Trade-marks Act

Comparison Registration

Registration is a pre-requisite to protection under the Trade-marks Act

No registration required for passing off

Comparison Reputation/use

It is not necessary to establish reputation under the Act

It is necessary to show use or intended use to obtain registration

Comparison Confusion

Essentially the same in both passing off and under the Act

Comparison Damage as an element

Damage is not an element of the infringement action under the Act

Although it is still necessary to show damages to obtain the remedy

Comparison Geographic scope

Reputation may be geographically localized under passing off

Eg Another sports store named “Radical Edge” could not open in F’ton, but it could in Vancouver

Trade-mark is effective nation-wide under the Act

Local use may support registration

Comparison Trade-mark Act has section

prohibiting “depreciation of goodwill” (s.22 which has no common law counter-part)

Overview of the Act

What is a trade-mark? What is a trade-mark?

a mark that is used by a person for the purpose of distinguishing or so as to distinguish wares or services manufactured, sold, leased, hired or performed by him from those manufactured, sold, leased, hired or performed by others,

“so as to” – in fact “for the purpose of” – intent

What is a trade-mark? Also

“distinguishing guise” – as above but shape or mode of packaging instead of “mark”

Like “get-up” in passing off

Distinctiveness "distinctive", in relation to a trade-

mark, means a trade-mark that actually distinguishes the wares or services in association with which it is used by its owner from the wares or services of others or is adapted so to distinguish them;

Distinctiveness Note that distinctiveness is not part

of the definition of the mark A mark which is intended to distinguish

is a mark even though it does not distinguish in fact; eg “Shredded Wheat’

Lack of distinctiveness in fact Is not a ground for refusal of

registration by the Registrar – why not? Is a ground for invalidity or opposition

Prohibited Marks Some marks are protected without

registration “Official marks”: s.9

National flags, Red Cross Geographical indications for wines &

spirits S. 11.14, 11.15 But generic descriptions eg

“Champagne” are neither protected nor registrable

Registration Required Protection under the Act is not

automatic A mark must be registered under the

Act in order to receive protection under the Act

Registration Process Application is made Registrar examines mark and may

reject on certain grounds Registrar advertises mark and gives

interested third parties an opportunity to object Normally parties with a confusing

registered or unregistered mark

Invalidity The validity of a mark may be

challenged even after registration

Invalidity 18 (1) The registration of a trade-mark is

invalid if (a) the trade-mark was not registrable

at the date of registration, (b) the trade-mark is not distinctive at

the time proceedings bringing the validity of the registration into question are commenced, or

(c) the trade-mark has been abandoned, and subject to section 17, it is invalid if

the applicant for registration was not the person entitled to secure the registration

Note the difference in the relevant dates

Effect of Registration S16(1) [An applicant who has

satisfied use requirements] in association with wares or services is entitled . . . to secure its registration in respect of those wares or services,

A trade-mark is registered in respect of specific wares and services only that he. . . has used in Canada or made

known in Canada in association with wares or services

The mark must have been used in association with those wares or serves

Words and Designs A trade-mark may consist of words

alone or words in conjunction with a design “Molson Export” TMA516835

“Brewed alcoholic beverages namely, beer” “Export” application 0545048 by

Molson refused “Export” and design TMA159081

Disclaimer: “The right to the exclusive use of all the reading matter except the word MOLSON'S is disclaimed apart from the trade mark”

Effect of Registration The right to prohibit use of the same

mark on the same wares: s19 No requirement to show confusion Not commonly litigated

The right to prohibit use of a confusing mark or name: s20 Commonly litigated Need not be the same mark or the same

wares

Effect of Registration The right to prohibit uses which

might “depreciate the goodwill” of the mark: s22 Controversial and rarely used

Term Trade-mark registration is effective

for 15 years, renewable indefinitely on payment of the prescribed fee: s.46

Formalities ®

US law only – no damages without actual notice of registration unless this symbol is displayed

Applies only to marks registered in the US

™ and SM No direct legal implications Indicates that the word is a mark