepresentation
Evidence: Survey evidence to show confusion of pertinent population (Sales
staff in ITEC Bra example), show intent of junior user to pass of their goods
as those of the dft (Warnink; Cabury Schweppes), deceit on part of sales staff
3. Damage or Likelihood of Damage – Ptf must prove they are likely to
suffer damages by reason of the defendant's misrepresentation that the
source of the dft's goods or services is the same as the source of those
offered by the ptf. Damages have been interpreted broadly to include loss of
control (Orkin; Walt Disney), and unjust enrichment by competitors (CASE).
-Evidence of actual damages will satisfy this requirement, but actual damages
are not required.
-Loss of control = damage: A plaintiff does not have to be in direct
competition with the defendant to suffer injury from the use of its trade name
by the defendant (Orkin; Walt Disney)
     -If the plaintiff's trade name has a reputation in the defendant's
     jurisdiction, such that the public associates it with services provided by
     the plaintiff, then the defendant's use of it means that the plaintiff has
     lost control over the impact of its trade name in the defendant's
Evidence: If a captive market could show decline in sales since introduction of
junior mark (Cadbury Schweppes), survey showing how ptf has lost
customers to the dft

-Passing off may be used to protect descriptive material, such as slogans and visual
images associated with a product/advertising campaign, provided that material has
become a part of the goodwill of the ptf’s product (Cadbury Schweppes)
           -The court in these situations will consider the balancing act b/w
           protecting the investment of the owner and free competition in the
-Evidence may include proof of the money spent on advertising campaign


4A. Names of Surnames: s. 12(1)(a)
Under s. 12(1)(a) of the TMA a TM is not registrable if it is “a word that is primarily
merely the name or the surname of an individual who is living or has died within the
preceding thirty years”.

The test for interpreting s. 12(1)(a) comes from Coles: Is the primary (chief)
(principal) (first in importance) meaning of the word merely (only) (nothing more
than) a surname? “Would the person of ordinary education and intelligence in
Canada, in English or French, be more likely to associate the mark with a surname or
that of a business?”

Coined words may be distinctive enough to pass the test of ‘would the general public
of Canada think the mark being sought is the surname or think that it is a brand or
trade name’ even if the word is a rare name and had no dictionary meaning
       -For (last) names that are not in English or French it may be relevant to
       consider the size of the (Turkish) population in Canada in order to determine
       what the principal meaning of the word is to Canadians.
       Evidence: How many phone book entries are there for this (last) name?
       Survey evidence to get first impressions of Canadians when presented with
       the name/TM.

Fictitious names (which sounds like they could be real names) do not bring s.
12(1)(a) to bear (unless a person w/ that actual name steps forward) (Gerhard Horn

s. 12(2) may save the rejection of an application that includes a name or surname
under s. 12(1)(a) if it can be shown that the mark sought has acquired
distinctiveness, i.e. for “Mr. Christie’s Crisp ‘n Chewy” (Proctor & Gamble).

s. 12(1)(a) plan of attack:
    1. Is there a living person or someone who has died within the past 30 years
       who has that name (Gerhard Horn Investments)?
            o If no, then it’s registrable
    2. If Yes, is the name “primarily merely” a surname/name?
            o Look to prevalence of the name
            o Answer the question: “Would the person of ordinary education and
                intelligence in Canada, in English or French, be more likely to associate
                the mark with a surname or that of a business” (Coles)?
                - If it’s the business, it’s registrable (Galanos).
    3. If it’s a surname, it may still be registrable under s. 12(2) if you can show
       acquired distinctiveness (Proctor & Gamble).

4B. Clearly Descriptive or Deceptively Misdescriptive, s. 12(1)(b)
Under s. 12(1)(b) TMA, subject to s. 13 (distinguishing guises), a mark is not
registrable if “whether depicted, written or sounded, either clearly descriptive or
deceptively misdescriptive in the English or French language of the character or
quality of the wares or services in association with which it is used or proposed to be
used or of the conditions of or the persons employed in their production or of their
place of origin”.

Under s. 7(d)(i) No person shall…make use, in association with wares or services, of
any description that is false in a material respect and likely to mislead the public as
to the character, quality, quantity or composition…” (Biggs Laboratories - Shammi)

“An article advertised for sale as containing certain components which, in truth, it
does not have, must be considered as deceptively misleading to the purchasing
public” (Biggs Laboratories)
        - Since the glove doesn’t contain any chamois registration of “Shammi” will
        contravene both s. 7(d)(i) AND s. 12(1)(b) = deceptively misleading to the
        purchasing public

TM “Milan Showergel” denied registration b/c deceptively misdescriptive of the origin
of the wares (Atlantic Promotions).

A “proper” trade-mark may be formed by combining two ordinary, descriptive words
into a compound word – this is not considered clearly descriptive (Pepsi-Cola).

Repetition of a word is a well-established, accepted and understood way of indicating
trade names or TM, and is allowed at law under s. 12(1)(b) so long as all criteria
with respect to ordinary TM registration are met (Pizza Pizza).

Where a TM is clearly descriptive, it is not registrable pursuant to s. 12(1)(b), and
even if it is a combination of two words to create a new word, it may still be clearly
descriptive (A. Lassonade Inc – Bananorange).

“Off” expunged as TM for insect repellent. If a name has an elliptical use in
association with the wares is represents, it is descriptive of the wares or their effect
and thus not a registrable trade-mark (S.C. Johnson).

For design marks the sound test is still appropriate to determine whether the mark is
“merely descriptive” (Best Canadian Motor Inns).

U.S. case law and the Lanham Act have four different categories of terms with
respect to TM protection; in ascending order reflecting their eligibility to TM status
and the degree of protection they receive (Abercrombie):
   1. Generic (a term that doesn’t just describe an article, it identifies the article
       (i.e. spoon, nylon)) - impossible to achieve TM status/protection for any
       generic term; however, if the generic term retains some sort of secondary
       meaning (i.e. Is descriptive/suggestive/fanciful) in another area/market, then
       it can still be protected by TM in that specific market
   2. Descriptive - differentiate b/w a term that is generic and one that is merely
       descriptive; it is possible to get TM protection for a term that is descriptive
       b/c the law aims to strike balance b/w “the hardships to a competitor in
       hampering the use of an appropriate word and the owner who has invested

      money and energy to endow a word with the good will attached to his
   3. Suggestive – difficult to define and separate from terms that are descriptive;
      ‘requires imagination, thought and perception to reach a conclusion as to the
      nature of the goods’; entitled to registration w/out proof of secondary
   4. Arbitrary/Fanciful – entitled to full TM protection (arbitrary – a common
      word applied in an unfamiliar way; fanciful – words invented solely for use as

4C. Acquired or Secondary Meaning, ss. 12(2), 32
Section 12(2) TMA provides that “A trade-mark that is not registrable by reason of
paragraph (1)(a) or (b) is registrable if it has been so used in Canada by the
applicant or his predecessor in title as to have become distinctive at the date of filing
an application for its registration”, thus, clearly descriptive marks may be registrable
if they have acquired distinctiveness.

Since the TM’s registration is invalid, any claim for infringement fails; the passing off
claim also fails b/c consumers are unlikely to either not be satisfied by receiving a
competitor’s product or to be deceived by a competing product that is perceptibly
smaller. Where a patent-protected product is only given one name, it is susceptible
to becoming a generic/unprotectable name under trade-mark law once off patent
(Canadian Shredded Wheat).

“Canadian” is clearly descriptive of where the beer is made, and is in fact frequently
used in the market to distinguish b/w domestic and imported beers. No evidence of it
having acquired a secondary meaning (Carling Breweries).

-The onus on a person contending that a TM which is descriptive or laudatory of his
wares has actually come to distinguish those wares is a heavy one and the onus is
even heavier when the mark lacks inherent distinctiveness. Not acquired any
secondary meaning so as to become distinctive (W.R. Grace – Barrier Bag).

Evidence: Survey evidence of secondary meaning

In order to establish registrability under s. 12(2), s. 32(1) states “An applicant who
claims that his trade-mark is registrable under subsection 12(2) or section 13 shall
furnish the Registrar with evidence by way of affidavit or statutory declaration
establishing the extent to which and the time during which the trade-mark has been
used in Canada and with any other evidence that the Registrar may require in
support of the claim.”

Further, pursuant to s. 32(2) “The Registrar shall, having regard to the evidence
adduced, restrict the registration to the wares or services in association with which
the trade-mark is shown to have been so used as to have become distinctive and to
the defined territorial area in Canada in which the trade-mark is shown to have
become distinctive.”

4D. Confusing with a Registered Mark: ss. 6, 12(1)(d)
Section 12(1)(d) of the TMA states that a TM is not registrable if it is confusing with
a registered TM. Whether or not there is confusion, is established by considering the
factors set out in s. 6 and especially s. 6(5).

Section 6(1) provides that s. 6 is the section that describes confusion.

Section 6(2) – When a TM is confusing with another TM. “The use of a trade-mark
causes confusion with another trade-mark if the use of both trade-marks in the same
area would be likely to lead to the inference that the wares or services associated
with those trade-marks are manufactured, sold, leased, hired or performed by the
same person, whether or not the wares or services are of the same general class.”

Section 6(3) – When a TM is confusing with a trade-name

Section 6(4) – When a tradename is confusing with a TM.

In determining whether there is a case of confusion pursuant to s. 12(1)(d), the
registrar shall consider the following factors in s. 6(5):
        (a) the inherent distinctiveness of the trade-marks or trade-names and the
        extent to which they have become known;
        (b) the length of time the trade-marks or trade-names have been in use;
        (c) the nature of the wares, services or business;
        (d) the nature of the trade; and
        (e) the degree of resemblance between the trade-marks or trade-names in
        appearance or sound or in the ideas suggested by them.

Where there is likely to be the inference that wares or services associated with two
different trade-marks are manufactured by the same person, there may be a finding
of confusion which may prevent registration of the second mark pursuant to s.
12(1)(b) (Benson & Hedges – GOLDEN CIRCLET/GOLD BAND).

Where part of a trade-mark is primarily descriptive, there is inevitably some
likelihood of confusion, however, the descriptive part cannot be used to oppose
registration of another mark (Molson Companies).
        -When determining whether a mark is confusing with another, one must
        analyze the two marks in their entirety, not piece by piece. What matters is
        whether the two marks are confusing with each other overall.

Where words comprising a trade-mark are primarily descriptive, small difference will
be sufficient differentiate them, and thus discharge the onus of showing no likelihood
of confusion (Weetabix – FRUIT DOTS; FRUIT WHIRLS; FRUIT LOOPS).
        -The material date under s. 16(3) is the date of filing (case law is divided,
        saying either the date of filing of the application or the date of the registrar’s
        decision – it is highly fact driven).

Even where a party has coined and trade-marked a family of names, the applicant,
provided they meet the onus of showing no likelihood of confusion, make coin a
similar name and trade-mark it (Coffee Hut Stores – McBeans).

The use of one adjective alone is not enough to distinguish one mark from another if
the rest of the mark is the same (Miss Universe).

It is not confusing with an already registered ad famous mark for cars to have a
similar mark registered for canned food and fruit juices (LexusFoods Inc).

(Likely) OVERRULED by Mattel: The FCA sets a limit to the reach of famous marks,
limiting their reach only to within the scope of the wares in which they are used (Pink
        Jaguar stands for the opposite proposition, that famous marks can have a
        “natural expansion” from the category of goods or services for which they are
        registered, into another category of goods or services. This “natural
        expansion” may in turn lead to a finding that the junior mark (registered or
        unregistered) is confusing with the senior mark, and thus registration may be
        invalid, a s. 19 claim may be made out (Jaguar).

Case clarifies the rule set out in Pink Panther – do not need connection or
resemblance between wares or services (Mattel – Barbie’s Bar & Grill).
   -The question is always whether there is a likelihood of confusion and the correct
   test is the totality of the circumstances.
            -Fame is simply one of these circumstances
            -Each situation must be judged in its full factual context

4E. Obscene of Immoral, ss. 12(1)(e), 9(1)(j)
Pursuant to s. 12(1)(e) TMA a TM s not registrable where it is prohibited by ss. 9 or
10. Section 9(1)(j) states that no one may adopt as a TM or in association with a
business or otherwise any word or mark that is a “scandalous, obscene or immoral
word or device”.

A simple adjective, such as “nude”, alone is not “scandalous, obscene or immoral”,
and thus is not enough to prevent registration of a trade-mark based on ss. 12(1)(e)
and 9(1)(j) (Miss Universe).

Pace article gives some of the American tests wrt what is considered scandalous.

4F. Connection to an Individual
(i) Trademark Act, ss. 12(1)(e), 9(1)(k)
Section 9(1)(k) TMA prohibits “any matter that may falsely suggest a connection
with any living individual”.

Under s. 9(1)(k) living individuals are afforded protection from commercial
exploitation, without having to prove injury or damages, so long as they can prove
connection of the trade-mark to themselves personally (Carson).
       -Evidence included the fact that the Tonight Show was aired in Canada and
       the phrase “Here’s Johnny” was usually used to introduce the show’s host.
       Survey evidence established that many Canadians associated that phrase with
       Johnny Carson.

Evidence must be provided that the TM is generally identified with its ‘namesake’ in
order for its use in association with anything else to be deemed confusing/non-
registrable (Fawcett).
        -If there is no connection, there s. 9(1)(k) is not applicable.

(ii) The Common Law Right of Personality
Two actionable prongs under the common law tort of appropriation of personality
        1. A taking of the person’s name, image, or goodwill, to the detriment of the

       2. An unjust usage for “commercial advantage” even if the “taking” wasn’t
       made out

Courts have drawn a 'sales vs. subject' distinction. Sales constitute commercial
exploitation and invoke the tort of appropriation of personality. The identity of the
celebrity is merely being used in some fashion. The activity cannot be said to be
about the celebrity. This is in contrast to situations in which the celebrity is the
actual subject of the work or enterprise, with biographies perhaps being the clearest
example. These activities would not be within the ambit of the tort (Gould).
        -There is public interest in the book and it should be protected
        -Must distinguish between privacy and publicity  The former is considered a
        personal tort and is designed to protect an individual's interest in dignity and
        peace of mind. The right of publicity, on the other hand, protects the
        commercial value of a person's celebrity status. As such, it is a form of
        intangible property, akin to copyright or patent, that is descendable.

Using name of a deceased celebrity to promote and book live musical performances
makes out a prima facie case for the tort of misappropriation of perosnality (Hapi
       Evidence: Estate’s promotion of the deceased musician was suffering as a
       result of misappropriation of the deceased personality.

McCarthy & Anderson artcile gives U.S. perspective on misappropriation of athlete

4G. Official Marks: ss. 12(1)(e), 9(1)(m), (n)
Section 9(1)(m) and (n) prohibits the adoption of “the words "United Nations" or the
official seal or emblem of the United Nations; and any badge, crest, emblem or mark
         (i) adopted or used by any of Her Majesty’s Forces as defined in the National
         Defence Act,
         (ii) of any university, or
         (iii) adopted and used by any public authority, in Canada as an official mark
         for wares or services
in respect of which the Registrar has, at the request of Her Majesty or of the
university or public authority, as the case may be, given public notice of its adoption
and use.”

A. Morrow article on Official Marks.

Official Mark versus TM (Canadian Jewish Congress):
    -Official marks are restricted to wares and services, but otherwise are broad
    rights because test is about resemblance not confusion
    -There is no requirement for public notice to be given of a request to the
    Registrar for the publication of notice of the adoption and use of an official mark.
    -An Official Mark can be obtained more easily than a trade-mark.
        -Applicant does not have to demonstrate distinctiveness of proposed Official
        mark or establish any secondary meaning
        -BUT, party seeking publication must qualify as a “public authority”.

Section 18.1(1) of the Federal Court Act is the appropriate method to seek judicial
review of the publication of an Official Mark (Canadian Jewish Congress).

Section 9(2) “provides a code for the use of official marks” (Sullivan Entertainment).

       -Section 9(2) reads “Nothing in this section prevents the adoption, use or
       registration as a trade-mark or otherwise, in connection with a business, of
       any mark…”.

Citing FileNET Corp v. Canada 2002 FCA 418, the court says question of adoption is a
question of fact (Sullivan Entertainment).
        -Also, posting of an official mark on a website in connection with filing service
        constitutes ‘use’.

The correct test to apply under s. 9 is the “resemblance test” (does the impugned
mark so nearly resemble the official mark as to be likely to be mistaken for the
official mark?) - this is not the same as the test for confusion (Big Sisters).

4H. Geographical Indications: ss. 11 (11.14, 11.15, 11.18), 12(1)(g) & (h)
Sections 11.14 and 11.15 prohibit the adoption as a TM any protected geographical
indication, as that term is defined in s. 2 (“geographical indication” means, in respect
of a wine or spirit, an indication that (a) identifies the wine or spirit as originating in
the territory of a WTO Member, or a region or locality of that territory, where a
quality, reputation or other characteristic of the wine or spirit is essentially
attributable to its geographical origin, and (b) except in the case of an indication
identifying a wine or spirit originating in Canada, is protected by the laws applicable
to that WTO Member”).

Section 11.18(3) and (4) provide a list of generic terms for wines and spirits that
may be adopted, registered and used as TMs or otherwise.

GIs are registrable as certification marks under s. 23 TMA. Certification marks are
considered TMs under the s. 2 definition of a TM (for the purposes of the TMA).

Vaver article touches on the key points respecting GIs.

(Pepperidge Farm)
      i. Test for finding under s. 12(1)(g) is whether the ordinary consumer would
      likely be misled.
      ii. Though famous marks may be entitled to a broad ambit of protection, the
      same does not apply to generic terms; coexistence of two marks w/out
      evidence of confusion will weigh in the applicant’s favour
      iii. Q is “whether the general public in Cda would be misled into the belief that
      the product with which the trade-mark is associated had its origin in the place
      of the geographic name in the trade-mark; If a geographic name is attached
      to wares made in that geographic region it is clearly descriptive of the origin.
      If the wares are not made there than the word is misdescriptive and may be
      deceptively so depending on the circumstances”

4I. Certification Marks: s. 23
Section 23(1) provides that “A certification mark may be adopted and registered only
by a person who is not engaged in the manufacture, sale, leasing or hiring of wares
or the performance of services such as those in association with which the
certification mark is used.” (Col Sanders).

A certification mark is essentially a guarantor to the consumer that the wares or
service is of a certain qualities or possesses certain features (Col Sanders).

4J. Functionality: ss. 13, 32
Section 13 states when a distinguishing guise is registrable. A distinguishing guise is
considered a TM under the s. 2 definition of TM. However, s. 13(2) states that “No
registration of a distinguishing guise interferes with the use of any utilitarian feature
embodied in the distinguishing guise.” – this is known as the “doctrine of

Technical and functional characteristics alone are not considered a “distinguishing
guise” under Canadian TM law either for registered or unregistered marks, pursuant
to the doctrine of functionality (Kirkibi).
       -You cannot simply copy your patent application and make it a distinguishing
       guise TM application once your product goes off patent.

4K. Entitlement to Register: Use and Proposed Use
The s. 2 definition of “use” in the TMA says that the definition is in s. 4. Section 4(1)
and (2) state that “A trade-mark is deemed to be used in association with wares if,
at the time of the transfer of the property in or possession of the wares, in the
normal course of trade, it is marked on the wares themselves or on the packages in
which they are distributed or it is in any other manner so associated with the wares
that notice of the association is then given to the person to whom the property or
possession is transferred. (2) A trade-mark is deemed to be used in association with
services if it is used or displayed in the performance or advertising of those

Section 16 provides the registration criteria for marks used or made known in
Canada “Any applicant who has filed an application in accordance with section 30 for
registration of a trade-mark that is registrable and that he or his predecessor in title
has used in Canada or made known in Canada in association with wares or services
is entitled, subject to section 38, to secure its registration in respect of those wares
or services, unless at the date on which he or his predecessor in title first so used it
or made it known it was confusing with
         (a) a trade-mark that had been previously used in Canada or made known in
         Canada by any other person;
         (b) a trade-mark in respect of which an application for registration had been
         previously filed in Canada by any other person; or
         (c) a trade-name that had been previously used in Canada by any other

(i) Used in Canada
If any part of the chain [manufacturer to wholesaler and/or retailer ending with
consumer] takes place in Canada, this is ‘use’ in Canada within the meaning of s. 4
which satisfies the “use” requirement for s. 16(1)(a) (Lin Trading).

(ii) “In the normal course of trade”
Evidence of use under s. 16 can include sales figures, invoices
‘use’ by a Cdn distributor may not entitle the foreign TM owner to any TM rights in
Canada if there is insufficient evidence of sales by the distributor to qualify as “use”
and no independent use by the foreign owner in Canada either (Sequa Chemicals).

(iii) Use “as a TM”
-In order to determine whether a mark is being used as a TM (a requirement for
registrability) must look to the intention of the user and/or recognition by the public;

either one is sufficient, but must establish evidence of at least one (British
    -The assignment of a mark that has not been “used” as a TM does not seem to
    give any TM rights to the assignee

(iv) “Made known in Canada”
(Valle’s Steak House)
        1. A foreign company, even if it is doing business abroad exclusively, may
            nonetheless acquire rights in Canada and may maintain them in Cdn
            courts just as any Cdn company may do
        2. The existence of a TM in law does not in any way depend on its
            registration, and the rights to a TM are acquired by adoption and use of
            the mark in relation to goods/services (rights exist prior to registration)
        3. The ‘making known’ in Canada of a TM used abroad is equivalent to its use
            in Canada (s. 3)
        -The importance of a foreign TM owner making its mark known in Canada (in
        a substantial part of the country)

(v) Application Previously Filed
The Registrar cannot refuse an application on the ground that it is confusing with
another pending mark that was filed subsequently and cites a previous use, rather,
both marks can be applied for and the first mark will be certified first, preventing a
subsequent mark that is confusing with it to be registered (Effigi Inc.).

5. EXPUNGEMENT, ss. 43, 45
5A. Loss of Distinctiveness
If a registered TM loses its distinctiveness (a requirement for registration under s.
12) an action may be brought to expunge it from the register pursuant to ss. 43, 45.

Loss of distinctiveness can be made out in circumstances where an assignee uses the
mark incorrectly and fails to inform the public (by accident or on purpose) that the
mark is no longer the same source identifier it originally was (Heitzman).
   -Read s. 18(1)(b) and s. 2(f) together, as per Wilkinson

5B. Abandonment
Practical Test  “To resolve a case of this nature is to compare the TM as it is
registered with the TM as it is used and determine whether the diff b/n these two
marks are so unimportant that an unaware purchaser would be likely to infer that
both, in spite of their differences, identify goods having same origin”
   -(from Registrar of Trademarks v. Compagnie Internationale pour ‘Informatique
   CII Honeywell Bull)

The law of trademarks does not require the maintaining of absolute identity of marks
in order to avoid abandonment, nor does it look to minuscule differences to catch out
a registered trademark owner acting in good faith and in response to fashion and
other trends. It demands only such identity as maintains recognizability and avoids
confusion on the part of the unaware purchasers
   -Law must take account of economic and technical realities [policy]
   -Cautious variations can be made without adverse consequences, if the same
   dominant features are maintained and the differences are so unimportant as not
   to mislead an unaware purchaser

5C. Non-Use
(McCain Foods)
Test for dealing with special circumstances  court must consider three criteria:
       1. Length of time during which the TM has not been in use
           2. Determine whether the registered owner’s reason for not using the TM
           were due to special circumstances beyond its control
           3. Whether there exists a serious intention to shortly resume use
-Do not need to provide date of last use for special circumstances to be considered

Sections 48(1) and (2) provide that “A trade-mark, whether registered or
unregistered, is transferable, and deemed always to have been transferable, either in
connection with or separately from the goodwill of the business and in respect of
either all or some of the wares or services in association with which it has been used.
(2) Nothing in subsection (1) prevents a trade-mark from being held not to be
distinctive if as a result of a transfer thereof there subsisted rights in two or more
persons to the use of confusing trade-marks and the rights were exercised by those

Sections 50(1) and (2) provide that “For the purposes of this Act, if an entity is
licensed by or with the authority of the owner of a trade-mark to use the trade-mark
in a country and the owner has, under the licence, direct or indirect control of the
character or quality of the wares or services, then the use, advertisement or display
of the trade-mark in that country as or in a trade-mark, trade-name or otherwise by
that entity has, and is deemed always to have had, the same effect as such a use,
advertisement or display of the trade-mark in that country by the owner. (2) For the
purposes of this Act, to the extent that public notice is given of the fact that the use
of a trade-mark is a licensed use and of the identity of the owner, it shall be
presumed, unless the contrary is proven, that the use is licensed by the owner of the
trade-mark and the character or quality of the wares or services is under the control
of the owner”.

One is not allowed to obtain an assignment in gross of a TM indicative of a certain
manufacturing origin and use it as a seller’s mark in respect of wares which it does
not manufacture but which it has continued to obtain from the very manufacturer to
which the mark is attached (this is what doesn’t satisfy the distinctiveness
requirement) (Breck’s).

Zimmerman article talks about Cdn TM licensing scheme.

Something more than a subsidiary and parent relationship must be shown to prove
“control of the character or quality of the wares or services” for the purposes of s.
50(1) (Dynatec).
       -Information in the public domain is not enough to meet the threshold of
       “public notice” for the purposes of s. 50(2)

How can one maintain control? Restriction to registered wares; retain right of
inspection; reserve right to terminate; dispute resolution clause

7. INFRINGEMENT, ss. 19, 20
The exclusive rights conferred by registration are set out in s. 19, which states that
registration “gives to the owner of the trade-mark the exclusive right to the use

throughout Canada of the trade-mark in respect of those wares or services”. This is
known as “direct infringement”.

Infringement of registered marks under “confusing usage” is set out in s. 20(1) as
“The right of the owner of a registered trade-mark to its exclusive use shall be
deemed to be infringed by a person not entitled to its use under this Act who sells,
distributes or advertises wares or services in association with a confusing trade-mark
or trade-name, but no registration of a trade-mark prevents a person from making
        (a) any bona fide use of his personal name as a trade-name, or
        (b) any bona fide use, other than as a trade-mark,
               (i) of the geographical name of his place of business, or
               (ii) of any accurate description of the character or quality of his wares
               or services,
in such a manner as is not likely to have the effect of depreciating the value of the
goodwill attaching to the trade-mark”.

7A. Confusing Usage, s. 20
Each case depends on its own facts – must consider all of the surrounding
circumstances (the words, look, sound, consumers) and what is likely to happen if
each of the marks are used in a normal way as a TM for the goods of the respective
owners (Pepsi-Cola)
       -What is protected by law is the whole mark as registered but a part of a
       mark may be so taken and used as to amount to a substantial taking of the
       -Court considers the marks in their entirety  looks at similarities AND
               -Differences were apparent between the two marks
               -From case  The general impression on the mind of the ordinary
               person made by sight and sound would be one of contrast, rather than
               of similarity

The extent of the exclusive right given by s. 19 is defined by the mark as registered.
If a right of action for infringement arises under s. 19 on the taking of the registered
mark, without reference to any likelihood of confusion or of such depreciation, it is
only the taking of the mark as registered on which such an action could be
maintained. Must be the exact mark (Mr. Submarine).
        -Any right of action for infringement that the registered owner may have in
        the taking of a part of the registered mark or in the use of a similar trade
        mark must arise, if at all, under s. 20 or possibly under s. 22.

Correct way of determining confusion under s.20 is to apply the criteria in 6(5). Case
is an example where the similarities trump the differences (Mr. Submarine).

Famous TMs may “cast an aura that is not circumscribed by association with its
traditional wine and champagne products’ but ‘its broader association with luxury
goods does not create confusion as to source with a chain of mid-priced clothing
stores or the products they market” (Veuve).

7B. Bona Fide Use Defence, s. 20(1)(b)(ii)
Pursuant to s. 20(1)(b)(ii) the dft may make use of the “bona fide use defence” in
response to an infringement claim by the ptf under s. 20(1).

In order to make use of the defence in s. 20(1)(b)(ii) it is critical that the mark or
name be an accurate description (as determined by linguists, in this case) of the
character/quality of the goods/services; it is not be enough to just be a general or
suggestive description (Bagagerie).
       -Case illustrates admirable vigilance by appellant, inclining dictionary editors
       to withdraw entries, as well as a trade-mark protection nuance of a bilingual

To qualify for this exemption, the dft must establish that the use was (Guccio Gucci):
       1. bona fide
       2. other than as a trademark
       3. of an accurate description of the character of the wares or services
       4. in such a manner as is not likely to have the effect of depreciating the
       value of the goodwill attaching to the trademark

7C. Concurrent Use, s. 21
Section 21(1) permits, in certain cases, the use of two similar TMs, in a certain area,
with an adequate distinction, but it only applies in the case of a registered TM of
which the registration is entitled to the protection of s. 17(2) (Kayser-Roth).
   -Section 17(2) shows that they must be TMs registered for more than five years
   and that the person who has adopted in Canada the registered TM, did not do so
   with the knowledge of such previous use or making known of such TM
   -In order to be able to avail oneself of the rights contained in s. 21(1), one must
   allege and prove whatever material facts are necessary to establish that the TM is
   one protected under s. 17(2) as well as all material facts required under s. 21(1)
   to enable the Court to appreciate and determine whether it can give effect to the
   order sought.

7D. Depreciation of Goodwill, s. 22
Section 22(1) gives a further right against the depreciation of the goodwill associated
with the mark, stating that “No person shall use a trade-mark registered by another
person in a manner that is likely to have the effect of depreciating the value of the
goodwill attaching thereto”.

It is contrary to s. 22(1) to use a competitor’s trade-marks for the purpose of appeal
to the competitor’s customers and deter them from continuing to purchase wares or
services from that competitor, to the advantage of one’s own business (Clairol).

Use of a competitor’s trade-mark in comparative advertising may be an infringement
of their exclusive right under s. 19 where the trade-mark is used in association with
services, pursuant to s. 4(2), however, so long as there is no violation of TMA or
another law comparative advertising wrt to wares it may be allowable (Eye Masters).

The question to be determined in cases of comparative advertising is whether use of
the competitor’s trade-mark in the advertisement is for a purpose which stresses the
similarities or differences with the trade-marked competition (Future Shop).
        -If it stresses similarities, the trade-mark is appropriated in a manner
        contrary to s. 22
        -If it stresses the differences, then it does not offend s. 22

Must have some kind of mental association in the reasonable buyer’s mind between
the two parties and the mark for there to possibly be a finding of dilution or
depreciation of goodwill. There is a four part test for a finding under s. 22 (Veuve):

       1. Use of the claimant’s registered TM in connection with wares or
       services (regardless of whether the wares/services are competitive with the
       2. Proof of goodwill (the claimant’s registered TM is sufficiently well known
       to have significant goodwill attached to it)
       3. The claimant’s mark was used in a manner likely to have an effect on
       4. Likelihood of depreciation (the likely effect would be to depreciate the
       value of its goodwill (i.e. damage))

7E. Dilution
U.S. Federal TM Dilution Act prohibits tarnishment and dilution.
(1) owner of famous mark shall be entitled … to an injunction against another
person’s commercial use if such use … causes dilution of the distinctive quality of the
mark, and to obtain such other relief as is provided in this subsection. In
determining whether a mark is distinctive and famous, a court may consider factors
such as, but not limited to:
        a) the degree of inherent or acquired distinctiveness
        b) the duration and extent of use of the mark in connection with the
        c) duration and extent of advertising and publicity
        d) geographical extent of the trading area
        e) channels of trade
        f) degree of recognition by people in channels of trade
        g) nature and extent of use of the same or similar marks by 3rd-parties
        h) whether the mark is registered or not
(2) If a person willfully intended to trade on the owner’s reputation or cause dilution,
they may be subject to additional remedies besides just injunction
(3) If you have a registration for your mark, it is a complete defence to a dilution
(4) Fair use provision. The following acts are not actionable:
        - comparative commercial advertising
        - noncommercial use of a mark
        - all forms of new reporting and commentary

Schechter article talks about the rational basis for TM protection

Jacoby article talks about the psychological foundations of TM law

7F. Freedom of Expression
Aoki article discusses the relationship b/w the expanding scope of TM protection and
free speech norms.

-To determine if case fits, need to decide if it fits definition of commercial speech
under 1st Amendment case law  core notion is that it does no more than propose a
commercial transaction (MCA Records).
       -If it is not purely commercial then it is entitled to 1st Amendment protection
       -Song is not purely commercial – parody; lampoons
                 -Should be protected

“Cannot use trademark laws to…censor all parodies or satires which use its name or
dress”. Courts required to construe the Lanham Act “to apply to artistic works only

where the public interest in avoiding consumer confusion outweighs the public
interest in free expression” (Walking Mt. Prods).

7G. Trade-marks and the Internet
Jones article discusses TMs in cyberspace

Section 22 requires that the offending use be a use in association with wares and
services and that contemplates an element of commercial use (BC Automobile Assn).
   -Non-commercial provision of information alone is not a service as contemplated
   by s. 4 TMA
   -Reference to an employer's trade-mark to identify a Union site does not -
   depreciate goodwill associated with that trade-mark

Registering a trademark as a domain name and directing the web traffic elsewhere
for commercial purpose satisfies the requirements of passing-off (Law Society of BC).

CIRA dispute resolution process for Cdn domain names (Browne):
Policy 4.1 sets out what needs to be proven on a balance of probabilities to stop use
of the impugned domain name by the dft:
    1. Domain name is confusingly similar to one of the Complainant’s Marks
    2. Registrant has registered the domain name in bad faith, as defined in policy
    3. Registrant had no legitimate interest, as described in Policy 3.6, in the
        domain name

TM ownership is not a free ticket to exclude all others from registering domain
names that incorporate the TM if that TM is generic, (even in the TM is relatively
famous) (Black).

Criticism is recognized by law as a legitimate interest, however domain names
registered for criticism must generally have a qualifying competent which indicates
that the website is for criticism. Unqualified use of the registered TMs of third parties
will generally be considered to be an infringement of their rights to decide how its
mark will be used (Diners Club).

Nomitive use of a TM is not actionable. Nomitive use does not dilute the TMs. The
part test for nomitive use (Welles):
   Test for nominative use (when fair use analysis cannot be applied):
       1. The product or service in question must be one not readily identifiable
       without use of the TM (i.e. the defendant uses the mark only when no
       descriptive substitute exists), interpreting I light of s. 6(5) factors (and s. 6
       2. Only so much of the mark(s) may be used as is reasonably necessary to
       identify the product/service
       3. The user must do nothing that would, in conjunction with the mark,
       suggest sponsorship or endorsement by the TM holder

Initial interest confusion is an actionable claim (it requires the establishment of a
likelihood of confusion using the 8-part test)
    -In the internet context courts must be flexible in applying the confusion test as
    some factors may NOT apply and some may be more important than others (in
    this case, evidence of actual confusion weighed heavily in favour of Playboy)
 (Netscape Communications).


To top