Trade-marks by Prof. Craig (Winter
2011)
1
1. THE THEORETICAL BASIS OF TM LAW
9
(a) Introducing Brands and Logos
9
Introduction to the Trademark Scheme
9
The Psychological Foundations of TM Law: Secondary Meaning, Genericism, Fame, Confusion
and Dilution [2001], by Jacob Jacoby
9
Transcendental Nonsense and Functional Approach [1935], by Felix Cohen
9
The Brand Expands: How the Logo Grabbed Center Stage [2000], by Naomi Klein
10
Brands have value
10
(b) Rationalizing the Protection of Trade Identity
Different Theories to rationale TM laws
Trademark Law: An Economic Perspective, by Landes and Posner
Caw law rationalizing the legal protection of TMs
Kirkbi AG v. Ritvik Holdings Inc./Gestions Ritvik Inc. [2005] SCC
Mattel USA Inc v. 3894207 Canada Inc. [2006] SCC
Veuve Clicquot Ponsardin c. Boutique Cliquot Ltee [2006] SCC
Masterpiece Inc. v. Alavida Lifestyle Inc. [2011] SCC
Limitation of Protection
10
10
11
11
11
12
12
12
12
2. UNFAIR COMPETITION AND RESTRAINT OF TRADE
13
Rationale for restraint on Trade
13
(a) Common Law Unfair Competition Torts
(i) The Tort of Conspiracy
(ii) The Tort of Injurious Falsehood
(iii) The Tort of Passing Off: A Brief Introduction
The tort of passing off
Types of Passing Off
In order to make out a classical passing-off situation:
Powell v. Birmingham Vinegar Brewery Co. [1896] CA – Chancery Division
Erven Warnink B. V. v. J. Townend & Sons Ltd. [1979] UK HL
Different Types of Passing Off:
13
13
13
13
13
13
14
14
16
18
1. THE ELEMENTS LAW OF PASSING OFF
19
The tort of Passing off
Consumers Distributing Co. v. Seiko Time Canada Ltd. [1984] SCC
Ciba-Geigy Canada Ltd. v. Apotex Inc [1992] SCC
19
19
20
2. ESTABLISHING THE ELEMENTS OF PASSING OFF
20
(a) The Existence of Goodwill
A necessary step in a passing off action
(i) Establishing Goodwill and the Distinctiveness of Indicia
Distinctiveness in lay sense vs. Distinctiveness under the TMA
Policy: Effectual Monopoly Granted?
Canadian Shredded Wheat Co. v. Kellogg Co. of Canada Ltd. [1938] ON PC
Reckitt & Colman Products Ltd. v. Borden Inc. [1990] HL
Oxford Pendaflex Canada Ltd. v. Korr Marketing Ltd. [1982] SCC
Ray Plastics Ltd. v. Dustbane Products Ltd. [1994] ON CA
(ii) The Locality of the Goodwill
Locality vital to the passing off action
20
20
21
21
21
21
22
26
26
27
27
2
Nature of goodwill – Spread beyond geographical borders
Orkin Exterminating Co. v. Pestco Co. of Canada [1985] ONCA
Walt Disney Productions v. Triple Five Corp. [1994] Alta CA
(iii) The Relevance of a Common Field of Activity
Whether the goodwill or reputation acquired by the P in a passing off action must be in the
same “field of activity” as the D’s in order for passing off to occur?
Walt Disney Productions v. Fantasyland Hotel Inc. [1996] Alta CA
Harrods Ltd. v. Harrodian School Ltd. [1996] CA
27
27
30
32
32
33
34
(b) Deception of the Public by Misrepresentation
(i) Establishing Misrepresentation and Confusion
Establishing the tort of passing off:
Extended boundary of passing off:
Types of passing off:
Consumers Distributing Co. v. Seiko Time Canada Ltd. [1984] SCC
Cadbury Schweppes Property Ltd. v. Pub Squash Co. [1981] AU PC
National Hockey League v. Pepsi-Cola Canada Ltd. [1992] BC SC
National Hockey League v. Pepsi-Cola Canada Ltd. [1992] BC CA
(ii) Who is Confused?
The concept of relevant public
Ciba-Geigy Canada Ltd. v. Apote Inc. [1992] SCC
Abbott Laboratories Ltd. v. Apotex Inc. [1998] ON GD
40
40
40
40
40
40
42
43
43
44
44
44
45
(c) Potential Damage to the Plaintiff
Actual or Potential Damage
Requirement of Proof of Damage in s. 7(b) Proceedings
Orkin Exterminating Co. v. Pestco Co. of Canada [1985] ONCA
Walt Disney Productions v. Triple Five Corp. [1994] Alta CA
BMW Canada Inc. v. Nissan Canada Inc. [2007] FCA
46
46
46
46
47
47
1. THE RELATIONSHIP BETWEEN THE COMMON LAW AND THE TMA
48
Dual Protection of TMs in Canada
Protection under the TMA
Protection under the Common Law
Kirkbi AG v. Ritvik Holdings Inc./Gestions Ritvik Inc. [2005] SCC
48
48
48
48
(a) The Advantage of Registration
49
Priority can be secured based on proposed use under the Act
49
No need to prove reputation in order to succeed in securing a remedy in respect of a registered
TM
49
Advantage of a registered TM
49
Comparison between Common Law Protection and protection under the TMA
49
TM protected both provincially and federally
50
(b) Issues of Jurisdiction
Which court to choose?
50
50
(c) Issues of Constitutionality
Vapor Canada Ltd. v. MacDonald [1976] SCC
Motel 6 Inc. v. No. 6 Motel Ltd. [1981] FTD
Asbjorn Horgard A/S v. Gibbs/Nortac Industries Ltd. [1987] FCA
Kirkbi AG v. Ritvik Holdings Inc./Gestions Ritvik Inc. [2005] SCC
The limitation of s. 7(b) in passing off actions
BMW Canada Inc. v. Nissan Canada Inc. [2007] FCA
50
50
51
52
53
54
54
3
2. REGISTRATION AS A DEFENSE TO PASSING OFF
Registration is a defense to an action for passing off
Molson Canada v. Oland Breweries Ltd./Brasseries Oland Ltee [2002] ON CA
Jonathan, Boutique Pour Hommes Inc. v. Jay-Gur International Inc. [2003] FCTD
3. STANDARD OF REVIEW
55
55
55
56
56
Standard of review and s. 56
Molson Breweries, A Partnership v. John Labatt Ltd. [2000] FCA
Promotions C.D. Inc. v. Sim & Mcburney [2008] FC
Scott Paper Ltd. v. Smart & Biggar [2009] FCA
Jose Cuervo S.A. de C.V. v. Bacardi & Co. [2009] FC
Required elements of an application for registration of a TM – s. 30
A registrar will examine:
Application procedure
56
56
57
57
57
57
58
58
1. ESTABLISHING THE REGISTRABILITY OF MARKS: SECTION 12
58
Registrability is a pre-condition of entitlement to register – s. 16
Registrability: Relative Bars and Absolute Bars – s. 12
58
58
(a) Names or Surnames: s. 12(1)(a)
59
A TM not prima facie registrable if a “word that is primarily merely the name or the surname of
an individual who is living or has died within the preceding 30 years.”
59
Questions asked under s. 12(1)(a)
59
s. 12(1)(a) test:
59
Standard Oil Co. v. Canada (Registrar of Trade Marks) [1968] Can Ex. Ct.
60
Canada (Registrar of TMs) v. Coles Book Stores Ltd. [1972] SCC
60
Elder’s Beverages (1975) Ltd v. Canada (Registrar of TMs) [1979] FTD
61
Galanos v. Canada (Registrar of TMs) [1982] FTD
62
Gerhard Horn Investment Ltd. v. Canada [1983] FCTD
62
Practice Notice – Paragraph 12(1)(a) of the Act – Name or Surname
63
(b) Clearly Descriptive or Deceptively Misdescriptive: Pargaraph 12(1)(b)
s. 12(1)(b) – clearly descriptive or deceptively misdescriptive
Clearly descriptive
Deceptively misdescriptive
Whether depicted, written, or sound
Merely suggestive vs. Clearly descriptive or deceptively misdescriptive
s. 12(1)(b) can be overcome by s. 12(2)
Abercrombie & Fitch Co. v. Hunting World, Inc. [1976] US CA
(i) Descritpive or Misdescriptive of Place of Origin
American Waltham Watch Co. v. United States Watch Co. Supreme Judicial Court of MA
[1899]
Pacific Lime Co. Re. [1920] Can. Ex. Ct.
T.G. Bright & Co. v. Canada [1985] FCTD
Consorzio del Prosciutto di Parma v. Maple Leaf Meats Inc. [2001] FCTD
Sociedad Agricola Santa Teresa Ltda. C. Vina Leyda Ltda [2007] FC
Rothmans Benson & Hedges Inc. v. Matinee Co. [2008] TMOB
Great Lakes Hotels Ltd. v. Noshery Ltd. [1968] Can. Ex. Ct.
(ii) Descriptive or Misdescriptive of Character or Quality
Provenzano v. Canada [1977] FCTD
Pepsi-Cola Co. v. Coca-Cola Co. [1939] SCC
Pizza Pizza Ltd. v. Canada [1982] FCTD
Home Juice Co. v. Orange Maison Ltee. [1970] SCC
63
63
64
64
64
64
65
65
66
66
66
66
67
69
69
70
71
71
72
72
73
4
S.C. Johnson & Son Ltd. v. Marketing International Ltd. [1979] SCC
General Housewares Corp. v. Fiesta Barbeques Ltd. [2003] FCTD
Best Western International Inc. v. Best Canadian Motor Inns Ltd. [2004] FCTD
Practice Notice – s. 12(1)(b) prohibition
73
74
74
75
(c) Acquired Distinctiveness: Subsection 12(2) and Section 32
s. 12(2) – proof of acquired distinctiveness overcomes relative bar to registration
s. 32
A heavy burden of proof and the relevant date is the date of application for registration
Carling Brewaries Ltd. v. Molson Cos. [1984] FCTD
Carling O’Keefe Ltd. v. Molson Cos. [1984] FTD
John Labatt Ltd. v. Molson Cos. [1987] FCA
Molson Breweries, A partnership v. John Labatt Ltd. [2000] FCA
75
75
76
76
76
77
77
78
(d) Name in Any Language of Wares or Services: Paragraph 12(1)(c)
Section 12 (1) (c) -- Name in any language of wares or services
Jordan & Ste-Michelle Cellars Ltd. v. Andres Wines Ltd. [1986] TMOB
79
79
80
(e) Confusing with a Registered Trade-mark: Paragraph 12(1)(d)
s. 12(1)(d) – confusing with a registered TM
s. 6(5) – non-exhaustive list of factors to be considered in determining whether there is
confusion
Establishing the likelihood of confusion as a fact-finding and inference drawing exercise
Inherent distinctiveness vs. Confusion
Masterpiece Inc. v. Alavida Lifestyle Inc. [2011] SCC
The relevance of fame
Underlying morality in jurisprudence
Miss Universe Inc. v. Bohna [1994] FCA
United Artist Pictures Inc. v. Pink Panther Beauty Corp. [1998] FCA
Toyota Jidosha Kabushiki Kaisha v. Lexus Foods Inc. [2000] FCA
Mattel USA Inc. v. 3894207 Canada Inc. [2006] SCC
80
80
80
80
81
81
83
84
84
86
89
91
(f) Prohibited Marks: Paragraph 12(1)(e)
93
(i) Scandalous, Obscene, or Immoral Marks: Paragraph 9(1)(j)
93
The use that triggers s. 9 is broader than the technical definition under s. 4
93
Enforcement – s. 53.2
93
s. 9 prohibition is sweeping and potentially subjection to constitutionality challenge.
93
s. 9 allows the public authority to adopt an official mark and then the use official mark is then
prohibited.
93
s. 9(2) possible license of an official mark
93
(ii) Connection to an Individual: Paragraph 12(1)(e), 9(1)(k) and (l), Subsection 9(2)
93
Protection against false association with an individual
93
s. 9(1)(k)
93
s. 9(1)(l)
94
The common law of passing off equally effective
94
Statutory protection
94
Carson v. Reynolds [1980] FCTD
94
Fawcett v. Linda Lingerie Manufacturing Inc. [1984] TMOB
94
Baron Phillipe de Rothschild S.A. v. Casa de Habana Inc. [1987] ON HC
95
MISAPPROPRIATION OF PERSONALITY
Privacy Interest
The doctrine of Misappropriation of Personality
Athans v. Canadian Adventure Camps Ltd. [1977] ON HC
95
95
95
96
5
Baron Phillipp de Rothschild S.A. v. Casa De Habanna Inc. [1987] ON HC
Gould Estate v. Stoddart Publishing Co. [1996] ON Gen Div
3. FUNCTIONALITY AND DISTINGUISHING GUISES: SECTION 13 AND 32
97
97
98
Public interest and functional distinguishing guises
98
s. 13
98
s. 32
99
Distinguishing guises are registrable to the extent that they are used, distinctive and do not run
afoul of the doctrine of functionality.
99
The doctrine of functionality
99
Parke, Davis & Co. v. Empire Laboratories Ltd. [1964] SCC
99
IVG Rubber Canada v. Goodall Rubber Co [1980]
100
Pizza Pizza Ltd. v. Canada [1989] FCA
100
Remington Rand Corp v. Phillips Electronics N.V. [1995] FCA
101
WCC Containers Sales Ltd v. Haul-All Equipment Ltd. [2003] FC
101
Kirkbi AG v. Ritvik Holdings Inc./Gestions Ritvik Inc. [2005] SCC
102
Crocs Canada Inc. v. Holey Soles Holdings Ltd. [2008] FC
102
1. UNDERSTANDING SECTION 16: ENTITLEMENT AND PRIORITY
103
Entitlement to register is about being the first – s. 16
103
Priority based on either prior use or first filing due to Canada’s mixed legacy from both
common law and civil law
103
s. 16(1) – prior use or making known in Canada
103
s. 16(2) – registration in foreign countries and use in association with the wares/services 104
s. 16(3) – filed application for a proposed-trademark
104
Use is still the key element
104
Priority date
104
The applicant with the better right to register is the party whose priority date is prior in time
pursuant to s. 16(1),(2), and (3) unless prior to that date the mark was confusing with
104
Application only affected by pending applications; abandoned or refused applications irrelevant
– s. 16(4) and (5)
105
s. 17 – Effect of registration in relation to previous use and when registration is incontestable
105
s. 57 – Exclusive Jurisdiction of Federal Court and Restriction to Challenge the decision of a
registrar
105
Masterpiece Inc. v. Alavida Lifestyle Inc. [2011] SCC
105
2. USE AND MAKING KNOWN
106
(a) “Used in Canada”
Use and making known—the technical definition
Bombardier Ltd. v. British Petroleum Co. [1971] FTD
Express File Inc v. HRB Royalty Inc. [2005] FC
Lin Trading Co. v. CBM Kabushiki Kaisha [1988] FCA
Citrus Gowers Assn. Ltd. v. William D. Branson Ltd. [1990] FTD
Sequa Chemicals Inc. v. United Color & Chemicals Ltd. [1993] FCA
106
106
107
107
108
108
109
(b) Make Known in Canada
s. 5 and making known in Canada
Rober C. Wian Enterprises Inc. v. Mady [1965] Can. Ex. Ct.
Valle’s Steak House c. Tessier [1980] FTD
110
110
111
114
6
3. FOREIGN REGISTERED MARKS
s. 16(2) – title flowing from foreign registration and use
Preferential Treatment – s. 14
s. 14 Restrability of a mark with pre-existing foreign registration
Union Carbide Corp. v. W.R. Grace & Co. [1987] FCA
Canadian Council of Professional Engineers v. Lubrication [1992] FCA
4. PROPOSED USE
s. 16(3) – title flowing from filing of an application for proposed TM
Lassonde Inc. c. Canada [2003] FTD
1. ASSIGNMENT AND LICENSE COMPARED
114
114
114
115
115
116
117
117
117
118
Transferring and Licensing of the TM  validity of the TMs  basis on which the validity can
be challenged
118
s. 48 -- assignment
119
s. 50 -- licensing
119
Magder v. Breck’s Sporting Goods Co., [1975] SCC
120
2. CONTROL OF CHARACTER OR QUALITY: SECTION 50
Licensing and Control
Eli Lilly & Co. v. Novopharm Ltd. [2000] FCA
Tommy Hilfiger Licensing Inc. v. Produits de Qualite I.M.D. Inc. [2005] FC
Dynatech Automation System Inc. v. Dynatech Corp. [1995] TMOB
1. GOUNDS FOR INVALIDITY AND EXPUNGEMENT
123
123
123
125
127
127
Grounds on which a TM may be found invalid – s. 18
127
The federal court of Canada stressed action to expunge a mark that has been found to be invalid
from the register as per section 57 of the trademarks out
128
A mark is always vulnerable to the challenge of its initial register ability pursuant to s. 18(1)(a)
128
A TM owner must police his TMs
128
Policing a mark should be without delay
128
s. 57: confer jurisdictions on the federal court to order something struck or amended on entries
of the register.
128
S. 58 provides for how proceedings under s. 57 shall be instituted
128
s. 45: Registrar may request evidence of user
128
2. LOSS OF DISTINCTIVENESS
s. 18(1)(b) the loss of distinctiveness of a mark
Heintzman v. 751056 Ontario Ltd [1990] FTD
Aladdin Industries Inc. v. Canada Thermos Products Ltd. [1969] Can. Ex. Ct.
3. ABANDONMENT AND NON-USE: USE IT OR LOSE IT
S. 18(1)(c) – abandonment or non-use
Evidence and Use or Intention to Use
Summary expungement – s. 45
(a) Use and Non-Use
Promafil Canada Ltee v. Musingwear Inc. [1992] FCA
129
129
129
130
132
132
133
133
134
134
7
(b) Excuse for Non-use
Non-Use
McCain Foods Ltd. v. Chef America Inc. [1996] TMOB
Scott Paper Ltd v. Smart & Biggar [2008] FCA
134
134
135
136
1. UNDERSTANDING INFRINGEMENT
137
s. 19, 20 and 22 – scope of rights and basis for infringement
s. 19
s. 20
s. 22
2. SECTION 19 INFRINGEMENT
Clairol International Corp. v. Thomas Supply & Equipment Co. [1968] Can Ex Ct
Mr. Submarine Ltd v. Amandista Investment Ltd. [1987] FCA
3. SECTION 20 CONFUSION INFRINGEMENT
Pepsi-Cola Co. v. Coca-Cola Co. [1939] SCC
Sun Life Assurance Co. of Canada v. Sunlife Juice Ltd. [1988] ON HC
Mr. Submarine Ltd v. Amandista Investment Ltd. [1987] FCA
Veuve Clicquot Ponsardin c. Boutiques Cliquot Ltee [2006] SCC
137
138
138
138
139
139
141
143
143
145
146
148
4. EXCEPTION TO INFRINGEMENT
149
(a) Bona Fide Use Defense
Limited defense for good faith users – s. 20
Defense narrowly drawn – heavy burden of proof
Bagagerie Sa v. Bagagerie Willy Ltee [1992] FCA
Guccio Gucci S.p.A. v. Meubles Renel Inc. [1992] FCA
149
150
150
150
151
(b) Concurrent Use
s. 21—Concurrent use
5-year time bar – s. 17(2)
Conditions for s. 21(1)
Use of two confusing marks by different persons?
Kayser-Roth Canada (1969) Ltd. v. Fascination Lingerie Inc. [1971] Can Ex Ct
152
152
153
153
153
153
1. DEPRECIATION OF GOODWILL: SECTION 22
155
s. 22 – Depreciation of goodwill
Rationale for dilution liability
Veuve Clicquot Ponsardin c. Boutiques Cliquot Ltee [2006] SCC
2. COMPARATIVE ADVERTISING AND SECTION 22
s.22 and restriction on comparative advertising
Clairol International Corp. v. Thomas Supply & Equipment Co. [1968] Can Ex Ct
Eye Masters Ltd. v. Ross King Holdings Ltd. [1992] FTD
Future Shop Ltd. v. A. & B. Sound Ltd. [1994] BC SC
155
155
156
158
158
158
161
162
8
Chapter 1: Regulating Competitive
Behavior
1. The Theoretical Basis of TM Law
(a) Introducing Brands and Logos
Introduction to the Trademark Scheme
TMs are indicators of trade source
 By virtue of their capacity to identify the origin of wares or services, TMs
embody the goodwill and reputation that is associated with the trade source
in the marketplace.
 This is the reason that the law protects TMs to the extent that a mark
functions to identify source in the minds of consumers
Other functions of TMs
 Powerful cultural signifiers: can efficiently communicate a myriad of
messages and associations to others on the basis of shared public recognition.
 Valuable repository for the positive connotations and associations that have
been built up in the public’s mind, whether through positive experiences
with wares or services to which the mark is attached, or through expensive
and pervasive and/or persuasive advertising campaigns.
It is these functions which are made possible through legal protection of TMs that
make possible the creation and development of a brand.
The Psychological Foundations of TM Law: Secondary Meaning, Genericism, Fame,
Confusion and Dilution [2001], by Jacob Jacoby
 Brand names serve as info chunks, around which other associated info is
connected and organized. A familiar brand name can stimulate the process of
calling into consciousness of relevant and important info.
 A unique brand name and cohesive brand identify are the most powerful
pieces of info for consumers. They serve as info chunks, allowing customers
to efficiently organize, store, and retrieve info from memory
This neurological process serves as the basis for the creation and development of
brand image.
The neurological process also helps rationale why the law protects TMs.
 Control is needed to preserve the ability to trigger such a neurological
process.
Transcendental Nonsense and Functional Approach [1935], by Felix Cohen
The value of a brand should not be treated as a justification for why the law protects
TMs
9



It is wrong to assert that because the ingenuity of one’s advertising or the
quality of one’s product has induced consumer responsiveness to a particular
name, symbol, form of package, etc. has thereby created a thing of value; a
thing of value is property; the creator of property is entitled to protection
against free-riding by third parties
It is a circular logic: the value of the brand is based upon the legal protection
thereof
What courts are actually doing is to create and distribute a new source of
economic wealth power.
The Brand Expands: How the Logo Grabbed Center Stage [2000], by Naomi Klein
 Logos have become so dominant that they have transformed into products
themselves with the development of brand culture
o We are become walking billboards
 What bearing should the reality of brand marketing and its mechanisms have
on the justification for protecting TMs, as well as on the scope and effect of
the protection provided by the law?
 The marks have evolved into powerful vehicles of social and cultural
expression, what policy considerations are implicated beyond the mere
protection of corporate goodwill and the avoidance of consumer confusion?
 How should the various interests of owners and non-owners, corporations,
consumers and citizens be balanced or reconciled?
Brands have value
 Brand management has an importance in modern commercial activities
 Companies have to know the value of their brand, have to track them,
measure them and manage them.
 Companies protect them by asserting CR or TM right in the logos or marks.
(b) Rationalizing the Protection of Trade Identity
Different Theories to rationale TM laws
 Labor theory: TM owners deserve to own the creatures of their labor
o labor invested  property concept  ownership
 as such, free-riding should be prevented.
o Resonates with TM law as it does with other areas of IP laws
o But there is no reason why labor should be equal to property right.
o The theory is premised on the assumption that everyone is a selfsufficient entity; independence will disrupt the system.
 One cannot take more than needed
 Pbl: others may participate in the creating process even though
the author felt that he/she was the sole creator
o Critic by other legal scholars: if there is anything created, it is created
by the customers instead of the creator of the TM.
 Question as to who creates the value
10

Economic theory: TM law is about the economic efficiency in the
marketplace.
o TMs function as signifiers of the source of the wares and services.
o Since the TM identifies the source, it conveys info about the wares and
services, which can in turn be used in making their purchasing
decisions by the customers.
o This benefit encourages manufacturers to maintain good quality over
time and across market and among consumers.
o Consumers can rely on the TMs in making the purchasing decision,
getting the quality they want.
 Quality in this case connotes the consistency of the quality of
the product.
o So the manufacturers are allowed to reap the benefit of their goodwill.
 Higher prices can be achieved: customers are willing to pay
more for consistent quality
o TM law steps in as it is easy to free-ride with respect to TMs. If freeriding is allowed, there will be disincentive for developing and
maintaining goodwill in the marketplace.
o The interest of manufacturers and consumers converge.
Trademark Law: An Economic Perspective, by Landes and Posner
 Like other forms of IP, TMs are costly to create but cheap and easy to
replicate.
 By limiting free-riding, the TM law provides incentive for traders to invest in
the development of a mark and so to maintain the quality of the products
associated therewith.
 The consumer benefits from this improved quality, as well as from the
reduced search-cost that flow from the mark’s capacity to identify the trade
source in the marketplace.
Comment:
 The position is hard to maintain:
o Free competition is important to traders and consumers as well as fair
competition.
 The tension between free competition and fair competition is
at the heart of TM law.
 The intrinsic tension of TM law – policy concerns at play in any TM litigation
The choice of the courts The interst of
The interest of
Enterprises
Consumers
Find for the plaintiff
fair competition
good information (no
confusion)
Find for the defendant
free competition
greater choice
Caw law rationalizing the legal protection of TMs
Kirkbi AG v. Ritvik Holdings Inc./Gestions Ritvik Inc. [2005] SCC
H In TM law, the focus is on the distinctiveness of the product’s marketing.
11


TMs seek to indicate the source of a particular product, process or services in
a distinctive manner, so that, ideally, consumers know what they are buying
and from whom.
However, a mark must not be confused with the product, despite its
connection with a product; A mark is a symbol of a connection between a
source of a product and the product itself.
Mattel USA Inc v. 3894207 Canada Inc. [2006] SCC
H  The legal purpose of TMs is their use by the owner to distinguish wares or
services of one from that of the other. TMs are a guarantee of origin and
inferentially, an assurance to the consumer that the quality will be what he
or she has come to associate with a particular TM. In that sense, TM law is a
consumer protection legislation.
 The claim to a monopoly over a TM lies in serving a public interest in
assuring customers that they are buying from the source they think they are
buying from and receiving the quality with which they associated the
particular mark. TMs operate as a king of shortcut to get consumer to where
they want to go, and in that way perform a key function in a market
economy.
 TM law rests on the principles of fair dealing. It is said to hold a balance
between free competition and fair competition.
 Interests of the public and other merchants, the benefits of open
competition, the interest of the TM owner should all be considered.
Veuve Clicquot Ponsardin c. Boutique Cliquot Ltee [2006] SCC
H  The purpose of TMs is to function as a symbol of the source and quality of
wares and services, to distinguish those of the merchant from those of
another, and thereby to prevent confusion in the marketplace.
Masterpiece Inc. v. Alavida Lifestyle Inc. [2011] SCC
H TM law in Canada are an important tool to assist consumers and business.
 In the marketplace, a business marks its wares or services as an indication of
provenance. This allows customers to know, when they are considering a
purchase, who stands behind those goods or services. In this way, the TMs
provide a “shortcut to get consumers to where they want to go.
 Confusion between TMs impairs the objective of providing consumers with a
reliable indication of the expected source of wares or services.
Limitation of Protection
 To the extent that the TM identifies the source/origin of the wares and
services, the TM law allows the owner of the TM to set forward a claim over
it.
o E.g. name John
 Although many people may be named John, it can still be a
distinctive mark.
12


John B is not allowed to use John as a TM if consumers are
confused.
For the protection to be granted, John A must prove the mark is
distinctive.
2. Unfair Competition and Restraint of Trade
Rationale for restraint on Trade
 In a free market economy, competition invariable leads to harm.
 Hard to reconcile capitalism with legal restrictions that are based on the
concept of harm alone.
o Although competition may be deleterious to traders, it is in the
interest of consumers.
 Economically efficient and welfare enhancing.
 The analysis of what constitutes fair or unfair competition is a contextual
one.
(a) Common Law Unfair Competition Torts
(i) The Tort of Conspiracy
(ii) The Tort of Injurious Falsehood
(iii) The Tort of Passing Off: A Brief Introduction
The tort of passing off
 Passing off is a form of deceptive market practice that makes competition
unfair.
 The tort of passing off is the common law’s primary means of protecting a
trader’s competitive interest in the use of TMs, symbols and other indicia
from the free riding of rivals.
 It is not the free riding per se that is considered wrongful; instead, it is the
misrepresentation that is made and causes confusion or the likelihood of
confusion in the mind of ordinary consumer.
 The law seeks to protect consumer interests by ensuring a market place that
can be relied upon for providing sought after goods and services without
misrepresentation as to their source, character or quality.
Types of Passing Off
 Classic
 Extended
A. Classic Passing Off
13
In order to make out a classical passing-off situation:
 A distinctive indicia: a mark, a sign, a brand name, a feature of packaging that
identify the source of the wares or services in the public’s mind.
o Anything that identifying the source in the public’s mind is what
common law will protect – might be more expansive than what the
registration will protect.
 The confusing use of that mark (confusingly similar one) by the defendant;
the use of the mark is so similar that it points the source to the public to the
plaintiff as the source
 The confusing use of the plaintiff’s mark in association with the defendant’s
product amounted to a misrepresentation that the product originated with
the plaintiff, and so is likely to cause harm to the plaintiff.
Powell v. Birmingham Vinegar Brewery Co. [1896] CA – Chancery Division
F YORKSHIRE RELISH in association with sauce
I 1. Does the words “Yorkshire Relish” a descriptive name or a fancy name?
2. Whether the name YR denote the P’s product in the market place.
3. Are there sufficient precautions taken by the D to prevent customer
confusion?
Stirling J.
 YR is a fancy name, not descriptive of the product.
 In asking for YR, the customers expected to get P’s products. As such, if the D
entered the market using the name YR, precautions must be taken to prevent
purchasers from being misled from buying the D’s sauce when they meant to
buy the P’s.
 It is the duty of the newcomers in the marketplace to distinguish their goods
from those previously in the market.
o How the distinction will be made is a contextual analysis.
o Ask whether the natural and probable result of the D’s acts will be to
mislead purchasers, and so deprive the P of business intended for
him.
 Passing off found
Lindley L.J.
 When anyone adopted a mark so closely resembling the TM of the P as to be
likely to be mistaken for it, the P was entitled to an injunction to restrain the
use of such mark.
 Fraud on the public to the detriment of the P was the foundation of the right
to damages at common law.
 Ordinary or unwary customers should be protected against being misled.
 A person whose name is not known but whose mark is just as much injured
in his trade as if his name were known as well as his mark. His mark as used
by him has given a reputation to his goods. His trade depends greatly on such
reputation. His mark sells his goods. A rival who imitates his mark can hardly
help deceiving buyers and injuring them: and for such injury, if proved, he
can obtain redress.
14











The law only protects the TM owner from other’s products being mistaken
for his. There is no exclusive right to the mark except in connection with the
goods and to prevent deception or mistake.
TM does not confer an exclusive right to to make or sell the kind of goods
denoted by the mark.
The mark is only a protection against mistake in taking one person’s goods
for another’s, and the right conferred by a TM is only to prevent its use if its
use deceives or misleads, or is proved to be calculated to do so.
If a person makes an article not patented, and gives it a certain name by
which the article comes to be known in the market, anyone who can make
the same kind of article can call it by the name by which it is known, if he in
fact do so without passing off his goods for those of the original makers.
Another way for a name to lose its distinctiveness and becomes public juris:
where there is no enforcement by the owner. The name then comes to
denote the article and nothing more; the name becomes public juris, and any
one who is at liberty to make the article can call it by the name by which it is
usually known. No name will become public juris as long as the owner still
asserts his right in this respect. It is up to those who claims the name
becomes public juris to prove it.
Where a man has been the sole maker of a particular kind of article, which he
has always called by some name by which his goods are known, and the
ordinary customers call the products by that name. A rival trader cannot
adopt the trade name and make his own article so as to make them look like
or pass for the other’s. But if he can avoid doing it, there is no law to prevent
him from making and selling goods of the same sort as the other’s, nor from
calling them by the name by which alone they are known in the market.
An inventor of an unpatented article, to which he gives the name, may be
able practically to enjoy a longer monopoly in the name than an inventor of a
patented article.
In the present case, YR has not been used by the P to denote his goods. The P
has taken actions to prevent use of the name by others. So YR cannot be said
to have become public juris within the meaning of that expression.
o The name YR not only denotes a particular kind of sauce, but it
denotes the source which the plaintiff has been making.
It is the fact that a great member of ordinary retainl buyers are guided by the
words YR; such persons do not attend to anything else on the labels. So long
as YR are the conspicuous words an alternation in the label does not attract
the attention of the great majority of buyers or give rise to any suspicion that
the sauce with altered label is not the same,n or does not come from the
same maker, as that which they are accustomed to buy or have been told to
ask for
Looking at P’s and D’s sauce the same time, the differences between the 2 are
apparent; yet the resemblance is of conspicuous as the difference. So the
differences between the bottles sold are not sufficient to prevent mistakes
although there's no intention on the part of the defendants to pass out of
15
their products as those of the plaintiff, big do you want to trade down the
reputation which does not belong to them and which has been earned by him
belongs to the plaintiff. It is unfair for them to do so.
 If the injunction is granted it is it is granted not to prevent the defendant
from selling their source as YR without qualification; it is granted to restrain
them from doing so without better distinguishing their sauce from the sauce
made and sold by the P.
 The fact that the defendants may find it practically impossible to compete
with the plaintiff in the trade does not matter. The defendants are free to sell
their sauce under the name YR if they can do it without misleading the public
and without injuring the P. if it is impossible to comply with such conditions
and yet profitably compete with the plaintiff, the defendant must drop the
name.
 The name YR is not descriptive in any sense. It does not relate to the
character or quality or geographical origin of the goods
A.L. Smith L.J.:
 Wrappers and labels of the defendants were in themselves distinct from the
wrappers and labels of the plaintiff; but the defendants have throughout
taken, and given greater prominence to, the words YR for reasons which can
easily be surmised, and the question is, can they by law to do so.
 The defendants cannot use the name if the use of the name misleads
purchasers. It may be that the result of such a state of things is that it gives to
the plaintiff a practical monopoly in the words which otherwise he would
not have.
C Injunction granted
K  the mind of the relevant consumers is important
 intent to deceive is not a necessary element
 Customs do not need to know the specific name of the manufacturer of the
goods
 it is not about the plaintive owns the mark; it is that they have control over
the Mark used in association with the product. There is no monopoly over
the sale of the product.
 The defendant is free to call the product by the name through which the
public knows the product, if he can do so we got passing off the product as
those of the original manufactueres.
 There is still a sense of morality in the reasoning: where there is intent to
free ride, the court is likely to find passing off as the court considers it unfair.
B. Extended Passing Off
Erven Warnink B. V. v. J. Townend & Sons Ltd. [1979] UK HL
F ADVOCAAT in association with a special type of spirit vs. Old English Advocaat
I What’s the condition for passing off?
Lord Diplock:
 The case is a case of unfair trading for which the legal system should provide
16
redress
 the goodwill of the manufacturer's business may well be injured by someone
else who sells goods which are correctly described as being made by that
manufacturer but being of an inferior class or quality are misrepresented as
goods of his manufacture of the superior class or quality. It is a natural
corollary of recognizing that what the law protects by a passing off action is
the trader's property in his business or goodwill
 the significance of this decision in the law of passing off lies in its recognition
that misrepresenting one's own goods as the goods of someone else was not
a separate genus of actionable wrong.
 Spalding case: although the plaintiff and the defendant were not competing
traders in the same line of business, a false suggestion by the defendant that
their business were connected with one another would damage the
reputation and thus the goodwill of the plaintiff's business.
 To make out a valid case of passing off:
o a misrepresentation
o made by a trader in the course of trade
o to prospective customers of his or ultimate consumers of goods or
services supplied by him
o which is calculated to injure the business or goodwill of another
trader (in the sense that this is a reasonably foreseeable
consequence)
o which causes actual damage to a business or goodwill of the trader by
whom the action is brought or will probably do so
 mere entry into the market would not give any right of action for passing off;
the new entrant must have himself used the descriptive term long enough on
the market in connection with his own goods and have traded successfully
enough to have built up a goodwill for his business
 the plaintiff in this case is an interested party having 75% of the market
share and they have suffered serious injury as a result of D’s conduct.
Lord Fraser of Tullybelton:
 a substantial reputation and goodwill have, over half a century or more, been
acquired by the name ADVOCAAT as that of the drink with recognizable
qualities of appearance, taste, strength, and satisfaction.
 Although membership of the class can change, it must be definite and
ascertainable at any particular time if it is to carry a right to sue an action for
passing off
 descriptive and distinctive are not mutually exclusive. Names which begin by
being descriptive, making the course of time become distinctive as well as
descriptive.
 What the court is concerned to do is to protect the plaintiff's property in the
goodwill attaching to the name; it has nothing to do with the reputation or
meaning of the name elsewhere.
Note:
 The D argued by allowing the recognition of shared goodwill, it would extend
17


the ambit of actionable wrong to the extent that it opens floodgate of
litigation.
D also argued that ADVOCAAT did not indicate a specific source.
The court found that the word ADVOCAAT indicated a distinct kind of drink
which public recognizes. And the interested group is ascertainable.
o The court relied on the champagne case in regared to shared
goodwill:
o “It ought not to matter that the persons truly entitled to describe their goods
by the name and description are a class producing goods in a certain locality,
and not merely one individual. The description is part of their goodwill and a
right of property. I do not believe that the law of passing off, which arose to
prevent unfair trading, is so limited in scope.”
C Injunction granted
K  Just because of the evidence showing that the customers buying the
defendant's products are not confused about the source of the products, it
does not mean that plaintiff has no cause of action against the defendant.
 The word ADVOCAAT genuinely describes the product, and has acquired
goodwill.
 Anyone having a natural connection with the Mark would have an action
against the defendant.
 The tort of passing off is designed to protect the goodwill and reputation
attached to a trademark.
 There are five characteristics in order to make a valid cause
o A misrepresentation:
o Made by a trader in the course of trade
o To his perspective consumers/ultimate customers
o Calculated to or will in fact injure the business/goodwill of another
trader
o Cause actual damage to the trader by which/whom the action is
brought
Different Types of Passing Off:
 Classic passing off: Misrepresentation with respect to the source
 Extended passing off: misrepresentation with respect to the quality,
characteristics, or association
o Requires injury of business or goodwill/reputation resulting in
damage
o Used by celebrities as a means of enforcing their personality rights
 Reverse passing off: misrepresentation with respect to the P’s products as
theirs
 Extended – reverse passing off: misrepresentation with respect to the P’s
products as inferior to theirs
18
Chapter 2: The Common Law of Passing
Off
1. The Elements Law of Passing Off
The tort of Passing off
 The common law protection available for unregistered TMs and other
distinctive indicia.
 Statutory origin for existing statutory protection
 Seiko:
o applicability of a passing off action in its classic and extended form for
what is a marketing strategy
o English five-part test adopted
 Ciba-Geigy
o A reformulated three-part test that governs the law of passing off in
Canada
Consumers Distributing Co. v. Seiko Time Canada Ltd. [1984] SCC
F
Seiko case
 Respondent/P: authorized distributor of Seiko watches in Canada
 Appellant/D: unauthorized distributor of Seiko in Canada
 Lawfully bought watches in Europe sold back in Canada
 Guarantees not recognized by P
I
Whether the classic/extended passing off can be extended to include a sales
package (including guarantee) that was attached to the product?
H Neither extended nor classic passing off applies
 If applies, “startling legal consequences would ensue”.
 Confusion in the market, a hallmark of the classic doctrine, did not exist
after notices explaining the guarantee situation were posted pursuant to
the injunction.
 One identical watch cannot be distinguished from another merely through
the use of a sales device such as after sales service.
 Include these circumstances would result in monopoly situations, merely
because the authorized dealers can offer the complete package.
 The concept of restraint of trade and free competition would be battered
because an implied recognition of a right of an individual marketing a
product to entail and control the sale of identical personal property,
however legitimately acquired, of another person.
 The extended version requires a minimum that an initial misrepresentation
capable of injuring the business or goodwill of a trade resulting in damage.
This requirement is not met following the injunction.
19


The watches were identical and sold only under the TM SEIKO which
separated them from other products.
The legal effect of the guarantees is identical. The guarantees of a watch
sold outside the network was not honored, there is no legal obligation on
the part of the Japanese manufacturer or its Canadian distributor to honor
the guarantee held by a purchaser who bought a watch within the network.
In the absence of the contract between the manufacturer, the legal position
with respect to the guarantee of the D and P are no different.
Ciba-Geigy Canada Ltd. v. Apotex Inc [1992] SCC
F
Get-up of a prescription drug, interchangeable with the generic version
 Unique tablet of the size, shape and color of the pills
I
Whether, in a passing off action dealing with the get-up of a prescription drug,
the public affected by the risk of confusion includes not only health
professionals but also the patients who consume the drugs.
H  Test for passing off
o Acquired goodwill/reputation
o Misrepresentation causing or likely to cause confusion
o Actual or potential Damage
 The the purpose of passing off actions, the relevant customers of a
pharmaceutical product do not consist exclusively of physicians, dentists
and pharmacists. The patients who use the products are also included.
o Proof of misrepresentation is not limited merely to direct customers
of the pharmaceutical product.
 The patents needs information and protection as other consumers do.
o Needs to give patients control over the brand of drug he wishes
obtain where the product is interchangeable.
Thoughts:
 Pbl: whether an effectual monopoly has been created?
 Especially in the generic market, the brand name product enters the market
first and will monopolize the market for years.
 Will products be referred to as the pink pills? Will customers really benefit
from the benefit of generic drugs?
2. Establishing the Elements of Passing Off
(a) The Existence of Goodwill
A necessary step in a passing off action
 A P must establish the existence of goodwill in association with the mark of
indicia for which the protection is sought.
 Proof of burden: the get-up or indicia used is recognized by a sufficient
segment of the buying public as indicating the P as source.
20


Goodwill resides in the distinctive get-up or indicia, such that protecting the
get-up or indicia protects that goodwill.
o Can attach to any distinctive feature associated with the ware or
services
o Whether protection should be granted hinges on whether it is in fact
distinctive of trade source such that its use by another would amount
to a misrepresentation.
Goodwill can be proved through:
o Survey evidence
o Expert testimony
o Proof of marketing strategies and advertising expenditures
o A D’s intent to deceive
(i) Establishing Goodwill and the Distinctiveness of Indicia
Distinctiveness in lay sense vs. Distinctiveness under the TMA
 Distinctive in a lay sense does not necessarily guarantee that the buying
public recognizes the indicia or get-up as indicative of a particular tradesource.
Policy: Effectual Monopoly Granted?
 It should be considered whether it is appropriate to grant an effectual
monopoly over the claimed indicia and its likely effect on the free
competition.
Canadian Shredded Wheat Co. v. Kellogg Co. of Canada Ltd. [1938] ON PC
F
SHREDDED WHEAT
 Patent granted on the process and machine making the product
 The product was called and known by the name of SHREDDED WHEAT
 Patent expired
 The passing off action brought in the event of the TM being held invalid
I
The distinctiveness of the words SHREDDED WHEAT
H  If a word or set of words are descriptive of the patented article of which
one is the only maker, it seems to be impossible for him to prove that the
mark denotes him as the maker as distinguished from other makers.
 A descriptive word can acquire secondary meaning such that it indicate the
goods with which it is used in association comes from a particular
manufacturer
 If the word is descriptive + it the name of the product of which those goods
are composed, it is very difficult to prove the acquired secondary meaning.
 How the words SHREDDED WHEAT was used was of significance:
o Whether the name was used as a trade name or common law TM for
the purpose of indicating the origin of the goods, or
o Whether the name was used descriptively
 In this case, on all the cartons, the indication of origin was the TM in
association with Niagra falls and the name of the company displayed
21




predominantly. The P used the name to indicate the product, rather than
the manufacturer.
The fact that, many customers associated SHREDDED WHEAT with the
goods of the P due to its monopoly in the marketplace is not sufficient to
establish the required meaning of distinctiveness.
The P failed to establish that a person asking for shredded wheat will not
have his request truly satisfied if the product manufactured by other
suppliers were provided.
The P failed to establish that a customer who really desires a biscuit of the
P’s product will necessarily be deceived by being offered D’s product.
No passing off found, since the D
o D manufactured the products in accordance with the expired patent
o The only similarity between the rival goods lay in the appearance of
the goods and the application to them of the name by which the
patented goods had been known
Reckitt & Colman Products Ltd. v. Borden Inc. [1990] HL
F
Plastic lemon-shaped package for lemon juice
 Both the UK P and the US D sold lemon juice in plastic lemon-shaped
packages respectively in their own market
 D entered into the UK market
I
Whether the lemon-shaped packages were distinctive
H Lord Bridge of Harwich: reluctantly granted the injunction
 The commercial monopoly over the containers is not permitted by the law.
 Yet the order of the trial judge did not grant such a monopoly; it only
restrains the D from selling the products “in any container so nearly
resembling the P’s lemon shape container as to be likely to deceive without
making it clear to the ultimate purchaser that it is not of the goods of the P.
o It can be achieved through attaching a distinctive label to the
container
 Yet the trial judge found confusion on the part of purchasers because they
don’t read the label, although the packages presented by D have distinctive
labels attached.
 Absurd result has been achieved: “a trader selling lemon would never be
permitted to register a lemon as his trademark, but the respondents have
achieved the result indirectly that a container designed to look like a real
lemon is to be treated, per se, as distinctive of their goods.
Lord Oliver:
 Two findings by the trial judge:
o The purchasing public has come to associate the natural size lemon
squeeze pack with the P’s lemon juice sold under the brand name JIF
o There is a brand loyalty in a substantial body of the purchasing
public in the sense that these purchasers desire not just lemon juice
but JIF lemon juice.
 The brand name JIF was not so prominent on the package as readily to
22


catch the eye of the casual shopper.
D argues: What the P is seeking to protect is its product itself; P is trying to
separate the product from the label under which it is sold, treating the
product as its own trademark. It is a de facto monopoly over the product
that is being sought. – court disagreed
o Farina: “anyone, who has adopted a particular mode of designating
his particular manufacture, has a right to say, not that other persons
shall not sell exactly the same article, better or worse, or an article
looking exactly like it, but that they shall not sell it in such a way as
to steal his trade-mark, and make purchasers believe that it is the
manufacture to which that trade-mark was originally applied.”
o Weingarten Bros: the article itself cannot constitute the special
insignia of its own origin.  all that the law protects are features for
the purpose of indicating origin, such as the embossed word JIF on
the P’s containers.
o Whether in fact the particular shape or configuration of the very
object sold by a trader is incapable as a matter of law of protection
in a case where it has become associated exclusively with his
business?
o William Edge & Son Ltd: where the article sold is conjoined with an
object which, whilst serving the functional purpose of enabling the
article to be more effectively employed, is of a shape or
configuration which has become specifically identified with a
particular manufacturer, the latter may be entitled to protection
against the deceptive use in conjunction with similar articles of
objects fashioned in the same or a closely similar shape.
o P’s argument is wrong in identifying the contents with the container
– the alleged deception does not lie in the sale of plastic lemons, but
in containers so fashioned as to suggest that the juice emanates from
the source with which the containers of those particular
configurations have become associated in the public mind.
o It is true that the plastic lemon-shaped containers serve a functional
purpose in the sale of lemon juice, but the functional purpose can be
and is served by a variety of distinctive containers of configurations
other than those of a lemon-sized lemon.
o The question is whether the P, having acquired a public reputation
for JIF juice by selling it for many years in containers of a particular
shape and design which, on the evidence, has become associated
with their produce, can legitimately complain of the sale by the D of
similar produce in containers of similar, though not identical, size,
shape and coloring.
The mere fact that the produce of the D and that of the P may be confused
by members of the public is not of itself sufficient. Confusion resulting from
the lawful right of another trader to employ as indicative of the nature of
his goods terms may give rise to confusion. – agreed by both parties
23





o E.g., where previously another trader was the only person in the
market dealing in those goods, the public which knows only of A will
be prone to assume that any similar goods emanate from A.
o There can be no cause of action because there is no
misrepresentation: the application to the D’s goods of ordinary
English terms cannot entitle a P to relief simply because he has used
the same or similar terms as descriptive of his own goods and has
been the only person previously to employ that description.
D argues that what the P are seeking to protect is only the use by them of a
descriptive term, embodied in a plastic lemon instead of expressed
verbally, which is common to the trade – rejected by court
o Even a purely descriptive term consisting of perfectly ordinary
English words may, by a course of dealing over many years, become
so associated with a particular trader that it acquires a secondary
meaning such that it may properly be said to be descriptive of that
trader’s goods and of his goods alone.
A defense to a passing-off claim can only succeed if that which is claimed by
the P as distinctive of his goods and his goods alone consists of something
either so ordinary or in such common use that it would be unreasonable
that he should claim it as applicable solely to his goods, as for instance
where it consists simply of a description of the goods sold.
o P’s plastic lemon-shaped container has acquired a secondary
significance; it indicates not merely lemon juice but specifically JIF
lemon juice
The monopoly assumption is the basis of every passing off action.
The natural-size squeeze pack in the form of a lemon has become so
associated with P’s products that the introduction of the D’s products in
any of the proposed get-ups will be bound to result in many housewives
purchasing that juice in the belief that they are obtaining P’s juice. It is a
finding that P’s get-up has acquired a secondary meaning. The get-up
indicates not merely the lemon juice, but specifically P’s lemon juice.
Whether the D has taken sufficient steps in distinguishing his products
from those of the P?
o The labels employed are so essentially different that they are
sufficient to avoid any possibility of confusion.
o There is no assumption in law that the customers are literate and
careful. The essence of the action for passing off is a deceit practiced
on the public. If a deceit has been found, the case is established. It
cannot be said that the deceit could have been avoided if the
customers were more careful, literate, or perspicacious.
o It is to be asked in every case against the background of the type of
market in which the goods are sold, the manner in which they are
sold, and the habits and characteristics of purchasers in that market.
The law of passing off does not rest solely on the deceit of those
whom it is difficult to deceive.
24
K
o It cannot be said that the diversion of trade would be of relatively
short duration, since the public would ultimately become educated
to the fact that there were two brands of lemon juice marketed in
such containers and would then be likely to pay more attention to
the labels to be sure that they got the brand which they required.
o The D has not done enough to distinguish.
Lord Jauncey:
 The D submitted: that the P’s plastic lemon was merely the exemplification
of the descriptive word ‘lemon’. It was impossible to acquire a monopoly in
the use of a word which accurately described the relevant goods, from
which it followed that the P was not entitled to establish that the plastic
lemon had acquired the secondary meaning of JIF lemon juice
 No legal principle supporting the submission
 Illegitimate to equate the plastic lemon package to a word in ordinary
usage.
 The package should be treated as a variant of the ordinary plastic squeeze
bottle; the fact that the get-up is allusive of its content does not prevent
legal protection.
 The P has established necessary facts:
o A reputation established by P over years
o Customer confusion
 A: selling lemon juice in lemon-shaped container is an idea that belonged to
the public domain.
o TM law makes a distinction between the manufactured article,
which everyone is free to copy, and the special identifying indicia.
o The right to sell lemon juice is protected and the juice can be sold as
long as there is no infringement.
o D can choose other get-ups.
 A: the get-up is functional so it should not be protected.
o It is not the functional aspect that is protected; it is the get-up’s
ability to distinguish the source that is protected.
 A: package merely descriptive of the content of the product.
o Secondary meaning acquired
o Customer confusion present
 A: the distinctiveness was simply due to the exclusivity of the container –
the monopoly assumption.
o Distinctiveness established through monopoly is no defense. The
defense can only succeed where what is claimed by the P is so
ordinary or common to the trade that it is unreasonable to be solely
used by the P.
 Confusion: public has to be taken as they are found
 Although the public can be more educated, it is no answer to the tort of
passing off as long as confusion caused in the first place.
25
Oxford Pendaflex Canada Ltd. v. Korr Marketing Ltd. [1982] SCC
F
Tray commonly used on desks in offices
 The P and its predecessors have been marketing and manufacturing the
tray under different names since the mid-1960’s
 The D manufactured exactly the same product, except that the trays are
made of lighter materials and one minor difference in appearance.
 It was clear from the evidence that the D intended to copy P’s products.
I
Whether the tray has acquired a secondary meaning
H  The trial and appellant courts have both found that no secondary meaning
has been acquired by the get-up, design, or configuration of the desk trays
at concern. So no confusion on the part of the consumers.
 The question to ask: whether, directly or indirectly, the manner in which
the goods of the D are presented to the relevant consumer in such as to
convey to the minds of the latter the impression that they are the goods of
the P. – Roche Products Ltd
o In the case of appearance or get-up, similar appearances are not
enough; consumer confusion as to the source of the goods is
necessary.
o no need for the consumers to know or believe that the only source of
the products was the P.
 An successful action for the tort of passing-off does not require the P to
prove that the product which had acquired “a secondary meaning” was
known by the purchasing public to be the goods of the P.
 In this case, regarding the trays at concern, nothing has been adapted or
created to make the trays distinctive, and consequently no secondary
meaning has been acquired by the products of the P, i.e, the trays.
 The fundamental requirement for success is the imitation of a “unique or
distinctive dress”. Yet in the case, nothing had been adapted or created by
any of the suppliers, including the P, which made the trays distinctive and
consequently no secondary meaning had been acquired by the product of
the P in the market.
o Not sufficient to show the products look similar or the same
 Action dismissed.
Comments:
 Conferring protection will be pbl from a policy perspective.
Ray Plastics Ltd. v. Dustbane Products Ltd. [1994] ON CA
F
Snowbrush
 Commercial success
 D’s products a virtually clone
I
Whether there is (classic) passing off
H  The essence of an action of passing-off is the allegation that the goods of the
D are being sold as those of the P.
o One of the elements of the tort which the P must prove is that the
26








Pbl:


potential buyer believes the goods being sold are those of the P or
come from the same source as “the originals”.
o In the case of appearance or get-up, mere similarity is not enough; it
must be established that there is confusion on the part of the
purchasing public. – Roche Products Ltd.
The element has become known as reputation. In cases which turn on the
get-up or distinguishing guise of the product, the element has become
known as “secondary meaning.”
D argued: reputation or secondary meaning not established by P.
o No evidence from consumers or marketing experts and no surveys.
Trial judge relied on the product’s distinctiveness and the advertising that
has been done. In addition, P relied on the success of the product and D’s
intentional copying of the products.
For distinctiveness, the rule is the more distinctive a product, the more
easily one can establish reputation.
The trial judge found the get-up of Snow Trooper very distinctive.
The court also found substantial amount of sales and advertising
There was intentional copying.
Evidence of intentional, direct copying establishes a prima facie case of
secondary meaning, sufficient to shift the burden of persuasion to the
defendant on the issue.
Court too swayed by the expense of advertising and commercial success in
finding goodwill
Intentional copying does not mean D meant to usurp the goodwill
(ii) The Locality of the Goodwill
Locality vital to the passing off action
 A P can successfully assert common law rights only in the geographical area
within which the necessary goodwill and reputation have been established.
 A registered TM creates rights that are national in scope, whereas common
law rights are circumscribed by the geographical reach of the P’s goodwill.
o Passing off only exist where there is reputation/goodwill
Nature of goodwill – Spread beyond geographical borders
 Can spread beyond geographical borders even to places where the business
is not carried out
It is the presence of goodwill in a particular locality that determines the
existence of common law rights, and not necessarily the presence of wares or
services in the marketplace.
Orkin Exterminating Co. v. Pestco Co. of Canada [1985] ONCA
F ORKIN and ORKIN in a design mark, pest control companies
 P has gone a great length over the years to establish and maintain a high
27
standard of service through its employee training and product development
programs and its service guarantees.
 P spend substantial sums money advertising its name, logo and business in
the US through radio, TV, newspapers and billboards.
 Canadians travelling to the US were exposed to the ads
 Canadians who owned or rented in the US have used the ads
 P provides services to transnational companies which operate in Canada
 There is an international reputation
 P has intention to operate in Canada
 D has never actually carried on business under the trade name; it was used in
the phone directories to entice customers
I What facts must exist for the P, which is not in competition with D, to be entitled
to the relief? More specifically, what connection with ON must P have to succeed
in the passing-off action?
A  Trial judge found: P was entitled to protection on the basis that it had
reputation and customers in Canada and intended to carry on business in
Canada in the future.
 A fundamental principle of passing-off: no one has any right to represent his
goods or services as the goods or services of somebody else.
 The appellate judge agreed with the trial judge, but stressed that the decision
is premised on the narrow grounds responsive to the particular facts.
 If P had been carrying on business in ON before D then the parties would be
in direct competition with each other and the nature of Orkin’s damage
would be the immediate diversion of customers from it to Pestco and
accordingly lost sales and business.
 A P does not have to be in direct competition with the D to suffer injury from
the use of its trade name by the D. If the P’s trade name has a reputation in
the D’s jurisdiction, such that the public associates it with services provided
by the P, then the D’s use of it means that the P has lost control over the
impact of its trade name in the D’s jurisdiction.
o Practical consequence: P is vulnerable to losing the ON customers in
now has as well as prospective ON customers, with respect to services
provided in the US.
o It can result in P being prevented from using its trade name in ON
when it expands its business into ON.
 In this case, the P’s reputation would be exposed to risk and the P should be
entitled to retain the possibility of exploiting its goodwill in a new location.
 The fundamental ingredients of passing-off (C. & A. Modes et al. v. C. & A.
(Waterford) Ltd. et al.): the P has a name applicable to his goods or business
which is known to the public in the ear in which the D seeks to carry on his
business to an extent that the name, brand or mark proposed to be used or
being used by the D is likely to deceive and to cause confusion.
 The interests should be considered in such cases:
o P: interest in not having its reputation exposed to the risk resulting
from D’s activities and in being able to use its trade name in ON
28









o D: interest in the absence of unreasonable restraints on freedom of
trade
o Public: interest in the absence of unreasonable restraints on freedom
of trade; interest in not being confused with respect to the source of
the services they buy.
The core of the action is to protect the community from the consequential
damage of unfair competition or unfair trading.
Given the fact that D has a virtually infinite range of names and symbols from
which to choose, it is difficult to see the enjoining of it from using the name
and logo of a well-established company in the same business as an
unreasonable restraint on its freedom to carry on business as it sees fit.
The public is entitled to be protected from such deliberate deception and P,
which has labored long and hard and made substantial expenditures to
create reputation which it now has, which reputation has spread to ON, is
entitled to the protection of its name and distinctive logo, even though it is
not now carrying on business here, is considerably less troubling than the
deceptive use of its name and symbol by another.
As far as freedom of trade and reasonable expectation of business people are
concerned, the interests of dishonest defendant are entitled to less weight
than those of a defendant who has acted in good faith.
The defendant’s goodwill alone will not confer a cause of action; however, it
is a relevant factor to take into account in adjusting competing interests.
The meaning of goodwill – the main consideration should be the likelihood of
confusion with consequential injury to the P. Where there is such
confusion, there is goodwill deserving of protection.
The D’s use of P’s trade name shows that P’s trade name has commercial
value at the time in ON and has been considered an important of goodwill in
a “foreign territory” in a number of cases.
o “If he imitates the other’s trademark or tradename knowingly and
acts in other ways to convey the impression that his business is
associated with the other, the inference may reasonably be drawn
that there are prospective customers to be misled.”
The court stressed the ease with which people communicate, travel and
move from one jurisdiction to another in modern society.
Evidence:
o Telephone calls: have not been many but were steady
o The use of the name in the white pages of the directory requires prior
knowledge and familiarity with the name so that it could be located
alphabetically. This prior knowledge could only have resulted from
P’s reputation and goodwill previously imbued in the mind of the
customer.
o D’s use of the trade name was not a bona fide use in that no real steps
were taken to create in the public mind any association between
“Orkin” and Pestco. – the trial judge was right in finding that during
the time D used the trade name, the D did not create any significant
29
amount of goodwill for that name or for the logo. From the very
beginning of D’s use of the trade name in ON it could not be said that
Orkin meant one thng in the US market and an entirely different thing
in ON.
H Injunction granted
Comments:
 The common law does not concern who used it first; instead, it only asks who
has the reputation.
 To the extent that no confusion resulted, different companies may operate
under the same name in different geographical locations simultaneously.
 Note: the court stressed the analysis is limited to this case
Walt Disney Productions v. Triple Five Corp. [1994] Alta CA
F FANTASYLAND in association with amusement park
 D: amusement park in Alberta
I What level of confusion or likely confusion must be established in an action of
passing off?
A Trial judgment:
 For a passing-off action, a P must establish:
o A goodwill or reputation attached to the P’s goods, or services in the
mind of the public with the name in question such that the name is
identified with the P’s goods or services.
o A misrepresentation by the D (whether or not intentional) leading or
likely to lead the public to believe that the goods or services are those
of or those authorized by the P.
o That the P has or will likely suffer damages.
 Once elements (1) and (2) are established, damages are presumed. The
intention of the D is immaterial.
Survey results:
 Both surveys conducted by both sides disclosed that in Edmonton area the
majority of the public tends to associate the name FANTASYLAND with the D.
Elsewhere in Canada large numbers of people associated the name
FANTASYLAND with the Disney theme parks.
 The trial judge found that D’s use of the name FANTASYLAND resulted in the
reduction in the Edmonton area of association of the name with the Disney
enterprises.
Proof of goodwill in the name FANTASYLAND in Canada
 D argued that goodwill or reputation is established with respect to
Disneyland, not FANTASYLAND.
 The court found that compared to almost any other business or product
being promoted, the prominence given to fantasyland by the P’s advertising
and promotion is extensive and widespread.
Extent of confusion:
 The proof required to establish a probability of deception is that there would
be a likelihood of deception in the mind of a substantial number of persons
30
such as the ordinary purchaser or user (of the goods or services in question)
purchasing with ordinary caution.
 The substantial number or appreciable number does not mean a majority,
just a sufficient number to get over the de minimis rule.
o It is found in the US that 8.5% is enough.
 There is ample evidence in this case to support the finding that a substantial
number of persons were or were likely to be confused by the
misrepresentation.
 The two amusement parks are not in direct competition, and except in the
most general terms they do not draw on the same group of customers.
However, the market area, the target area from which Disney draws its
customers includes Edmonton. It is important that the name adopted by the
D is identical to that in respect of which P has established goodwill. Both
facilities are amusement parks with many similar features. In these
circumstances, confusion on the part of the ordinary member of the public
using ordinary care is difficult to avoid. Such confusion may not result in
actual loss of business to the P; however, the confusion may be beneficial to
the D, and in any event, the confusion is likely to expose P to the risk of harm
to its reputation over which it has lost control.
Confusion as to business association:
 D’s use of the name constituted a misrepresentation that the D had
authorization from Disney to use the name and thus were somehow
associated with the P. This is sufficient misrepresentation to establish a
passing off.
Interests protected and proof required:
 The essence of a passing off action is the misrepresentation and the resultant
confusion in the public mind which causes or is likely to cause damage to the
property interest of the P. The foundation of such action is the existence of a
property right in the goodwill and reputation associated with a trade name.
 The law of passing off does not require proof of actual confusion which leads
to specific pecuniary damages.
 Orkin is not limited to intentional or fraudulent conduct; it applies to both
intentional or inadvertent misrepresentation. Proof of deliberate
misrepresentation may more readily result in a finding of confusion and my
give rise to increased damages but does not affect the basic nature of the
action.
Proof of confusion:
 Continued use of the name was an act which was calculated to mislead, in the
sense that it was likely to mislead.
 When the D used the same name to describe their amusement park, the D
misappropriated the P’s property and misrepresented to the public that they
had a right to use it.
 The fact that the D had no intent to mislead is immaterial.
Distinctiveness of the name:
 Previous decisions establish that the party claiming exclusive use of
31
descriptive names, or of words in ordinary usage, will not likely receive such
protection as such words are open for all to use. In each case, the court found
that the words, being descriptive words of the goods or services, were not
likely to lead to confusion.
o Where a trader adopts a name or mark which is descriptive of his
business or goods, the court will accept small differences as sufficient
to avoid any likelihood of deception even though a certain amount of
confusion may be inevitable.
 The word FANTASYLAND was not in any dictionary when it was first used by
the P. It was not an ordinary descriptive word.
 FANTASYLAND is a distinctive word although it is formed by combining two
ordinary words. It was coined by the P. Any general recognition it now has is
associated with the P and was created by the P’s worldwide promotion and
advertising. Neither the words used nor the combined name is merely
descriptive of amusement parks, except for its association with the Disney
amusement parks.
 As to the use of the name in other parts of the world: the P had no knowledge
of the use of the name and would look into taking action to continue
protecting the name. The use of the name in limited settings does not
eliminate the likelihood that confusion will result by the use of the identical
name by the D for a similar business.
Can confusion be presumed?
 When the existence of goodwill is established and misrepresentation is
proved, confusion can be presumed.
H Injunction granted
Comment:
 The paradox of TM law: The stronger the public thinks the TM law is, the
stronger the law becomes.
 policy: on the one hand, protection of foreign business reflects the extent of
consumer protection; on the other hand, it suggests the success of foreign
business is prioritized. The triumph of the large foreign business over small
local business is controversial.
(iii) The Relevance of a Common Field of Activity
Whether the goodwill or reputation acquired by the P in a passing off action must be
in the same “field of activity” as the D’s in order for passing off to occur?
 The extent to which the P and D share a common field of activity could be
more properly understood, not as a component of establishing goodwill or
reputation, but rather, as just one factor to consider in establishing the
likelihood of confusion.
 A common field of activity may make customer confusion and its resulting
damage more likely to occur, the absence of a common field of activity does
not, however, guarantee the absence of confusion, particularly in the context
of famous markets.
32

In the decision of Walt Disney Productions v. Fantasyland Hotel Inc., the
courts seemed to place too great an emphasis on the absence of a common
field of activity when the issue becomes the use of the same mark in
association with a hotel.
Walt Disney Productions v. Fantasyland Hotel Inc. [1996] Alta CA
F FANTASYLAND Hotel in Alta vs. Amusement Park in the US
I When does the factor of a common field of activity come into consideration?
A Trial judgment:
 Issue estoppel: the previous decision was restricted to amusement parks
 Passing off: the P had failed to meet the burden of proving essentials of the
tort WRT the hotel, namely, goodwill and the deception of the public through
misrepresentation or confusion.
Issue estoppel:
 P argued: the protection afforded by the previous decision should apply to
the hotel
 Court: the judgment refers to the entity amusement park. The words any
part thereof do not extend the parameters of amusement park.
 Trial judge’s findings were only in relation to the use of FANTASYLAND in
respect to the P’s amusement parks, not to the P’s goodwill in the name in
relation to its associated hotels, or at large, and most definitely not to the D’s
hotel at the Mall.
 The injunction restricted parties from using the name FANTASYLAND for an
amusement park. It has been acknowledged by the P that the operation of a
hotel is a different activity from that of an amusement park or, the
fantasyland hotel is not an amusement park.
Passing off:
 The trial judge found:
o While the P may have a reputation and goodwill in the name of
FANTASYLAND in respect of amusement, it does not have a
reputation and goodwill in the name of FANTASYLAND in respect of
hotels, nor at large.
o Nor has the D, by the operation of its hotel, misrepresented that it is
connected or associated with the P. and
o Nor is there sufficient evidence to show that a substantial proportion
of the public is likely to be confused as to whether the hotel is
connected with the P.
 P argued: its goodwill in the name of FANTASYLAND, for an amusement
park, is diminished by the operation of a hotel called the Fantasyland Hotel,
adjacent to the mall in which there is an amusement park, which is no longer
called Fantasyland.
o Argument based on two common features of the hotel and the
amusement park: physically contiguous and are owned and operated
by related parties.
 Passing off cases fall into two categories:
33
o Those where competitors are engaged in a common field of activity
and the P has alleged that the D has named, packaged, or described its
product or business in a manner likely to lead the public to believe
the D’s product or business is that of the P.
o Those where it is alleged that a D has promoted his product or
business in such as way as to create the false impression that his
product or business is in some way approved, authorized, or
endorsed by the P or that here is some business connection between
the D and the P. By these means a D may hope to cash in on the
goodwill of the P.
 P argued that this case is of the 2nd type: the D in using the name
FANTASYLAND for its hotel, is creating the false impression that it is
authorized or connected with the P. – the D is cashing in on the P’s goodwill.
 The 2nd type requires proof of misrepresentation or confusion, which the
trial judge did not find in this case.
 The allegation or even the belief that the D is benefiting from the use of the
name FANTASYLAND is not enough to found the tort of passing-off.
 The P’s claim for protection of tis right breaks down when it depends merely
on the common location and ownership of two business enterprises in which
it has no goodwill.
o It has no goodwill in an amusement park not named Fantasyland and
it has not challenged the finding of fact that it does not have goodwill
in the name FANTASYLAND sued for a hotel or at large.
 P relied on the champagne case.
 The trial judge specifically found that the P had no goodwill at large in the
name FANTASYLAND and that it is not in the same class as Disney land.
H Injunction not granted.
Comment:
 The issue of common field activity comes in the second stage of the classic
trinity, i.e., misrepresentation
o The more disparate the two fields are, the more unlikely that there is
confusion.
Harrods Ltd. v. Harrodian School Ltd. [1996] CA
F HARRODIAN school vs. HARRODS department store
P= world famous department store Harrods
D= private preparatory school under the name “The Harrodian School”.
I When does the factor of a common field of activity come into consideration?
A P’s reputation:
 Although P’s service is of astonishing breadth, it is wrong to consider that the
range of the P’s commercial activities is unlimited, or that they have acquired
a reputation for excellence in every field of activity.
 The P has never run a school and have no plans to do so whether under the
name HARRODS or otherwise. Were they to do so, this would be seen by the
public as a major departure from Harrods and one in which they have not
34
established reputation.
Harrodian:
 There is evidence that the term is used by staff of Harrods and other insiders,
but it does not appear to be in general use by the public. The name was never
applied to more than a tiny number of the huge range of goods and services
supplied to the public, and even this usage died out in the 1940’s.
Subjective intention to deceive:
 Deception is the gist of the tort of passing off, but it is not necessary for a P to
establish that the D consciously intended to deceive the public if that is the
probable result of his conduct. Nevertheless, the Q why the defendant chose
to adopt a particular name or get up is always highly relevant.
o If it is shown that the D deliberately sought to take the benefit of the
P’s goodwill for himself, the court will not “be astute to say that he
cannot succeed in doing that which he is straining every nerve to do.”
 Evidence in this case shows that the connection with Harrods was not the
advantage which he had in mind – it was the name of the site which he
intended to exploit.
o The fact that it had been a club for members of Harrods’ staff was to
the D of historical and incidental interest only.
The application to adduce further evidence:
 If anything, P’s willingness to damage the reputation of Harrods while still
carrying on his school as “The Harrodian School” would seem to confirm the
truth of his testimony that he did not believe that the public would infer a
connection between the store and the school.
The elements of passing off:
 Well established that no one has a monopoly in his brand name or get up,
unless in the case of registered trade marks.
 The property protected in an action of passing off is not the P’s proprietary
right in the name or get up which the D has misappropriated but the
goodwill and reputation of his business which is likely to be harmed by the
D’s misrepresentation.
 P’s reputation is only associated with limited field of commercial activities by
the public. The name HARRODS may be universally recognized, but the
business with which it is associated in the minds of the public is not all
embracing. To be known to everyone is not to be known for everything.
The relevant connection:
 In classic form of passing off the misrepresentation gave rise to an implied
representation that D’s goods were the goods of the P.
 Expanded form: where the P and D were not competing traders in the same
line of business, a false suggestion by the D that their business were
connected with one another would damage the reputation and thus the
goodwill of the P’s business.
o The connection must be one by which the P would be taken by
the P to have made themselves responsible for the quality of the
D’s goods or services.
35
o It is not sufficient to demonstrate that there must be a connection of
some kind between the D and the P, if it is not a connection which
would lead the public to suppose that the P has made himself
responsible for the quality of the D’s goods or services. A belief that
the P has sponsored or given financial support to the D will not
ordinarily give the public that impression.
The common field of activity
 There is no requirement that the D should be carrying on a business which
competes with that of the P or which would compete with any natural
extension of the P’s business. What a P must prove in an action of passing off
is not the existence of a common field of activity but likely confusion among
the common customers of the parties.
 The absence of a common field of activity is not fatal; but it is not irrelevant.
In deciding whether there is a likelihood of confusion, it is an important and
highly relevant consideration.
 Where the P’s business name is a household name the degree of overlap
between the field of activity of the parties respective business may often be a
less important consideration in assessing whether there is likely to be
confusion, but it is always a relevant factor to be taken into consideration.
 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.
Damage:
 Loss of customers is not the only kind of damage which may be caused to the
P’s goodwill by the deception of the public. Where parties are not in
competition with each other, the P’s reputation and goodwill may be
damaged without any corresponding gain to the D. The danger in such a case
is that the P loses control over his own reputation.
 Taittinger SA v. Allbev Ltd: there would take place a blurring or erosion of
the uniqueness that now attends the word “champagne”, so that the
exclusive reputation of the champagne houses would be destroyed. “the
effect would be to demolish the distinctiveness of the word champagne, and
that would inevitably damage the goodwill of the champagne houses.”
 Erosion of the distinctiveness of a brand name has been recognized as a form
of damage to the goodwill of the business with which the name is connected
in a number of cases; but unless care is taken this could mark an
unacceptable extension to the tort of passing off. To date the law has not
sought to protect the value of the brand name as such, but the value of the
goodwill which it generates; and it insists on proof of confusion to justify its
intervention. But erosion of the distinctiveness of a brand name which
occurs by reason of its degeneration into common use as a generic term is
not necessarily dependent on confusion at all.
 There is no danger of Harrods becoming a generic term for a retail
emporium in the luxury class, and if such a danger existed the use of a
different name in connection with an institution of a different kind would not
36
advance the process.
Likelihood of confusion:
 Had there really been confusion, evidence would have manifested itself by
the time of the trial.
o The trial judge was criticized for having considered only those
members of the public who had made enquiry of the school with a
view to sending their children there. The trial judge did not confine
himself to that section of the public.
o Both P and D appeal to a common section of the public – affluent
members of the middle class who live in London, shop at Harrods and
wish to send their children to fee-paying schools.
 The word Harrodian is the adjectival form of Harrods, though in the
grammatical and not in the possessive sense. Harrodian has in the past been
used in the same sense by employees of Harrods to describe themselves. It is
not the possessive form of Harrods, and is not in general use by the public.
“The Harrodian School” does, proclaim some connection with Harrods, but
not a relevant one.
 It is not merely that the P have never run a school and have no established
reputation for doing so; or even that the nature of the parties’ respective
business are as dissimilar as can well be imagined. It is rather that the
commercial reputation for excellence as a retailer which the P enjoy would
be regarded by the P as having no bearing upon their ability to run a school.
o The question is whether there is a real risk that members of the
public will be deceived into thinking that a school called the
“Harrodian School” is owned or managed by Harrods or under the
Harrod’s supervision or control.
o Whether there is a real likelihood of such confusion is a question of
fact.
Likelihood of damage:
 Damage to goodwill is not confined to loss of custom, but damage to
reputation without damage to goodwill is not sufficient to support an action
for passing off.
Dissent:
 Exceptional features of this case:
o The phonetic and verbal difference between HARRODS and
HARRODIAN
o Wide disparity between the respective fields of activity or the parties,
and
o The absence or paucity of direct evidence of confusion.
 Trial judge’s opinion is wrong in:
o Attached undue importance to the difference between HARRODS and
HARRODIAN, without giving effect to the consideration that their
significance is indistinguishable in all relevant respects.
o Referred exclusively to the possibility of confusion in the minds of
parents and prospective parent of boys at The Harrodian School. It
37
contains no reference to the far greater sector of the public who are
aware of the reputation of Harrods and are customers or potential
customers of the P, but who never heard of the school or the
connection between the Harrodian Staff Club and its site.
o Gave no or insufficient weigh to the fact that a trader’s distinctive
name can in some cases itself form part of his goodwill and constitute
a property interest
Reputation/goodwill
 Principle agreed by both parties: in some cases the reputation of a trader’s
name may be such that it constitutes part of the goodwill of his trade, and
may therefore be in the nature of a property interest, even though the name
is not used as part of the description of any products or services supplied by
him.
o P’s name stands for excellence in this case.
 The addition of “ian” is a well-known stylistic adjectivisation of a proper
name to denote a derivative or descriptive connection with the bearer of the
name, and almost innumerable examples of this form of speech in common
activity can be given.
Misrepresentation/confusion:
 Both misrepresentation and likelihood of confusion are self-evident in the
present case. The name Harrodian proclaims a misrepresentation by
representing a connection with the P which does not exist. Its adoption
constitutes a wrongful attribution of a non-existent connection. All persons
familiar with the name Harrods and what it stands for, who chance across a
reference to the school, are at least likely to think that there must be some
connection or association between the store and the school.
 In the present case, the manifold services and activities for which the P are
known, and the wide field of recognition of the name Harrods, would be
bound to lead to an assumption that the P are in some way connected,
associated or mixed up with the school which bears their name in its
adjectival form. Moreover, in this context it is wrong to assert that it is a
necessary ingredient of the tort that the mistake assumption made by
someone chancing across the name of school must be that the P own the
school or are responsible for its management.
o By choosing the name Harrodian for the school from other possible
choices, D was not only getting the benefit of the connection with the
site, but the connection with Harrods as well.
 The issue is whether there is a misrepresentation. The answer is yes if it
caused or was liable to cause, confusion in the minds of members of the
public, the general body of persons who are the repository of the P’s
reputation.
Damage:
 Damage can consist in the possibility of damage to the P’s reputation and
goodwill which is ultimately liable to lead indirectly to a reduction in trade.
Loss of distinctiveness causes damage to a reputation for excellence, and loss
38
of trade will ultimately follow.
o A debasement or dilution of the P’s reputation, as the result of the D’s
action, is a relevant head of damage.
o If the act which constitutes the passing off has the effect of raising in
people’s minds the mistaken belief of a connection between the D and
the P, but which is in fact non-existent, then the court will have regard
to the fact that the P has, to that extent, lost control of his reputation,
and that he has therefore suffered damage to his goodwill by a
potentially injurious association with the D against which the court
will protect him by injunction.
 Schools are often in the news, therefore negative publicity will affect the P.
 The danger of damage to the P’s reputation and goodwill wich is liable to
result from the false impression of a connection with this school may only
the 1st step.
o The extinction of the exclusive connection between the name
Harrodian and the P will have the consequence that their use of this
name will no doubt have to be abandoned, at any rate for public
purposes. Thus, if the continued use of the name by the D is permitted
in the present case, then it seems likely that it would proliferate.
 Potential consequences:
o The use of the adjectival form of their own name will become lost to
the P
o The false impression of a connection between the P’s and
unconnected business using the name Harrodian will proliferate.
H Injunction NOT granted.
K  There is a distinction between goodwill and reputation. Loss of reputation
does not necessarily mean a loss of goodwill.
 The more diverse the fields of activities are, the less likely that there is
confusion.
 The law does not seek to protect the value of brand names; it protects the
goodwill brand names generate. That’s why the protection must be justified
by confusion.
 No evidence of confusion is not conclusive but it is not without significance.
If there is going to be confusion, it should have manifested itself by now.
 Although the fame of famous mark might extend the boundary of operation
and although common field of activity is not required, in the absence of
confusion or the likelihood thereof, the action of passing off will not succeed.
 Common field of activities is not required; what is required is a common
group of customers who are confused or making the false connection.
Comments:
 It can be argued that it is not remotely stretched that P may engage in
educational endeavor.
o P has been expanding their business.
 Concept of cashing in goodwill vs. the real damage
o Q: at what point the law should step in?
39

The court is cautious in not granting too broad a protection to P.
(b) Deception of the Public by Misrepresentation
(i) Establishing Misrepresentation and Confusion
Establishing the tort of passing off:
 Goodwill/reputation
 Misrepresentation
o The P has a burden to establish that there has been a
misrepresentation that has caused or is likely to cause confusion
amongst the relevant public.
o The existence of misrepresentation is a question of fact
 Distinguishing features
 Disclaimer
o Proof of actual confusion need not to be shown, but its existence or
otherwise can be a relevant factor.
 Survey evidence
 Expert testimony
 Damage or potential damage
Extended boundary of passing off:
 Sometimes the tort of passing off used to test the boundaries of the element
of misrepresentation leading to the likelihood of confusion for what are
ostensibly complaints of unfair competition based on misappropriation.
 “although the tort grew up to protect the interests of traders rather than
consumers, the less it works to prevent consumer confusion, the more it
becomes merely a law protecting traders from unfair competition.”
Types of passing off:
 Classic: the D misrepresents to the public that his wares are the wares of the
P, causing confusion as to source.
 Extended: the misrepresentation can relate to the quality or type of wares, or
the relationship or association between traders or their objects of trade.
Misrepresentation is the core of passing off, without which and the likely confusion
that it precipitates, no passing off can be found.
Consumers Distributing Co. v. Seiko Time Canada Ltd. [1984] SCC
F Seiko case
 Respondent/P: authorized distributor of Seiko watches in Canada
 Appellant/D: unauthorized distributor of Seiko in Canada
 Lawfully bought watches in Europe sold back in Canada
 Guarantees not recognized by P
I Whether there is misrepresentation/confusion under the circumstances
wherein that public was aware that the SEIKO watches sold by D were not
supported by an international guarantee by the P, and that the D was not an
40
authorized dealer of the P.
A  The time period should be divided into two parts:
o 1st: the beginning of sales by the D – issuance of the interlocutory
injunction
o 2nd: the issuance of the interlocutory injunction – the trial
 If an unlimited injunction is to be granted enjoining the D from selling SEIKO
watches indefinitely, as submitted by the P, the following consequences will
follow:
o The Canadian public would be deprived of the right, or option, to
purchase the SEIKO watch, on the alternative basis that the watch
would be unsupported by the maker’s warranty; and
o A monopoly would be effectively established by the application of the
doctrine of passing off, equivalent to that normally authorized by the
issuance of a patent, except that in this case the monopoly would be
for an unlimited term.
 The common law principles relating to commerce and trade generally
proceed on the basis of a recognition of perceived benefits to the community
from free and fair competition.
 Exceptions to this general rule where law imposes restrictions on the right to
free competition and trade:
o Purchasers of goodwill upon vendors, etc.
 Any expansion of the common law principle to curtail the freedom to
compete in the open market should be cautiously approached, given the
ever-changing characteristics and techniques of commerce.
 The simple wrong of selling one’s goods deceitfully as those of another is not
now the core of the action; it is the protection of the community from the
consequential damage of unfair competition of unfair trading.
 The P argued: it is a case of classic passing off – it associate with the watch
features which are unique to the selling technique.
 This argument is wrong, for the logical extension of the proposal grants to a
vendor (the P) a monopoly on the sale in Canada of invention issued to the
same extent as it would enjoy if the product were subject to a patent.
 The argument is wrong also because in that case the common law, in its
personal property sector would thereby be recognizing a right to entail and
control the sale of personal property, however legitimately acquired, where
another person, in the position of the vendor, was also marketing the
identical item of personal property. The right to control resale would flow to
the P and all others upon whom the manufacturer wishes to bestow this
protection, but to the manufacturer as well.
 The argument is wrong also for there will be a collision between the result of
the P’s argument and the common law principle WRT restraint of trade and
free competition.
H Injunction NOT granted.
41
Cadbury Schweppes Property Ltd. v. Pub Squash Co. [1981] AU PC
F Television and Radio Advertising Campaigns for non-alcoholic beverages
 Adoption by D of advertising campaign based on themes and slogans created
by P
 Products distinguishable by its get-up and TM on the can
I Whether there is a cause of action for the P, i.e., whether there is
misrepresentation?
A  P’s complaint was largely based on D’s deliberate adoption of the advertising
campaign based on themes and slogans closely related to P’s successful
marketing strategy.
 Although the application scope of the tort of passing off has been extended to
descriptive materials such as slogans or visual images, in addition to TMs,
the competition must remain free. The test is still whether those descriptive
materials have acquired a secondary meaning such that they become part of
the goodwill of the product.
 A D was not acting illegally merely by entering a market created by another
and competing with its creator; otherwise competition will be stifled.
 The key question is: were customers, or potential consumers, led by the
similarities in the get-up and advertising of the two products into believing
that D’s products were P’s? If no deception proved, was there a real
probability of deception?
 The different appearance is not enough – the nature of the market place and
the habits of ordinary purchasers must be considered.
o The products are often sold in self-selection display refrigerators,
displayed side by side.
o The purchase of a soft drink is often a casual transaction.
o Although mis-selection may happen, the wrong will usually be
corrected before the purchase has been completed.
o D’s products have sufficiently differentiated themselves.
 “the court must be on its guard against finding fraud merely because there
has been an imitation of another’s goods, get-up, method of trading or
trading style.
 In this case, the intention was not to pass off the D’s products as those of the
P but to take advantage of the market developed by the advertising
campaign. Unless the P has IPR in the promotional ideas, there is no
infringement.
o It is not proved in this case that the promotional ideas are a
distinguishing feature of the product.
o The court found that the slogan was descriptive of the type of the
product advertised; it does not of itself identify or denote the origin of
the product being advertised.
 Any mis-selection arose from the casual nature of the transactions, not from
D’s failure to distinguish himself.
 Attention must be paid to the balance between fair competition and free
competition.
42
National Hockey League v. Pepsi-Cola Canada Ltd. [1992] BC SC
F Ambush marketing NHL teams referred to by city names
 Pepsi the exclusive advertising during the broadcast while Coca-Cola the
official sponsor
I Whether there is a misrepresentation amounting to causing confusion?
A  Two kinds of passing off:
o 1st: P and D engaged in a common field of activity and D named,
packaged or described its product or business in a manner likely to
lead the public to believe the D’s product or business is that the P.
 does not apply in this case
o 2nd: the D promotes his products in such as way as to create the false
impression that his product is in someway approved, authorized or
endorsed by the P or that there is some business connection between
the D and the P. – D wants to cash in on the goodwill of the P.
 Goodwill is the benefit and the advantage of the good name, reputation, and
connection of a business. It is the attractive force which brings customers.
 Not every connection claimed amounts to a passing off. The question is
whether representation that the D’s goods are connected with the P in such a
way as would lead people to accept them on the faith of the P’s reputation.
o In this case, whether the public was led to believe that one or more of
the P approved, authorized or endorsed D’s products or there was
some business connection between the P and the D.
 On the issue of the likelihood of the public being deceived or confused, that
the tribunal of fact must not only consider the evidence but also use its own
common sense.
o The judge, using his common sense, did not find that D’s marketing
strategy suggests P approved, authorized or endorsed his products in
ay way or there was some form of business connection between the
two.
 Wording of the disclaimer is unambiguous so the court refused to follow
Australian precedent where the disclaimer was not given effect.
o On Cans, disclaimer prominent and easy to read.
 The prominence to be given to a disclaimer must to some extent, depend on
the likelihood of a false impression being conveyed to the public if there is no
disclaimer. The greater the likelihood, the more prominent the disclaimer.
o There may be cases where no disclaimer will be adequate.
 S. 7(b) is a statutory statement of the common law tort of passing off.
National Hockey League v. Pepsi-Cola Canada Ltd. [1992] BC CA
H There is no quasi-property right in the schedules, scores, and polularity of the
Stanley Cup Play-Offs, as claimed by NHL.
43
(ii) Who is Confused?
The concept of relevant public
 In a passing off action, a P must prove that the D’s misrepresentation is likely to
cause confusion amongst the relevant public – the ordinary consumer of the
type of wares or services at issue.
Ciba-Geigy Canada Ltd. v. Apote Inc. [1992] SCC
F
Get-up of a prescription drug, interchangeable with the generic version
 Unique tablet of the size, shape and color of the pills
I
Who is the relevant public? Whether the ultimate consumers should be
included in addition to the professionals?
A
 Both upstream and the downstream of a product should be considered:
people who manufacture and market the product and people who buy, use
or consume the products. Passing off action aims to protect all person
affected by the product.
Protection of the manufacturer:
 From their perspective, passing off action is intended to protect a form of
ownership. There is also concept of ownership protected in relation to
goodwill.
 The purpose of the passing off action is to prevent unfair competition.
 During the competition, when a competitor uses dishonest practices, the
law must intervene.
Protection of customers
 Unfair competition cases are affected with a public interest. A dealer’s
goodwill is protected, not merely for his profit, but in order that the
purchasing pubic may not be enticed into buying A’s product when it wants
B’s product.
 Power exercised in unfair competition cases to safeguard the interests of
the public as well as the interest of the manufacturer.
 The ordinary customer is at the heart of this case. The buyer is the first to
be injured.
 The average customer will not be the same for different products, and will
not have the same attitude at the time purchase. The attention and care
taken by the same person may vary depending on the product he is buying.
 The term get-up is normally used in passing off action to mean the visible
external appearance of goods in the form in which they are likely to be seen
by the pubic before purchase. If the goods are sold in packages, then their
get-up means the appearance of the packages as a whole. If they are sold or
displayed unpackaged, then the get-up relied on can only be the inherent in
the goods themselves.
 Nowadays, manufacturer, wholesaler, retailer and consumer are all links in
this chain. The first person who buys the product is not generally the one
for whom it is ultimately intended.
 Retail traders are less likely to be misled than ordinary customers.
44


In cases of pharmaceutical products, pharmacist is comparable to retailers.
Although patient has no direct access to the product, it is still necessary for
him to be able to exercise some kind of control over what he is being given.
In the field of prescription drug, the first info the patient receives when the
product is given comes from its appearance.
 Although the consumers may not have the freedom to choose between the
brand name and the generic as the specific brand is prescribed the
physicians, they still should be able to refuse to be sold a drug other than
the one indicated by the doctor.
 Patients may sometimes specify what brand of drugs they want, especially
where there is extended treatment period and the patients need refill.
 One patient may insist on a specific brand for psychological, physiological
and other reasons such as the shape of the drug. Besides, different
producers may have different quality control.
 The patents needs information and protection as other consumers do.
o Needs to give patients control over the brand of drug he wishes
obtain where the product is interchangeable.
 Note: it may be argued that the get-up of the drug is associated with
the effect rather than their commercial origin. It is a question of fact.
R
In the field of prescription drugs, the customers include physicians,
pharmacists, dentist and patients.
Comments:
 Public interest in the sense that customers should be able to choose what
they want vs. public interest in the larger context in the sense that generic
drugs should be available
Abbott Laboratories Ltd. v. Apotex Inc. [1998] ON GD
F
The Appearance of a tablets
I
Who is the relevant public?
H  P’s argument: customers view the appearance of the drug indicative of the
source instead of the medicine itself. So consumers would be confused.
 The real concern in this case is a struggle between Abbott and Apotex over
share of the generic market.
 Any claim of distinctiveness of the drug is seriously diluted by the act of
Abbot licensing another manufacturer and distribute a generic form of the
drug similar in appearance.
 The P in this case must establish the appearance of the pills has acquired a
secondary meaning among doctors, pharmacists or patients as indicating
one trade source. The P has failed to do so.
 It can be argued that the D choose to use the same capsule appearance for a
marketing reason which is to identify the medicine as one that is
therapeutically equivalent to the P’s products, not to represent to the public
that their products are the P’s.
 There is no tort of copying and absent misrepresentation, copying is an
acceptable way of engaging in competition.
45



Confusion resulting from the lawful right of another trader to employ as
indicative of the name of his goods terms which are common to the trade
give rise to no cause of action. The same goes for the appearance of the
goods when the appearance is not self-evidently a badge of trade origin.
The appearance of Apotex’s capsules does not operate to lead a customer to
request the products of Apotex rather than those of Abbott. The capsule
appearance is not used in the market place as an identifier by reference to
which the consumer/patient choose one brand of the drug rather than
another.
The real objection to Apotex coming to market is not patient confusion, but
rather concern for loss of market share.
(c) Potential Damage to the Plaintiff
Actual or Potential Damage
 Where the court found the existence of misrepresentation likely to cause
confusion, the likelihood of such confusion is regarded as a basis on which
damage has been caused or is likely to follow.
 Confusion entails a loss of control over the message conveyed by distinctive
indicia, which is a recognizable harm in its own right.
 Other forms of damage include:
o Diversion of trade
o Lost sales or royalties
o Lost opportunities for expansion into the market
o Loss of reputation
Requirement of Proof of Damage in s. 7(b) Proceedings
 It seems there must be, at least, some evidence of the existence or nature of
probable damage in order to succeed in a section 7(b) passing off action.
Orkin Exterminating Co. v. Pestco Co. of Canada [1985] ONCA
F ORKIN and ORKIN in a design mark, pest control companies
 P has gone a great length over the years to establish and maintain a high
standard of service through its employee training and product development
programs and its service guarantees.
 P spend substantial sums money advertising its name, logo and business in
the US through radio, TV, newspapers and billboards.
 Canadians travelling to the US were exposed to the ads
 Canadians who owned or rented in the US have used the ads
 P provides services to transnational companies which operate in Canada
 There is an international reputation
 P has intention to operate in Canada
 D has never actually carried on business under the trade name; it was used in
the phone directories to entice customers
I The type of damage in situations where P and D not in same geographical
locations
46
A 
A P does not have to be in direct competition with the D to suffer injury from
the use of its TM by the D. If the P’s trade name has a reputation in the D’s
jurisdiction, such that the public associates it with services provided by the P,
then the D’s use of it means that the P has lost control over the impact of its
trade name in the D’s jurisdiction. The practical consequence if that P is
vulnerable to losing the ON customers it now has as well as prospective ON
customers, WRT services provided in the US. Also, P is prevented from using
its trade name in ON when it expands its business in ON.
 “his mark is his authentic seal; by it he vouches for the goods which bear it; it
carries his name for good or ill. If another uses it, he borrows the owner’s
reputation, whose quality no longer lies within his own control. This is an
injury, even though the borrower does not tarnish it, or divert any sales by
its use; for a reputation, like a face, is the symbol of its processor and creator,
and another can use it only as a mask.”
R Recognized damage:
 loss of control over the impact of its trade name in ON
 the creation of a potential impediment to its using its TM upon entering the
ON market.
Walt Disney Productions v. Triple Five Corp. [1994] Alta CA
F FANTASYLAND in association with amusement park
 D: amusement park in Alberta
I The type of damage suffered
A  Whether a passing off action involves misrepresentation of a name from
another field of endeavor or another jurisdiction, damages are the harm
which results or may result to the goodwill or reputation which the P has
established. It may also include the loss of the right to exploit one’s
reputation within the territorial jurisdiction of the court, or the exploitation
into an unrelated field of endeavor, whether or not the P has current
intention of venturing into that field or geographic area.
 By using the name FANTASYLAND, the D has deprived the P of the right to
control over his reputation and goodwill associated with that name. These
actions have diminished the P’s property right and its potential or value in
the jurisdiction. The control over the reputation, image or goodwill which it
has carefully nurtured and developed has passed into other hands. That is, in
itself, sufficient damage to found this cause of action, where the P seeks no
monetary damages.
BMW Canada Inc. v. Nissan Canada Inc. [2007] FCA
F M, M3, M5 and M & Design in association with cars, s. 7(b) action
I When there is goodwill and misrepresentation, whether damage can be
presumed.
A  Actual or potential damage is a necessary element in finding liability under s.
7(b). In the absence of evidence thereof, one cannot conclude liability.
 A P must demonstrate that he suffers or he is likely to suffer damage by
47

reason of the erroneous belief engendered by the D’s misrepresentation that
the source of the D’s goods or services is the same as the source of those
offered by the D.
It is not open to a judge to presume damages.
Chapter 3: Introduction to the Statutory
TM Scheme
1. The relationship Between the Common Law and the TMA
Dual Protection of TMs in Canada
 Protected under both common law and the TMA
Protection under the TMA
 Applies to both registered and unregistered TMs, but only as defined.
 Premised on use, reflected in provisions governing entitlement
o “while the TMA provides additional rights to a registered TM holder
than were the available at common law, registration is only available
once the right has been established by use.”
 Owners of unregistered TMs can bring s. 7(b) actions, which is a statutory
statement of passing off.
Protection under the Common Law
 Compared to the protection under the TMA, far more inclusive and can
protect any indicia in which the P has built a reputation.
 Rights premised on use
Kirkbi AG v. Ritvik Holdings Inc./Gestions Ritvik Inc. [2005] SCC
F
LEGO indicia: the micro and mini lines of small bricks
I
What’s the test for s. 7(b) action?
A
 S. 7(b) of the TMA creats a civil cause of action essentially codifying the
common law tort of passing off.
The same test as in common law:
 Goodwill/reputation: the P must establish goodwill in respect of the
distinctiveness of the product
o Evidence of goodwill solely attached to the techniques and
processes which create the product will not do. The doctrine of
passing off did not develop to protect the monopolies in respect of
products but of guises, get-ups, names and symbols which identify
the distinctiveness of a source.
 Misrepresentation creating confusion in the public.
48





o Misrepresentation may or may not be intentional
Actual or potential damage to the P
In this case, the alleged distinctiveness of the product consisted precisely
of the process and techniques which were now common to the trade.
There is another functionality pbl.
Granting such a claim in these circumstances would amount to recreating a
monopoly contrary to basic policies of the laws and legal principles which
inform the various forms of IP in our legal system.
The P is no longer entitled to protection against competition in respect of
its product. It must now face the rigors of a free market and its process of
creative destruction.
(a) The Advantage of Registration
Priority can be secured based on proposed use under the Act
No need to prove reputation in order to succeed in securing a remedy in respect of a
registered TM
Advantage of a registered TM
 The owner of a common law TM cannot license his mark; the TMA provides
clear guidance WRT licensing.
 Registration provides exclusive right to use the mark throughout Canada
even though the owner may only be using the mark one specific area of the
country.
o At common law, a TM owners’ right to the use of a particular TM
extends only so far as the area in which the owner has established
reputation.
 Two statutory cuase of action not available to unregistered mark. At common
law, the only cause of action is passing off.
o TM infringement
o Depreciation of the value of the goodwill attaching to the registered
TM.
 Registration in Canada provides a right to apply for a corresponding
registration in other countries which is also a signatory of the International
Convention for the Protection of Industrial Property. The convention also
creates a priority system whereby an applicant may rely upon a foreign filing
date as its Canadian filing date for a TM so long as the Canadian application
filed within 6 months of the applicant’s home filing.
Comparison between Common Law Protection and protection under the TMA
 Passing off a resort where registration is absent or fails for invalidity, or is
impossible or impracticable.
 Registration costs registration and renewal fees, but infringement actions
requires less proof than passing off actions and maybe cheaper as a whole.
 Different theories:
49

o Passing off: discourages the disruption of economic relations by
misrepresentation
o Registration: to make trade symbols more like commodities and so
increase both their intrinsic exchange value
A registration may protect the mark for the whole range of goods or services
for which it is registered, without proof of damage; in passing off, an identical
mark may be sued by similar business if no confusion results through the use
of disclaimer
TM protected both provincially and federally
(b) Issues of Jurisdiction
Which court to choose?
 Provincial:
o property and civil e.g. Contractual obligations under a license
o provincial superior courts can apply both federal and provincial laws
pursuant to their inherent jurisdiction; but their finding of invalidity
or order of relief will only affect the rights of private individuals party
to the litigation and not the TM rights at large.
o Provincial courts cannot order expungement of the mark or anything
requires a change to the register.
 Federal: relief enforceable anywhere in Canada
o Can seek expungement and make changes to the register
 Concurrent litigation in both jurisdiction seeking different remedies possible
but either of the proceeding may be stayed.
(c) Issues of Constitutionality
Vapor Canada Ltd. v. MacDonald [1976] SCC
F
 D former employee of the P
 D incorporated a company during his employment
 P claimed that D made use of the knowledge he acquired through
employment in breach of his employment contract contrary to s. 7(e) f the
TM Act.
I
Whether s. 7(e) of the TMA is ultra vires the Parliament?
H Laskin:
 S. 7(e) cannot be justified as legislation relating to the criminal law.
Although the criminal law power enables preventive legislation to be
enacted, it does not encourage that federal legislation to authorize
independent civil proceedings for damages and injunction. in situations
unrelated to any criminal proceedings. S. 53 of the TMA cannot rely on s.
115 of the CC as a base to support its validity as a completely independent
civil remedy to which the injured party may have recourse.
 S. 7(e) constitutes an overlaying or an extension of civil causes of action
recognizable in the provincial courts and falling within provincial
50
J
legislative competence. In the absence of any federal regulatory
administration to oversee the prescription of s. 7, there is no basis in
federal power to justify such legislation. It is not sufficient to peg on which
to support the legislation that it applies everywhere in Canada when there
is nothing more to give it validity.
 S. 7(e) cannot be based on federal jurisdiction WRT patents and TMs. The
legislation has no generality. No administrative body is established and no
criminal offense is created. The provision is not connected with trade as a
whole, nor does it establish a scheme of regulation. It cannot be justified
under s. 91(2) of the BNA Act.
 In the absence of an express declaration in the TMA that the Act as a whole,
include s. 7 or s. 7 itself, was enacted in implementation of the obligation of
the international Convention for the Protection of Industrial Property, it
cannot be argued that there had been a valid exercise in this case of the
federal treaty or convention implementing power, assuming such power
exists in the present case.
s. 7(e) is ultra vires
Motel 6 Inc. v. No. 6 Motel Ltd. [1981] FTD
F
Violation of s. 7(b): direct public attention to its services or business causing
confusion
I
Whether s. 7(b) is ultra vires?
H  Common law tort of passing off a civil right: if s. 7(b) unconstitutional, the
federal court does not have the jurisdiction to try the case.
 The MacDonald decision seems to suggest s. 7 when taken as a whole,
cannot be given unqualified validity and for s. 7(b) to be given limited
validity, it must have some association with federal jurisdiction in relation
to TMs and trade names.
 Justify s. 7(b) with the federal power to regulate trade and commerce
cannot succeed.
 In order to decide whether the action of passing off is properly part of or
attributable to TM laws, examination of the nature of passing off action will
help.
 Even though s. 7(b) has broadened the scope of the common law tort of
passing off, it has not changed the nature of the action or any of its essential
elements.
 The right lies in the property in the business and goodwill likely to be
injured. The action concerns an invasion of right in the property and not of
a right in the mark or name improperly used.
 The fact that the statutory provision might be broader in its scope than the
common law action would not tend to relate it more intimately to the
general regulatory scheme governing trade marks. On the contrary, the
broader the brush the less suitable it would be to fill in the fine lines of the
narrow and carefully circumscribed provision of trade mark registration
and control, even if used by a skillful artist
51








J



S. 7(b)’s place in the context of constitution.
Unlike patents and CRs, TMs are not specifically enumerated subjects of
federal jurisdiction under the BNA Act.
The federal power on TMs lie in the federal power to regulate trade and
commerce in the area of interprovincial and external trades.
S. 7(b) does not focus on interprovincial or external trade or on the
regulation of trade throughout Canada. So any validity s. 7(b) has must be
founded on TM law.
Since overlap with the provincial power to regulate property and civil
rights, the subject matter must be necessarily incidental to the federal
power to regulate trade and commerce.
Any legislation that does not directly deal with TMs must be necessarily or
intimately related to the regulation or control of TMs.
The connection must be intimate and important, the support real and
substantial and the association that of blood brothers. A mere incidental
relationship or a matter which is nothing more than an accessory, adjunct,
appendage or adornment will not meet the required test.
Although TMA is characterized by a public registry, the administrative
controls are not applicable to s. 7(b)
S. 7(b) does not round off federal legislation regarding TMs.
s. 7(b) is ultra vires.
FTD has no jurisdiction to try the issue wither on the basis of that section
or a fortiori on the basis of the common law action of passing off.
Asbjorn Horgard A/S v. Gibbs/Nortac Industries Ltd. [1987] FCA
F
 P: STINGSILDA
 D: NORSE SILDA
 Fishing lures
I
Constitutionality of s. 7(b)
H  The remaining subsections of s. 7 were not found to be invalid in the
Macdonald case.
 The constitutionality of s. 7 is supported applying the round out test.
 S. 7(b) is intra vires of the Parliament in so far as it may be said to round
out regulatory schemes prescribed by Parliament in the exercise of its
legislative power in relation to patents, CRs, TMs and trade names.
However, it is the dictum of the judgment in the MacDonald case
 A statutory provision must be tied to the whole in order to be
constitutionally valid.
 Federal power to regulate TMs is not specifically set out, but can be
reasonably deducted. The current TMA fulfills the test set out by Dickson: a
national regulatory scheme, the oversight of the Registrar of TMs, a concern
with trade in general rather than with an aspect of a particular business,
the incapacity of the provinces to establish such a scheme, and the
necessity for national coverage. S. 53 provides for broad remedies,
including civil remedies.
52

J
The question is whether TMA can create a civil remedy in relation to a TM
not registered under the Act.
 In s. 7(b), Parliament has chosen to protect the goodwill associated with
TMs. In this way, it rounds out the statutory scheme of protection of all
TMs. The civil remedy which it provides in conjunction with s. 53 is
genuinely and bona fide integral with the over-all plan of supervision. It has
rational functional connection to the kind of TMs scheme Parliament
envisaged, in which even unregistered marks would be protected from
harmful misrepresentations.
s. 7(b) intra vires
Kirkbi AG v. Ritvik Holdings Inc./Gestions Ritvik Inc. [2005] SCC
F
Interlocking studs and tubes as TMs
 Patent on the products expired
I
The constitutionality of s. 7(b)
H  Test:
o Does the impugned provision intrude into a provincial head of
power, and to what extent?
o If the impugned provision intrude into a provincial head of power, is
it nevertheless part of a valid federal legislative scheme?
o If the impugned provision is part of a valid federal scheme, is it
sufficiently integrated with that scheme?
 Although the creation of civil cause of action is generally a matter of
property or civil rights in the province, the intrusion of s. 7(b) into
provincial jurisdiction is minimal. It is remedial and is limited in its
application by the provisions of the Act. It does not expand the federal
jurisdiction in relation to TMs and trade names, but merely rounds out
otherwise incomplete TM scheme.
 TMA is a valid exercise of Parliament’s general trade and commerce power.
The TMA establishes a regulatory scheme for both registered and
unregistered TMs and is clearly concerned with trade as a whole, across
and between industries in different provinces. Since there is no question
that TMs apply across and between industries in different provinces,
divided provincial and federal jurisdiction could lead to uneven protection.
The lack of civil remedy integrated into the scheme of the Act and
applicable to registered and unregistered marks that could also lead to
duplicative, conflicting, inefficient enforcement procedures
 S. 7(b) is sufficiently integrated into TMA. As the encroachment into
provincial power is minimal, a functional relationship is sufficient to
sustain the constitutionality of the provision. The passing off action plays a
clear role in the federal scheme. In its pith and substance, s. 7(b) is directly
connected to the enforcement of TMs and trade names in Canada, and the
civil remedy it creates protects the goodwill associated with TMs and is
directed to avoiding consumer confusion. Without this provision, there
would be a gap in the legislative protection of TMs.
53
J
R
s. 7(b) intra vires
s. 7(b) for marks within the definition of TMs under s. 2 of the TMA, whereas
passing off actions for all kinds of distinctive indicia
The limitation of s. 7(b) in passing off actions
 After the Kirkbi decision the scope of s. 7(b) is limited to indicia that fulfills
the technical definition of TMs under s. 2 of the TMA
BMW Canada Inc. v. Nissan Canada Inc. [2007] FCA
F
M, M3, M5 and M & Design in association with cars, s. 7(b) action
 M6 unregistered TMs within the definition of s. 2 of the TMA
I
The limited scope of s. 7(b) in passing off actions
H  S. 7(b) prohibits a person from directing public attention to his wares,
services or business in such a way to cause or likely to cause confusion with
the wares, services, or business of another.
 S. 7(b) is the statutory expression of the common law tort of passing off
with one exception: for resort to it, a P must prove possession of a valid and
enforceable TM, whether registered or unregistered.
 The s. 2 definition requires a mark be used by a person for the purpose of
distinguishing or so as to distinguish wares or services manufactured, sold,
tested, hired or performed by him from those manufactured, sold, leased,
hired or performed by others.
 The definition of use under s. 2: any use that by section 4 is deemed to be a
use in association with wares or services.
 In this case, the automobiles or parts thereof are wares.
 S.4: a TM 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 given to the person to whom the
property or possession is transferred.
 There is no evidence that the alleged M and M6 TMs were marked on
BMW’s wares themselves or on the packages in which they were
distributed.
 So the next question is whether the M and M6 marks, at the time of the
transfer of the property in or possession of the wares, were so associated
with BMW’s wares that notice of the association was given to the person to
whom the property or possession was transferred.
 M mark: cars not marked with any stand alone M mark  no evidence
showing an association at the time of transfer of the property in or
possession of the wares
 Evidence showing used in association with numbers, letters or words
 The use of the M mark in association with numbers, letters or words is not
equivalent to use of the M alone as a TM
 BMW’s use of the M mark was limited to advertisements and promotional
54
J
R
type materials  such use of a mark is not in itself sufficient to constitute
“use” under s. 4(1) of the Act.
 For the use of the mark in advertisement and promotional material to be
sufficiently associated with a ware to constitute use, the advertisement and
promotional material would have to be given at the time of transfer of the
property in or possession of the wares
 There is no such evidence
 There is no evidence demonstrating damages and no finding of damages. It
was not open to the trial judge to presume damages.
No passing off established
 For s. 7(b) to apply, a indicia at concern must be a TM within the definition
of s.2 of the TMA
 S. 4(1) provides for use in association with wares – use is at the time of
transfer of the property:
o The mark is marked on the wares or on the packages in which they
are distributed; or
o The mark is in any other manner so associated with the wares that
notice of the association is given to the person to whom the property
or possession is transferred
 The use of the mark combined with other letters or numbers does not
constitute use of the mark stand alone.
2. Registration as a Defense to Passing Off
Registration is a defense to an action for passing off
Molson Canada v. Oland Breweries Ltd./Brasseries Oland Ltee [2002] ON CA
F
 D: Oland Export Ale combined with a red, gold and white label
 P: Molson Export
 In association with beer
I
Whether registration is a defense to a passing off action?
H  The holder of a registered TM in Canada has the exclusive right to use the
mark throughout the country until the mark is found to be invalid
 If a competitor takes exception to that use, the sole recourse is to attack the
validity of the registration. If otherwise, a P complaining of confusion
caused by a competitor’s registered mark would himself be infringing on
the mark by establishing that confusion.
J
D is entitled to use its mark throughout Canada in association with its beer
Comment:
 Registered TM with a little bit activity vs. unregistered mark with reputation
outside Canada:
o The famous foreign mark can be prevented from entering into
Canadian market.
55
Jonathan, Boutique Pour Hommes Inc. v. Jay-Gur International Inc. [2003] FCTD
F
P and D: word mark JOHATHAN
 P: simple word mark in association with men’s clothing
 D: JOHATHAN G in cursive script in association with apparel
 P complaint of D’s use of the mark in block letters and not in script
 Motion for summary judgment
I
 Whether registration is a defense to a passing off action?
 Whether or not the D is using its registered TM?
H  Registration is an absolute defense to an action of passing off.
 Q: whether the D is using its registered TM?
 In situations where there are variations, whether the used mark is
substantially deviating from its registered marks or is simply using the
essential elements of its registered marks?
 This question is a question of fact.
 A court must look at all relevant circumstances:
o At the state of the market and of the register
o At the circumstances in which the D is currently using the mark
o At the fact that such use is very similar
 These findings of fact must be made by a trial judge
R
 Registration is an absolute defense to an action of passing off.
 Q: whether the D is using its registered TM?
 In situations where there are variations, whether the used mark is
substantially deviating from its registered marks or is simply using the
essential elements of its registered marks?
3. Standard of Review
Standard of review and s. 56
 If the additional evidence would have materially affected the Registar’s
decision  correctness; otherwise reasonableness.
56. (1) An appeal lies to the Federal Court from any decision of the Registrar
under this Act within two months from the date on which notice of the decision
was dispatched by the Registrar or within such further time as the Court may
allow, either before or after the expiration of the two months.
(5) On an appeal under subsection (1), evidence in addition to that adduced
before the Registrar may be adduced and the Federal Court may exercise any
discretion vested in the Registrar.
Molson Breweries, A Partnership v. John Labatt Ltd. [2000] FCA
I
Standard of review
H  Because of the opportunity to adduce additional evidence, s. 56 is not a
customary appeal provision in which an appellate court decides the appeal
56


on the basis of the record before the court whose decision is being appeal.
An appeal under s. 56 involves, at least in part, a review of the findings of
the registrar. Because expertise on the part of the Registrar is recognized,
decisions of the registrar are entitled to some deference.
Having regard to the Registrar’s expertise, in the absence of additional
evidence adduced in the trial division, the decision of the Registrar,
whether of fact, law or discretion, within his area of expertise, are to be
reviewed on a standard of reasonableness simpliciter. Where additional
evidence is adduced in the trial division that would have materially affected
the Registrar’s findings of fact or the exercise of his discretion, the trial
judge must come to his or her own conclusion as to the correctness of the
Registrar’s decision.
Promotions C.D. Inc. v. Sim & Mcburney [2008] FC
I
Standard of review
H New evidence + determinative nature  standard of correctness
Scott Paper Ltd. v. Smart & Biggar [2009] FCA
I
Standard of review
H The subject matter is one in which the Registrar and his delegated hearing
offices have special expertise, and the legal questions involved are squarely
within that area of expertise
Jose Cuervo S.A. de C.V. v. Bacardi & Co. [2009] FC
I
Standard of review
H If the additional evidence would have materially affected the Registar’s
decision  correctness; otherwise reasonableness.
Chapter 4: Selecting a Registrable Mark
Required elements of an application for registration of a TM – s. 30
 (a) Statement Re the wares or services in association with which the mark
has been used or proposed to be used
 (b) if prior use, the date of prior use
 (c) if no prior use in Canada but made known
o the name of the country of the use
o the date and manner of making the mark known in Canada
 (d) if registration based on foreign registration, particulars of foreign
registration; if not use or made known in Canada, the name of the country of
use
 (e) if a proposed mark, a statement of intent to use the mark
 (f) if a certified mark, particulars of the defined standard
 (g) the address of the applicant
57


(h) a drawing for a design mark
(i) a statement of entitlement
A registrar will examine:
 conformity with the TMA
 registrability
 title conflicts with pending applications
Application procedure
 tendering application
 registrar examines application
 applicant notified of any objections and can:
o argue
o tender evidence
o amend application
 s. 35: a registar can require an applicant to disclaim a portion
of the mark as is not independently registrable, e.g., personal
names or descriptive terms
 once approved by the Registrar, application advertised in the TMs Journal
 any interested person may oppose pursuant to s. 38 on the ground specified
by s. 38(2):
o (a) it does not conform with s. 30
o (b) the TM is not registrable
o (c) the applicant is not the person entitled to register the TM
o (d) the mark is not distinctive
 applicants and opponents can adduce evidence and present argument to the
Registrar, who will make the decision.
 Pursuant to s. 56, appeal can be made to FC
 Once an application is allowed, the mark is entered on the Register of the
TMs.
1. Establishing the Registrability of Marks: Section 12
Registrability is a pre-condition of entitlement to register – s. 16
Registrability: Relative Bars and Absolute Bars – s. 12
 A TM is registrable if it does not offend one or more enumerated bars to
regitration
 Relative bars – s. 12(a) and (b)
o They may be overcome by additional evidence of acquired
distinctiveness
 Absolute bars
o They preclude registration notwithstanding the capacity of the mark
to distinguish source in practice
58
Note: a TM must be a TM within the definition of s. 2 of the TMA in order to be
registrable.
(a) Names or Surnames: s. 12(1)(a)
A TM not prima facie registrable if a “word that is primarily merely the name or the
surname of an individual who is living or has died within the preceding 30 years.”
 The name of a person is not regarded as a good mark because it lacks
distinctiveness.
 This can be overcome by the acquisition of distinctivenss pursuant to s.
12(2).
 Rationale: any trader ought not to be precluded from using his or her own
name by virtue of another’s TM
o S. 9(i)(k) and (l) offer some protection to individuals against the use
of marks that falsely suggest a connection to them personally
Questions asked under s. 12(1)(a)
 Whether words which are in fact surnames will be denied registration even
where they are not necessarily recognized as such by the general public
o The words primarily merely are designed to address situations where
the mark for which registration is sought is both a personal name and
a word with independent meaning
 Whether marks that look like personal names will be denied registration
under s. 12(1)(a), even if no one going by that name can be found
s. 12(1)(a) test:
 Whether a surname of a living person or a person who has died within the
preceding 30 years?
o Evidence of phone directories proves a surname
 Whether a Canadian of ordinary intelligence and ordinary education in
English or French would think of the mark as a primarily merely surname or
a brand/TM?
o Whether a given surname is “merely” a surname?
 Dictionary meaning establish it is not merely a surname
o Whether a given surname is primarily merely a surname?
 The response a person of ordinary intelligence and ordinary
education in the English or French in Canada
 If equally significant, then not primarily merely a surname
o If a coined words with rarely used as a surname, thus no meaning in
the English or French language, then ask whether a Canadian or
ordinary intelligence and ordinary education in English or French
would think of the mark as a surname or a brand or a TM?
 It seems the court tends to find they would think both. So s.
12(1)(a) is not met.
59
Standard Oil Co. v. Canada (Registrar of Trade Marks) [1968] Can Ex. Ct.
F
FIOR in association with “direct reduction iron ore”
 The word “FIOR” has no dictionary meaning, and
 The word “FIOR” appears in the directories of Toronto and Montreal as a
surname.
I
Whether FIOR is registrable
H  FIOR appears in directories in Canada as a surname  the balance of
probability is that FIOR is the surname of one or more individuals in
Canada who are living.
o Up to the applicant to rebut; if the applicant fails to do so, then the
balance of probability established
 For the purpose of TMA, there are at least three classes of words:
o Dictionary words, names, and invented words
 Since it is established that FIOR is a word that is the surname of an
individual who is living, the next question is whether FIOR is primarily
merely such a word.
 The mark was invented by the applicant by combing the first letters of each
of the words “fluid iron ore reduction” As far as the applicant was
concerned, FIOR was a word invented by it for use as its TM in this
connection. So FIOR is not “merely” the surname of a living person because
it also has existence as a word invented by the applicant or persons
working for it for TM purposes
 Next Q: whether FIOR is primarily the surname of a living person: whether
it is the chief, main or principal character of FIOR that of a surname or it is
principally or equally a word invented to be used as a TM?
 The standard is the response of the general public of Canada to that word
 In this case, a person in Canada of ordinary intelligence and of ordinary
education in English or French would be just as likely, if not more liklely, to
respond to the word by thinking of it as a brand or mark of some business
as to respond to it by thinking of some family of people: it is unlikely that
the general public would think of there being an individual having it as a
surname.
 Solely by reference to the existence of a dictionary meaning of a proposed
TM would make practically every invented word vulnerable to attack as a
proposed TM by anyone assiduous enough to pursue his searches for its
use as surname somewhere in in the world. S. 12(1)(a) was not invented to
eliminate the creation of new words for purposes of proposed TMs.
Canada (Registrar of TMs) v. Coles Book Stores Ltd. [1972] SCC
F
COLES in association with printed publications
I
Primarily merely a surname
H  The word Coles is a surname that is well-known to the general public of
Canada
 Any person of ordinary intelligence and of ordinary education in English or
French would respond to the TM COLES by think of it as a surname.
60


The dictionary meanings of the words COLES and COLE are largely obsolete
The reason for the introduction of s. 12(1)(a) lies in the necessity for
avoiding the niceties of application to which the old wording had given rise.
It is essential that any enquiry into registrability must now begin with the
new words themselves – Is the primary (chief) (principal)(first in
importance) meaning of the word merely (only)(nothing more than) a
surname?
Elder’s Beverages (1975) Ltd v. Canada (Registrar of TMs) [1979] FTD
F
ELDER’S in association with non-alcoholic beverages
 The mark has been used since 1921
I
Primarily merely a surname
H  The basis of the prohibition of the mere surname of an individual as a TM is
that, though a surname may serve to distinguish the wares of all persons
taken collectively bearing that surname from the wears of others bearing
different surnames, it does not distinguish the wares of an applicant from
the wares of other persons bearing the same surname.
 The introduction of primarily merely is to avoid the existence of a
dictionary word resulting in words such as wall and other common
surnames being registered as TMs without evidence of their having
acquired secondary meaning whereas persons with rare surnames that do
not appear in dictionaries would be denied registration.
 If common English words, then the question  is the primary meaning of
the word merely a surname?
 In this case, there are telephone directory entries of 21 major cities in
Canada, listing 354 persons bearing the surname Elder
 So Elder is a surname.
 Elder also has dictionary meaning, so Elder is not merely a word that is a
surname of an individual.
 The next questions is whether it is primarily such a word?
 Elder’s being a surname and being a dictionary word are equally significant.
Therefore it cannot be said that the word is primarily a surname.
 A person of ordinary intelligence and ordinary education in the English
language would not assign to the word “elder” a more dominant
characteristic either as surname or as a dictionary word.
 Old case law stated: a word susceptible of being a surname expressed in the
genitive is not a surname.
 But it is an anomaly that the prohibition against the registration of a word
that is primarily merely a surname as a TM can be circumvented simply by
adding an apostrophe at its end.
 The use of the possessive case of a surname emphasizes and is consistent
with the purpose of a TM which is to identify the source of the wares
associated with the TM as being a particular trade provided always that the
prohibition of a surname as TM based on lack of distinctiveness is
overcome.
61
Galanos v. Canada (Registrar of TMs) [1982] FTD
F
GALANOS in association with perfume etc.
 Five listings in phone directories
 Surname of the applicant
 Registered in the US
 Has meaning in Spanish
 Large number of Spanish-speaking population
I
Primarily merely a surname
H  Foreign words may be an additional category of words added to the names,
invented words, and dictionary words; it may well be a subcategory under
invented words
 There would be no impediment to the registration of a foreign word, the
meaning of which is not know to the general public of Canada even though,
to one section of the population of racial stock neither French nor English it
might be known.
 A foreign word which it not the name of the wares and the meaning which
is not known in Canada would fall under the third category, i.e., invented
words. It may independently constitute the forth category.
 The fact that the applicant bears the surname does not mean the
application should be rejected outright
 The question is whether the mark is a surname?
 In this case, it is a surname but rarely used. But the fact that it is a rare
surname is not determinative of the issue. The question is whether the
word has other connotations other than as a surname.
 The word has no meaning to the French or English speaking persons and
has no meaning in French and English.
 Being a foreign word without meaning in English or French it is a coined,
fancy or invented word sought to be used as a TM. The question is would
the response of the general public of Canada to the word Galanos be that it
is a surname of one or more individuals or it is a brand or TM of some
business.
 A Canadian of ordinary intelligence and education in English or French
would be as likely, if not more likely, to respond to the words by thinking of
it as a coined, fanciful or invented word used as a brand or TM of a business
as by thinking of it as primarily merely the surname of an individual.
J
Appeal allowed, matter referred back to the registrar
Gerhard Horn Investment Ltd. v. Canada [1983] FCTD
F
Marco Pecci in association with women’s apparel
I
Primarily merely a surname
H  There has been no impediment to the adoption of the name of a fictitious
person as a TM and the names of fictitious persons have not been
precluded from registration as TMs, for the individual does not include an
imaginary person.
 The impediment to the registration of a fictitious name as a TM is that the
62





choice of such a name happens to coincide with a name borne by someone
now living or was borne by someone who has died within the last 30 years.
The first question should always be asked: whether the word or words
sought to be registered in the name is the name or surname of a living
individual or an individual who has recently died.
Only when the question is answered in the positive, consideration needs be
given to the question whether the TM applied for is primarily merely a
name or surname rather than something else.
It is not enough that the fictious name may resemble the name that could
be borne by an actual person or might be though by the public to b e names
or surnames. That thought only becomes material when it is established by
evidence that there is a living person of the name or surname in question. –
there must be evidence that an individual bearing that name is living or
recently died
the mark consisting of two or more words should be examined as a whole
the remote probability that there will be a Marco Pecci somewhere in the
world in the future is subject to the de minimis rule
Practice Notice – Paragraph 12(1)(a) of the Act – Name or Surname
 if a name or surname  whether it is in fact the name or surname  at least
25 entries needed
  what would be the response of the general public in Canada to that word
 where the name or surname is famous, objection may be raised without 25
entries in Canadian directories
 apply to pluralized surnames and surname in the possessive form  25
entries needed
Note:
 the practice notice avoids the absurdities that a single living person or
recently deceased individual bearing the name for which registration is
sought would prevent the registration.
 The wording of s. 12(1) still requires only one and legislation takes
precedence over practice notice
o It seems absurd given the fact that the TMA is concerned with TM’s
ability to distinguish source, then why this factual happenstance
should be more determinative of registrability than the likely reaction
of the general public to the mark?
 Once the opponent established that an individual bearing that name had
recently died, the nous was on the applicant to show that the mark would be
viewed by the average Canadian consumer as something other than
primarily merely the name of an individual.
(b) Clearly Descriptive or Deceptively Misdescriptive: Pargaraph 12(1)(b)
s. 12(1)(b) – clearly descriptive or deceptively misdescriptive
 A mark is registrable if it is not “whether depicted, written or sounded, either
clearly descriptive or deceptively misdescriptive in the English or Frechn
63

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.”
Rationale:
o Lack of inherent distinctiveness: those marks are inherently nondistinctive. Marks that fall afoul of s. 12(1)(b) serve primarily to notify
consumers of the characteristics or qualities of a product as opposed
to its source. By their nature, such marks could identify any wares or
services sharing the same character or quality and so are ill equipped
to identify a single source.
o Allow traders to compete on equal footings: the other traders
should be free to accurately describe the wares or services that they
offer without being impeded by anther’s monopoly over the use of a
common word or one intimately connected to those wares or services.
In this regard, the bar is to protect the ability of other traders to
compete on an equal basis in the market.
o Policy – to prevent misdescriptive marks misleading the public
 Note: s. 12(2) permits the registration of misdescriptive marks
suggests the overriding concern is one of the capacity to
distinguish.
Clearly descriptive
 Marks that are plainly or easily understood as descriptive are barred
 ONCE-A-WEEK
o Clearly descriptive
 GRAB-IT in association with hand duster
o NOT clearly descriptive
 DUST GRABBER for hand duster
o CLEARLY DESCRITIVE
Deceptively misdescriptive
 Registration of clearly or self-evidently misdescriptive marks should be
permitted
 BLUE ORANGE for orange juice
o Regitrable for being clearly misdescriptive
Whether depicted, written, or sound
 Misspellings, compound marks and pictorial marks may also be caught by s.
12(1)(b)
 The meaning of the mark is to be determined from the perspective educated
and fluent in only English and French
Merely suggestive vs. Clearly descriptive or deceptively misdescriptive
 GRO-PUP in association with dog food Kellogg Co. v. Canada
o NOT descriptive
64

HELPING DOGS LIVE LONGER LIVES in association with dog food Quaker
Oats Co. of Canada Ltd. v. Ralston Purina Canada Inc.
o Descriptive
s. 12(1)(b) can be overcome by s. 12(2)
Abercrombie & Fitch Co. v. Hunting World, Inc. [1976] US CA
I
Spectrum of distinctiveness
H  Four different categories of terms WRT TM protection:
o Generic: one that refers, or has come to be understood as referring,
to the genus of which the particular product is a species.
 Generic marks cannot be save by acquired secondary
meaning
o Descriptive: A term is descriptive if it forthwith conveys an
immediate idea of the ingredients, qualities or characteristics of the
goods
 Common descriptive: exclusive right must be denied
otherwise a monopoly would be granted
 Merely descriptive: the law strikes the balance between the
hardships to a competitor in hampering the use of an
appropriate word and those to the owner who, having
invested money and energy to endow a word with the
goodwill adhering to his enterprise, would be deprived of the
fruits of his efforts
o Suggestive: a term is suggestive if it requires imagination, thought
and perception to reach a conclusion as to the nature of goods.
 Protection should be accorded to marks that are neither
exactly descriptive nor truly fanciful
 There are many different ways to allude to a product;
therefore, there is no undue hardship imposed on other
traders.
o Arbitrary or fanciful: inherently distinctive – unrelated and having
no direct or substantive connection to the product
 Note:
o A term that is in one category for a particular product may be in a
different fro another
o A term may shift from one category to another in light of different
usage through time
o A term may have one meaning to one group of users and a different
one to others
o The same term ay be put to different uses WRT a single product
Registrable:
 Descriptive marks which acquires secondary meaning
 Suggestive marks
 Fanciful/arbitrary marks
Unregistrable:
65


Generic
Descriptive
(i) Descritpive or Misdescriptive of Place of Origin
American Waltham Watch Co. v. United States Watch Co. Supreme Judicial Court of MA
[1899]
F
WALTHAM WATCH(ES) vs. Waltham the place
I
Whether the D should be enjoined against using the word Waltham upon
plates of its watches without accompanying statement which shall distinguish
clearly its watches from those made by the P.
H  The P should not lose custom by reason of the public mistaking another
manufacturer for it. On the other hand, the D should be free to manufacture
watches at Waltham, and to tell the world that it does so. A line must be
drawn between these two competing interests
 The P, merely on the strength of having been the first in the field, may put
later comers to the trouble of taking such reasonable precautions as are
commercially practicable to prevent their lawful name and advertisements
from deceitfully diverting the P’s custom.
Note:
s. 20 provides for a defense to an alleged infringement on a registered geographical
name.
 Bona fide use of the geographical name of his place of business; or
 Bona fide use of accurate description of the character or quality of his wares
or services
 In such a manner as is not likely to depreciate the value of the goodwill
attaching to the TM
Pacific Lime Co. Re. [1920] Can. Ex. Ct.
F
BLUBBER BAY LIME in association with limes
 blubber bay is a small place in BC
I
Whether the mark is registrable?
H Where a word is strictly geographical according to its ordinary meaning, and
where it is not calculated or likely to deceive, it may still be registered in a
property case provided that a secondary meaning has been acquired.
J
Registration allowed
T.G. Bright & Co. v. Canada [1985] FCTD
F
CASABLANCA in association with wines
 Casablanca the largest city in Morocco and the wines account for onequarter of the agricultural revenue of Morocco
I
s. 12(1)(b)
H  The wines are produced in ON not in Casablanca, Morroco, so the TM was
not clearly descriptive of the place of origin
 Test: whether the general public in Canada would be misled into the belief
that the product with which the TM is associated had its origin in the place
66
J
of a geographical name in the TM.
 A geographical word is usually regarded as being clearly descriptive or
deceptively misdescriptive of the place of origin and because of that any
person in a particular locality is at liberty to apply the place of origin to his
wares unless the word has acquired a secondary meaning and becomes
distinctive of the person’s wares.
 If the product made in that place + use of the geographical name  clearly
descriptive of the place of origin
 If the product not made in that place + use of the geographical name  may
be deceptively misdescriptive subject to common sense exception
o If the general public knows that it cannot be true  not deceptively
misdesceptive
 The proposed labeling would not suffice to identify the product as Canadian
wine so as to eliminate any likelihood of confusion in the minds of the
purchasing public that the product was not a brand of wine emanating from
Casablanca Morocco.
CASABLANCA is deceptive misdescritpive of the origin of wares in the context
that the Canadian consumer would be likely to recognize it as the name of the
North African city and automatically assume the wine came from there.
Consorzio del Prosciutto di Parma v. Maple Leaf Meats Inc. [2001] FCTD
F
PARMA in association with prosciutto etc.
 Mark has been used in Canada since 1958
 PARMA a place in Italy and had been used as a TM in Italy since 1963
 A region known for prosciutto
I
s. 12(1)(b)
H  At the time of the registration, there were not many Canadians exposed to
thee idea that Parma was a place in Italy famous for meat products
 To determine whether PARMA is deceptively misdescirpitive, the question
is whether the general public in Canada would be misled into the belief that
the product with which the TM is associated had its origin in the place of a
geographical name in the TM.
 The consumer is a consumer of ordinary intelligence and education.
 And the case should be evaluated in the context of the year in which the TM
was registered.
 At the time of the registration, ordinary consumer would have assumed
that prosciutto bearing the “Parma” mark originated from Parma, Italy, and
was produced as per the standard regulated by the Consorzio.
 A majority of Canadians in the present day do not recognize that Parma is a
region in Italy, nor do they associate the word Parma with meat products.
 Canadians cannot be deceived by the use of the mark in 1971, because
according to the survey evidence, the majority of Canada do not recognize
Parma as a source of ham or pork products, nor do they associate Parma
meat products with Parma Italy.
 Although the Act protect consumers from deception as to the source and/or
67
quality of wares available in the market place, the Act also seeks to protect
the rightful owners of TMs from unfair competition.
(1) The test for whether the "Parma" trade-mark was deceptively
misdescriptive in 1971 was whether the general public in Canada would be
misled into the belief that the product with which the trade-mark was
associated had its origin in the place of a geographic name in the trade-mark. A
consumer of ordinary intelligence and education in 1971 would not have
assumed that prosciutto bearing the "Parma" mark originated from Parma,
Italy, and was produced according to the standards regulated by the Consorzio.
Given this finding, the argument that "Parma" should be expunged because
geographical names are considered "common property" and that "Parma" is
probably a word that other traders would choose to use in association with the
sale of meat products, did not hold.
The delay in bringing this proceeding had some weight, but was not
determinative. An earlier proceeding challenging the mark on the ground that it
was not being used by the owner could not be viewed as some sort of notice to
the respondent that proceedings would probably be brought [page538]
concerning the mark's validity.
Although protecting the consumer from deception as to the source and/or
quality of wares is one of the aims of the legislation, so too is protecting trademark owners from unfair competition. This policy is part of the larger goal of
ensuring stability in the marketplace, allowing the owners of registered trademarks to invest in building up goodwill surrounding their valid and registered
trade-marks. This is particularly important in a case such as this where the
respondent and its predecessors in title have been using the trade-mark for
over 26 years.
(2) The test for distinctiveness is whether or not the ordinary consumer in the
market for that type of product would likely be deceived as to the source of the
product. The respondent's trade-mark carries a presumption of validity, and the
onus is on the applicant to show that the mark is not distinctive. Distinctiveness
must be measured in the Canadian marketplace alone. Survey evidence
regarding the distinctiveness of a trade-mark should usually measure the
recognition of that mark by the general consumer and not by specialized
consultants. Much of the applicant's evidence came from people with a special
knowledge of the Italian food industry in Canada and in Italy. Such evidence
was not representative of the knowledge held by the typical Canadian consumer
of average intelligence and education. Also, the applicant's studies were done to
demonstrate that the "Parma" trade-mark was deceptively misdescriptive.
Therefore, such evidence had no bearing on the issue of distinctiveness.
The repeated assignment of the mark did not lessen the respondent's rights.
The trade-mark was acquired by the respondent and various predecessors in
title through a valid process of succession which traces the ownership of the
trade-mark back to its original owner. The applicant failed to demonstrate that
the trade-mark was ever separated from its goodwill as a result of any of these
acquisitions and thereby failed to show that the trade-mark lost its
distinctiveness through this succession of ownership.
The applicant also argued that the respondent's "faux-Italian" packaging, which
68
was used in association with the "Parma" trade-mark, eroded the
distinctiveness of the mark. The "get-up" associated with a trade-mark is
irrelevant where an applicant seeks expungement.
The use of packaging, i.e. the "faux-Italian" get-up, is relevant only with
respect to the question of deceptive [page539] misdescriptiveness, not to the
question of distinctiveness of the trade-mark.
Sociedad Agricola Santa Teresa Ltda. C. Vina Leyda Ltda [2007] FC
F
LEYDA in association with wine produced in Leyda Valley in Chile
 Opposed by two other wine producers in the same valley
I
s. 12(1)(b) – clearly descriptive
H  The fact of whether a name signifies a geographical area and whether that
area produces wine are not contingent upon a government decree.
 Leyda is a place in Chile where wine was produced at the time the
application was made.
 For s. 12(1)(b), at least as far as the place of origin is concerned, is not
dependent on the knowledge, or lack thereof, of the average Canadian
consumer.
 A shrewd trader should not be permitted to monopolize the name of a
foreign wine district in Canada by registering it as a TM.
 If the registration were to stand, it would mean that the applicants, wine
producers from Leyda Valley, would not be able to refer to that fact on their
labels, or in their promotional literature. They might be limited to calling
their wine Chinlean red or white. This would give the applicant an unfair
advantage. Geography is one of the important considerations in assessing
whether one should try a new wine. Producers from a specific area want to
promulgate their area in the belief that their wine is superior to the wine of
that country as a whole.
 S. 11.14 of the Act prohibits a person from adopting a protected
geographical indication as a TM. Lising does not appear to take the
knowledge of the average Canadian consumer into account.
 A TM not otherwise registrable because it is descriptive of the place of
origin of the wares is nevertheless registrable if it had become distinctive at
the date of the application.
 In the present case, the evidence is that Leyda had not been used in Canada
in association with wine at the time the TM was made and had not become
distinctive.
R
Clearly descriptive in terms of place of origin needs not taken the knowledge of
the general public of Canada into account.
Rothmans Benson & Hedges Inc. v. Matinee Co. [2008] TMOB
F
Bourgogne and Burgundy in association with tabacco products
 Based on proposed use
I
s. 12(1)(b)
H  First step: actual place of origin determined
69


o The products are not produced in Burgundy, so no grounds saying
that mark is clearly descriptive of the place of origin of the wares
Second step: whether the mark can be found deceptively misdescriptive of
the place of origin of the wares
o Evidence does not show that Burgundy is generally known or
recognized as a locality connected to the wares.
o The dictionary meaning of Burgundy or Bourgogne does not refer in
anyway to tobacco or the like
o The proper approach in determining whether a TM in its entirely is
deceptively misdescriptive is whether the general public in Canada
would be misled into the belief that the product with which the TM
is associated had its origin in the place of a geographical name in the
TM.
o Even it is shown that a geographical region is well-known for
producing one type of product, a mark containing that region may
still be registered in relation to other products.
The intent of the prohibition in s. 12(1)(b) against geographical names is to
prevent a person from acquiring a monopoly on a word that is generally
recognized as a locality connected to the wares or services at issue.
Great Lakes Hotels Ltd. v. Noshery Ltd. [1968] Can. Ex. Ct.
F
Penthouse in association with restaurant and catering services and boxes etc.
I
s. 12(1)(b)
H  Penthouse denotes premises located upon the roof of a building, or on the
topmost floor thereof; often denotes of a luxurious nature
 Whether or not the word Penthouse describes their character or quality or
their place of origin
 the word penthouse describes the location where the on premises catering
services supplied by the applicant to the public are performed, but the
question is whether or not it describes the services there performed
 neither would the word appear to be clearly descriptive or deceptively misdescriptive of the nature or quality of the wearers in Association with
which the mark is used.
 The word penthouse is at the utmost suggestive of the character or quality
of the services rendered. As the current usage of the word penthouse is
referring to premise located on the roof of building or on the topmost floor
thereof that a restaurant so described would be there located. That
location, because of its lack of ready access, might well convey an idea of
exclusiveness with meals being served word diners could enjoy a leisurely
repast with a panoramic view associated with height and consequently an
excellent class of food with prices commensurate with the quality of the
food served in such an exotic and glamorous environment.
 It is not sufficient to render the trademark not registrable as it has been
held in several instances that near suggestiveness should not deprive the
Mark of register ability even where a word used to skillfully alludes to the
70







wares in association with which it is used unless it is clearly descriptive of
their character or quality.
The word penthouse describes the location of the restaurant where such
services are performed and does not, refer to the services there performed.
Any covert allusion to the character or quality of those services it's only
remotely suggestive thereof.
In terms of the off-the-premises catering, such suggestiveness is not
present. The services so performed would be done at a place far removed
from the applicant on premise service. There would be no suggestion that
the service given we have any relationship to the location of the applicant's
on premise service on the rooftop and whatever implications that might be
inferred from such circumstances would no longer prevail.
The use of the word penthouse in association with wares does not suggest a
feature or an essential peculiarity of those wearers.
The prohibition in section 12(1)(b) is directed against the word that
indicates the place of origin of the services or wares. The word must signify
some relationship of the wares to the place to render it not registrable as a
trademark. To be invalid the name must have been given to an article by a
trader to acquire the benefit of the well known and generally recognized
connection of the article with the locality.
The name of the place of business or factory, however, is not necessarily
descriptive of the place of origin of wares or services unless it can be said
that such a name is indigenous to those wares and services.
The word penthouse does not convey any meaning that has a direct
relationship with food, catering or restaurant services.
In any context relating to food the word penthouse in its modern usage
appears to be meaningless
(ii) Descriptive or Misdescriptive of Character or Quality
Provenzano v. Canada [1977] FCTD
F
KOLD in association with beer
I
s. 12(1)(b) – character or quality
H  To be objectionable as descriptive under section 12(1)(b) the word must be
clearly descriptive and not merely suggestive, and for a word to be clearly
descriptive, it must be material to the composition of the goods or product.
 To be mis-descriptive, the word must somehow relate to the composition of
the goods and falsely or erroneously describe something which is material
or purport to qualify something of material to the composition of the goods
when in fact it is not.
 The adjective cold, when applied to a beer, is not in any way descriptive of
the intrinsic character or quality of the product. Unlike such food products
as ice cream, frozen foods, ices or juices or appliances such as refrigerators,
stoves or toasters, the temperature at which it might or might not be
delivered sold or used has nothing to do with the character or quality of the
71
R
product itself.
 The word cold in such a case can refer only to the state at which the
product may or may not be sold or consumed and not to any intrinsic
quality or characteristic of the product.
 Not descriptive.
 As to the mark being misdescriptive, not only must it referred to the
material composition of the beer, but even if misdescriptive it must be
deceptively misdescriptive.
 One would have to be deep-fried of ordinary intelligence not to realize that
the temperature at which it is received depends solely and entirely on the
temperature at which it was stored immediately before delivery and not on
any characteristics of the beer itself. No one could possibly believe that the
beer, by reason of its composition or of some particular characteristic,
would remain cold would at all times regardless of how it is stored
To be descritpive or misdescriptive of the quality or characteristic, it must be
descriptive of the intrinsic quality or characteristic of the products.
A. Compound Marks
Pepsi-Cola Co. v. Coca-Cola Co. [1939] SCC
F
Cola in association with cokes
I
s. 12(1)(b) compound marks
H  The fact that there's no evidence in the case that an extract or ingredient
from either cola nuts or or coca leaves form any part of the formula from
which the plaintiff's beverages made.
 It is unlikely the public who buy and consume the beverage ever think in
terms of either coca leaves or cola nuts.
 It reasonable to presume that the ordinary consumer thinks of coca as a
mere corruption of the word cocoa or cacao and might not unreasonably
expect that the beverage contained something up the product we all know
as cooa.
 A trader join the words into a compound which written in a peculiar script,
constitutes a proper treat Mark
 descriptive names may be distinctive and vice versa.
 If there ever was any legitimate grounds for impeaching the registration,
there has been such a long delay and acquiescence that any doubt must
now be resolved in its favor. It would be a matter of grave commercial
injustice to cancel the registration that has to would since 1905 and which
admittedly has become widely used by the plaintiff.
R
Basic pt when put those two words together creating another meaning, not
every compound term registrable but a better chance, furthered by use of a
graphic element. Need something more than the descriptive term
Pizza Pizza Ltd. v. Canada [1982] FCTD
F
Pizza Pizza in association with pizza
72
I
H
s. 12(1)(b) – compound marks
 the expression pizza pizza is not a linguistic construction that is part of
normally acceptable spoken or written English. Duplication is well
established as a method of naming commercial firms, repetition of the word
has become while established, accepted and understood as indicating trade
names or trademarks of commercial enterprises.
 The applicant have in fact coined the phrase.
 The court is satisfied that the proposed a trademark, having no specific
descriptive connotation, is capable of distinguishing the wares of the
applicant from the wearers of others.
 The words pizza pizza together do not go together in a natural way and the
court is satisfied that they do not have a descriptive meaning.
 The words are capable of acquiring the specified meaning as a trademark
Home Juice Co. v. Orange Maison Ltee. [1970] SCC
F
Orange Maison in association with orange juice
 Maison – made at home and of good quality in French
I
s. 12(1)(b) – compound marks
H  The meaning of the word in other French-speaking countries should be
considered, otherwise to serious consequences would follow.
 A shrewd trader could monopolize a new French expression by registering
it as a trademark as soon as it started being used in France for in another
French-speaking country and before it could be shown to have begun being
used in Canada.
 The language in section 12 does not authorize such a distinction. It refers to
a description in the English or French language. Each of these 2 languages is
international. When they are spoken of in common parlance they are
considered in their entirety and not as including only the vocabulary in
current use in this country, a vocabulary that is extremely difficult to define
especially in these days when communication media are no longer confined
within national boundaries.
 In this case, the trademark is composed of 2 French words. It is an explicit
description. The commission of the words jus de in no way prevents the
word or range from being descriptive of the character of the wares, because
those words are clearly understood to through the association with a liquid
product. The word Mason does place to clearly becomes an adjective
descriptive of quality.
 When the meaning of the trademark is analyzed in respect of the goods to
which it is affixed, the 1st word is an elliptical description of their character
and the 2nd an explicit description of their quality.
B. Elliptical Marks
S.C. Johnson & Son Ltd. v. Marketing International Ltd. [1979] SCC
F
OFF! In association with insects repellant
73
I
H
s. 12(1)(b) – compound marks
 In this market is an elliptical use of the word in association with an insect
repellent and therefore in that context, it is descriptive of the wares or of
their effect. In applying to register this trademark, P was in effect claiming a
monopoly for the use of a common word of the language, a word commonly
used in connection with a variety of wares in related categories all
exhibiting the common purpose of avoiding forgetting read of something.
The variety and number of trademarks ending with off on the register,
show its widespread use in that sense.
 No one could have an exclusive proprietary right in relation to the word off
as supplied to an insect repellent.
 One has to look at the word not in its strict grammatical significance, but as
it would represent itself to the public at large.
 There is no substantial difference between Buggzoff and Bugg Off, and
insecticides can not be considered as in a different category of wares from
insect repellents. The fact that Bugzoff has been abandoned cannot alter
that situation. If it was not confusing with OFF! Because it was completely
dominated by bug this must be equally true of Bugg Off.
C. Composite Marks
General Housewares Corp. v. Fiesta Barbeques Ltd. [2003] FCTD
F
GRILL GEAR & Design in association with barbeque accessories
I
s. 12(1)(b) – composite marks
H  There's no evidencecbut extremely sporadic use of the terms grill gear
referred to barbecue equipment. There is no evidence that allowing this
subject Train Mark would deprive traders of some right to describe their
wares in a way they already do or might wish to do.
 As the design Mark, it is not accurate to say that, when sounded, it is either
clearly descriptive or deceptively misdescriptive of the character or quality
of the wares or services in association with which it is used or proposed it
to be used. At most, it is only the verbal component of the subject to
trademark that could be sounded in this way.
 The verbal components of the subject to trademark and the flame motif
have to be looked at as a whole and clearly give it sufficient distinctive
elements to distance it from any terminology by trader might wish to use to
describe wearers of a similar kindAsNot
Note: overruled by Best Western
Best Western International Inc. v. Best Canadian Motor Inns Ltd. [2004] FCTD
F
BEST CANADIAN MOTO INNS & design in association with motels if
I
s. 12(1)(b) – Composite marks
H  The decision in grill gear case ignored generally applicable principles of
statutory interpretation in considering the words of section 12(1)(b)
 it was open to Parliament to provide an exception to section 12(1)(b) the
74
respect of design marks that include words that are a dominant feature of
the marks.
Practice Notice – s. 12(1)(b) prohibition
 A composite mark, When sounded, is not registrable pursuant to section
12(1)(b) of the Act if it contains word elements that are:
o 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
condition of or the persons employed in their production or of their
place of origin; and also
o The dominant feature of the Mark
 Determination of Whether words are The dominant feature of a composite
mark, the word dominant means:
o Dominating, prevailing, most influential
o Prominent, overlooking others
 In determining whether a word element is the dominant feature of Mark,
examiners will consider whether a prospective Consumer would, as a matter
of 1st impression, perceive the word element as being the most influential or
prominent feature of the Mark.
o The Mark should be looked at in its totality, and compare the visual
impression created by the word element of the mark to the visual
impression created by the design element of the mark. Where the
design element of the mark does not stimulate the visual interest, the
word element will be deemed dominant
o The size of the words and the size of the design, the font, style, color
and layout of the lettering of the words, as well as the inherent
distinctiveness of the design element
o The composite marks which include design elements added to clearly
descriptive words, Are not registrable if the design elements are mere
embellishments of the letters comprising the words and cannot be
disassociated from the words themselves
o Only one element in a trademark can be dominant. In situations where
the word element and the design element are considered to be equally
influential or prominent in a trademark, the office considers that
neither can be dominant feature of the trademark
o when the word element also composite Mark is not the dominant
feature off the mark, The registrar considers.the Mark in its totality
cannot, when sounded, be clearly descriptive or deceptively
misdescriptive and contrary to section 12(1)(b).
(c) Acquired Distinctiveness: Subsection 12(2) and Section 32
s. 12(2) – proof of acquired distinctiveness overcomes relative bar to registration
 An applicant for registration of the trademark that is prima facie
unregistrable By virtue of section 12(1)(a) or (b) Can provide the registrar
75
with evidence demonstrating acquired distinctiveness/secondary meaning
and thereby obtain registration subject to section 32.
s. 32

Section 32(1] permits the applicant to furnish evidence “By way of affidavit
or statutory declaration establishing the extent to which and the time during
which the trademark has been used in Canada and with any other evidence
that the registrar may require in support of the claim”.
 Under subsection 32(2), A registration permitted in light of this evidence of
distinctiveness will be restricted by the registrar to the wearers or services
in association with which the trademark is shown to have been so used us to
have become distinctive and to the defined territorial area in Canada in
which the trademark is shown to have become distinctive.
Note: The result is an important exception to the general rule that registered
trademarks are national in scope and effect.
A heavy burden of proof and the relevant date is the date of application for
registration
Carling Brewaries Ltd. v. Molson Cos. [1984] FCTD
F
Canadian in association with beer
I
Proof of acquired distinctiveness
H  Distinctiveness due to a secondary meaning was established following a
heavy onus of proof.
 "Canadian" failed to be registered for beer only because Molson failed to
discharge the "very heavy" onus of proving distinctiveness for it. therefore
not registrable
 Registrar held that distinctiveness had been established; this was
overturned by federal court
 “Canadian” falls within the meaning in s.12(1)(b) and can only be saved if
it fits within s.12(2)
 The onus falls on the party who seeks to rely on s.12(2) is an exception
to gen rule that descriptive marks are not registrable, where there is an
advantage onus is on you to show there is distinctiveness the day file
application.
o You have to be showing distinctiveness at the date when the
application is filed for S.12(2)
o Very heavy onus, especially considering nature of the Mark
“Canadian” means many things
o Canadian is descriptive
o In conjunction with “beer” it can be descriptive of any beers from
Canada
 It had to be shown that the TM would be indicative of a specific beer
produced by Molson
 Evidence brought forward  Marketing analyst brought but the court was
not impressed by the methods used to bring the statistical evidence.
76
Marketing expert unsatisfied that would mean what Molson said it would
mean. Opponent can benefit from using this type of evidence. Showed that
Canadian was used to mean domestic beers as opposed to imported beers.
This was serving the purpose of distinguishing type of product but not a
particular manufacturer.
Carling O’Keefe Ltd. v. Molson Cos. [1984] FTD
F
Golden in association with beer
I
Proof of acquired distinctiveness
H  Less than 5% of the population of Ontario 19 years of age and over
associates the word golden in the context of the beer or ale with the color of
beer.
 Less than one in 10 in Ontario associates the word golden with anything
related to color.
 Over 40% of the population of Ontario 19 years of age and over associate
the word golden in the context of beer with the word Molson.
 Advertising dollars are not considered use within the meaning of the act;
nevertheless it can indicate that a considerable number of dollars have
been spent to make known the name Golden.
 A word can be nondescriptive and distinctive in Canada but not so in the
United States. The court, in considering whether the impugned expression
as clearly descriptive, must endeavor to put itself in the position of the airy
day user also wares.
 In assessing the register ability of a trademark, the court must look to the
1st impression which is made by that trademark on the minds of the
consuming public.
 Golden is not clearly descriptive or deceptively descriptive of the character
or quality of the brewed alcoholic beverages. The trademark Golden
actually distinguishes the wares of the applicant from the wares of others
and is adapted so to distinguish the wares of the applicant from the wares
of others, and accordingly is distinctive of the applicant.
John Labatt Ltd. v. Molson Cos. [1987] FCA
F
Golden in association with beer
I
Proof of distinctiveness
H  Once a descriptive word has acquired distinctiveness, it has, by definition,
lost its generic character when used in association with the wares or
services with which it has become identified; the acquired meaning distorts
the ordinary meaning.
 In the present case, Godin is a word one of whose primary meanings is to
describe a color that color is found in most of beer, including applicant's
beer.
 Golden, as the registrar found, is an adjective apt to describe when have the
characteristics or qualities of beer, namely, its color.
 Section 12(1)(b) prohibits applicant from obtaining a monopoly outfit. It
77
was error for the trial judge to use evidence of acquired distinctiveness,
which was nodding issue in the proceedings before him, to support a
finding that the word Golden was to be under student as having lost its
ordinary dictionary meaning in the proposed trademark.
Note: the issue before the trial judge was about whether Golden was
descriptive instead of being distinctiveness.
Molson wanted to avoid s. 12(1)(b) so that s. 32 will not be triggered otherwise the
registration of Golden will not be limited to ON.
Molson Breweries, A partnership v. John Labatt Ltd. [2000] FCA
F
Export in association with beer
I
 The relevant date for determining distinctiveness under subsection 12(2)
 whether distinctiveness must be established throughout Canada
 whether a exclusivity is essential to prove distinctiveness
H  By reason of section 12(1), a market that is clearly descriptive of goods is
not registrable. However, under section 12(2), if, by long use of the mark in
association with the goods, it has become distinctive of the applicant's
wares at the date of application for registration of the mark, such that the
clearly descriptive connotation of the trademark is subordinated to its
distinctiveness, the trademark may be registered.
 The standard of proof under subsection 12(2) is proof on the balance of
probabilities
 subsection 12 (2) does not require demonstrating the elimination of the
descriptiveness of a Mark.
 What the applicant under subsection 12 (2) must show is set to trademark
it seeks to register, although it may be descriptive, has acquired the
dominant secondary or distinctive meaning in relation to the wares or
services of the applicant.
Relevant date for s. 12(2)
 The date of filing an application for the registration
Whether distinctiveness must be established throughout Canada
 The legislation appears to contemplate the general registration throughout
Canada, subject, in certain circumstances, to restriction by the registrar to
define territorial areas where the evidence only supports distinctiveness
having been acquired in those areas
 the scene of section 32 in its entirety would seem to support the view that
territorially restricted trademarks are limited to cases to which subsection
12 (2) or section 13 apply. Subsection 32 (2) does not appear to be an
independent provision applicable to all trademark applications, but rather
only to those to which subsection 32 (1) applies, namely applications under
subsection 12 (2) or section 13.
 Applying subsection 32 (2) and the great lakes approach, if the applicant
can establish distinctiveness in Ontario and Quebec of its export market, it
will be entitled to registration under subsection 12 (2).
Whether exclusivity is essential to prove distinctiveness
78

While use of the St. Mark by others in association with similar wares is
relevant in determining whether a mark is in fact a distinctive, exclusivivity
not essential in proving distinctiveness will depend upon all the
circumstances. Well exclusive use of the market may be compelling
evidence of its distinctiveness, exclusive use is not a requirement to prove
distinctiveness.
Application to the case
 The word never appears alone but only in conjunction with the word
Molson or Molson’s on bottles or cartons. On the bottles, the words Molson
and Molson’s and Export are of the same size and of the same appearance.
Therefore, the extensive sales were advertising expenditures do not prove
that the word exported alone is distinctive of Molson’s beer.
 There's no doubt Molson Export is distinctive but here the applicant is
attempting to separate the 2 words by calling Molson a house-mark and
Export a TM. There is no significance of the distinction. In the advertising
evidence, the effort is to present the words Molson export and not export
alone.
 The fact that the opponent has made an application to trademark the word
Export is irrelevant to the case.
o The opponents application could be seen as an response to the
applicants application.
(d) Name in Any Language of Wares or Services: Paragraph 12(1)(c)
Section 12 (1) (c) -- Name in any language of wares or services
 Paragraph 12 (1) (c) of the trademark sound states that the trademark is
registrable if it is not “the name in any language of any of the wares or
services in connection with which it is used or proposed to be used.
 The bar extends to any language regardless of whether the ordinary
Canadian consumer would be familiar with the name
 the bar cannot be overcome by the acquisition of secondary meaning
 the bar in paragraph (C) His more extensive than those of paragraphs (A) or
(B), reflecting on overriding policy concerned with avoiding the creation of
monopolies over generic terms that are commonly or necessarily used
identify particular species of wares or services
 all traders must be free to name their wares were services in whatever
language they choose; it follows that no amount of success or fame should
permit 1 trader to preclude his or her competitors from referring to their
own wares or services by name.
 The distinction between clearly descriptive marks and generic marks is of
vital importance in determination self register ability. By the same token,
marks that they gain their life as indicators of sources, but evolved to become
the name of the wares or services to which they are attached, can be struck
from the register on that basis pursuant to s. 18(1)(b)
79
Jordan & Ste-Michelle Cellars Ltd. v. Andres Wines Ltd. [1986] TMOB
F
NORSTRANO in association with wines
 The TM is the name given to wine by the peasant wine producers in Italian
Switzerland
I
s. 12(1)(c) – name of the wares
H  A broad interpretation should be given to the words “any language”
appearing in section 12 (1) (C) of the act. As a result while the word
“nostrano” is defined in the Italian language as meaning “domestic,
national; homegrown; regional”, the fact that the word is recognized to
such an extent has to be included in an encyclopedia of wines as
designating a type of wine and, therefore, the name of the wine produced in
the Italian area of Switzerland is sufficient, for it to fall within the
prohibition of section 12 (1) (C).
 The applicant’s trademark NOSTRANO is contrary to section 12 (1) (C) of
the trademarks act.
(e) Confusing with a Registered Trade-mark: Paragraph 12(1)(d)
s. 12(1)(d) – confusing with a registered TM
 According to paragraph 12 (1) (D) of the trademarks act, a trademark will be
registrable if it is not confusing with a registered trademark.
 Section 6 and in particular subsection 6 (2), describes the manner and
circumstances in which trademarks may be found to be confusing with one
another
o The use of a trademark causes confusion with another trademark if
the use of both trademarks in the same area would be likely to lead to
the inference that the wares or services associated with those
trademarks are manufactured, sold, leased, hired or performed by the
same person, whether or not the wares or services are off the same
general class.
s. 6(5) – non-exhaustive list of factors to be considered in determining whether there is
confusion
 (a) The inherent distinctiveness of the trademarks or trade names and the
extent to which they have become known
 (b) the length of time the trademarks 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 trademarks or trade names in
appearance or sound or in the ideas suggested by them
Establishing the likelihood of confusion as a fact-finding and inference drawing
exercise
 Even identical marks may be found to be non-confusing, while starkly
different marks can produce a finding of likely confusion, all depending upon
the surrounding circumstances
80




“If ordinary casual consumers somewhat in a hurry are likely to be deceived
about the origin of the words were services, then the statutory test is met.”
Mattel
the mark GOLDEN CIRCLET
o in association with cigarettes is confusing with the mark GOLD BAND
in connection with cigars, Insofar as it may appear to be an associated
diminutive of the registered mark. Benson & Hedges
the mark MOLSON GOLDEN and WINCHESTER GOLD
o are not confusing. Winchester is of arresting significance. Kellogg
Canda
FUITS DOTS for breakfast cereal vs. FROOT LOOPS
o The small differences between these marks would suffice to make
confusion unlikely; it pointed to the weak nature of the marks and the
numerous similar marks already peacefully coexisting on the register
Inherent distinctiveness vs. Confusion
 The less inherently distinctive mark as, the less likely are consumers to
assume that a similar market indicates the same source. The weaker or more
descriptive for marketers, therefore, the smaller the ambit of protection
afforded by the law.
 The trademark owner may overcome paragraph 12 (1) (B), for example only
to find that, in spite of paragraph 12 (1) (B), she must share the register with
numerous similar, albeit legally non-confusing marks
Masterpiece Inc. v. Alavida Lifestyle Inc. [2011] SCC
F
Masterpiece living
I
Whether the trademark “masterpiece living and quote, proposed and
subsequently registered by A, the company entering the retirement residence
industry in Ontario, was then confusing with the unregistered trademarks or
trade name previously used by another company, M, in the retirement
residence industry in Alberta.
H  The test for the determination of confusion is whether, as a matter of 1st
impression, the casual consumer somewhat in a hurry who encounters the
trademark, with no more than an imperfect recollection of any one of the
other trademark, would be likely to think that the 1st trademark was the
same source of wares as the 2nd TM.
 Section 6 (5) sets out the required approach to a confusion analysis. All
surrounding circumstances must be considered including:
o (a) the inherent distinctiveness of the trademarks or trade names
and extent to which they have become known
o (b) the length of time the trademarks or trade names have been in
use
o (c) the nature of the wares, services were business
o (d) the nature of the trade; and
o (e) the degree of resemblance between the trademarks or trade
names in appearance or sound were in the ideas suggested by them.
81
Whether the location where the mark is used is relevant when
considering the likelihood of confusion between a registered trademark
and the prior unregistered one
 pursunt to section 19, the owner of a registered trademark is entitled to the
exclusive use of the mark throughout Canada. The test for confusion is
based upon the hypothetical assumption that the trade names and
trademarks are used in the same area, irrespective of whether this is
actually the case.
 In order for the owner of a registered trademark to have exclusive use of
the trademark throughout Canada, there can out be a likelihood of
confusion with another trademark anywhere in the country. For this
reason, the location where the marks are actually used it's not relevant.
The consideration applicable in the assessment of the resemblance
between a proposed use trademark and an existing unregistered
trademark
 it is the use of a trademark and not registration itself that confers priority
of title and the exclusive right to the trademark. Rights are granted to the
1st user of a trademark in 2 ways under the act.
o 1st, under section 16, a party normally gains a priority right to
register the trademark when it 1st uses that trademark.
o 2nd, a user is also able to oppose applications, were applied to
expunge registrations based on its earlier use of the confusing
trademark. Sections 16(3) recognizes the right of a prior user
against any application for registration based upon subsequent use.
 M could apply to expunge A’s trademarks pursuant to section 16(3) on the
grounds of likelihood of confusion between A’s trademark and any office
trademarks that had been in use before the registration.
 Further, M was entitled to have each of his marks separately compared to
A’s TM.
 The trial judge erred in undertaking a single composite analysis,
considering resemblance between Masterpiece Living and all of M’s
trademarks and trade names generally.
 Most confusion analysis should commence with an assessment of the
resemblance between the Marks in issue.
 The trial judge erred in considering A’s actual use of its market rather than
addressing the entire scope of exclusive rights and potential uses that were
granted to A under its registration.
 His approach did not recognize that A was entitled to use the protected
words in any form including a format that closely resembled M’s marks.
 Because A’s proposed a trademark is only the words Masterpiece living, the
difference or similarity with each of M’s trademarks and trade names must
be assessed on the basis of these words alone. The striking or unique aspect
of each trademark is the word masterpiece. The idea evolved by each as
also the same: high-quality retirement lifestyle. Clearly, there is a strong
resemblance between masterpiece the art of living and masterpiece living.
82
J
What effect the nature of the business and cost of the wares or services
housed in the confusion analysis
 the trial judge erred in considering that consumers of the expensive goods
and services would generally take considerable time to inform themselves
about the sources of those goods and services to suggest a reduce the
likelihood of confusion.
 Confusion must instead be assessed from the perspective of the 1st
impression of the consumer approaching a constantly purges when he or
she encounters the trademark.
 The possibility that careful research could later remedy confusion does not
mean that no confusion ever existed or that it would not continue to exist in
the minds of consumers who did not carry out the research
 the trial judge's consideration should have been limited to how a consumer,
upon encountering A’s Mark in the marketplace, with an imperfect
recollection of the M’s marks, would have reacted.
 In circumstances where a strong resemblance suggest a likelihood of
confusion, and the other section 6 (5) factors do not point strongly against
a likelihood of confusion, cost is unlikely to lead to a different conclusion.
The role of expert evidence in the trademark confusion analysis
 an expert should only be permitted to testify if the testimony is likely to be
outside the experience and knowledge of the judge
 where the casual consumer is not particularly knowledgeable and there is a
resemblance between the marks, expert evidence that simply assesses that
resemblance will not usually be necessary
 judges should consider the marks at issue, each as a whole, but having
regard to the dominant or most striking or unique feature of the mark,
using their own common sense, to determine whether the casual consumer
would be likely to be confused when 1st encountering the trademark..
 In this case, A’s expert engaged in a discussion of morphology and
semantics instead of considering the marks as a whole. He also based his
analysis on A’s actual post registration use, rather than the full scope of
rights granted to A under its registration.
 M’s survey was similarly unhelpful because it attempted to assimilate
consumers with an imperfect recollection when none was available. For
this reason the survey was not a valid assessment of the relevant question.
M has proven that the use of A’s TM in the same area as those of M’s would be
likely to lead to the inference that the services associated with M's trademarks
were being performed by A. Because M’ use proceeded A's proposed use, A was
not entitled under section 16(3) to registration of its trademark and should be
expunged from the register
The relevance of fame
 It has generally been accepted that more famous marks will be given the
greater ambit of protection vendor less famous counterparts
83

Rationale: Ordinary consumer is more likely to perceive similarities to a
famous mark and assume a connection with that famous mark
o There are more competitive benefits to be gained from association
with successful marks, making competitors more likely to attempt to
walk the fine line between confusingly and not confusingly similar.
o By their nature as such, famous mark holders are more likely to
engage in litigious practices to discourage other from using similar
marks.
Underlying morality in jurisprudence
 The underlying morale indeed that serves to reward and protect a successful
entrepreneur against the parasitic would be free rider.
 The risk is that the famous market make on to be protected as though it were
a piece of private property, giving the owner of greater and more absolute
monopoly than that which trademarks law should accord.
Miss Universe Inc. v. Bohna [1994] FCA
F
MISS UNIVERSE vs. MISS NUE UNIVERSE
I
The relevance of fame
H General Principles
 To decide whether the use of a trademark or of the trade name causes
confusion with another trademark or another trade name, the court must
ask itself whether, as a matter of 1st impression on the minds of an
ordinary person having a vague recollection of that other mark or name,
the use of both marks were names in the same area in the same matter is
likely to lead to the inference that the services associated with those marks
or names are performed by the same person, whether or not the services
are of the same general class.
 The onus is always upon an applicant for the registration of the trademark
to establish, on the balance of probabilities, there is no likelihood of
confusion with the previously used and registered trademark
 the stronger the market is, the greater the ambit of the protection it should
be accorded and the more difficult it will be for the Applicant to discharge
the onus.
o A trademark may be so generally identified with [a person] that is
used in association with anything else, however remote from
entertainment services, would be confusing in the sense that its use
in both associations would be likely to lead to the inference that all
the wares and services, whatever they might be, emanated from
[that person]
 the factors in s. 6(5) need not be interpreted as having equal weight in all
circumstances.
o Where the strong trademark is measured against the proposed
mark, criteria (c) and (d), the nature of the wares, services or
business and the nature of the trade, are not particularly
determinative.
84

For a likelihood of confusion to be found, it is not necessary that the parties
operate in the same general field or industry, or that the services be of the
same type or quality. Trademarks for wares and services of one quality
intended for one clause of purchasers may be confusing with trademarks
for wares and services of a different type or quality, intended for a different
class of purchasers.
Application of Principles
 the trial judge has erred in failing to address the very issue of the scope of
protection to be accorded to a trademark as widely known and used as
Miss Universe, particularly in that very area–organization of beauty
pageants–in which a newcomer was precisely endeavoring to enter
 Miss Universe is a well-known and reputable name
 the facts in this case should be examined on the assumption that the
trademark was to be accorded a particularly wide scope of protection and
that the burden imposed on the applicant to dispel any likelihood of
confusion was particularly difficult to overcome, even more so in the area
of beauty pageant.
 The applicant was a newcomer entering a field already extensively
occupied by the trademark owner and borrowing in so doing the whole of
the name already well-established in that very field.
 It was the duty of the applicant to select a name with Karen so as to avoid
any confusion so as to avoid the appearance that he intended to jump on
the band wagon of an already famous mark
 the name Miss nude universe will be a selling feature without a lot of
explanations. Everyone knows the name -- that's because the name Miss
nude universe was inevitably associated with the name Miss universe.
 In the case at bar, services associated with those trademarks were
principally related to the operation of beauty pageants. Both parties are
providing entertainment services by conducting, hosting and promoting
beauty pageants. The beauty pageant services provided by the trademark
owner ordered to be provided by the applicant under their respective
trademarks, share the same format and the same basic process.
 Both trademarks were used were to be used, respectively, in precisely the
same industry or business
 the beauty pageant of the parties may therefore well become in direct
competition, being held possibly in the same hotel at the same time, and the
allegation that the pageants may differ in type is thus irrelevant.
 The word nude it's merely an adjective, is clearly subordinate to the notion
universe which modifies, and does not serve to distinguish applicant's mark
from that of the opposer
 the opposer have devoted substantial resources and energy to cultivating a
respectable image, the plaintiff's good name should not be loved to the
mercy of the latecomers campaign to capture a portion of the market.
Irrespective of the level of the defendant's organization at which it occurs,
alas scrupulous individual exploiting eager contestants, or an overzealous
85
contestant soliciting advertisements locally, meet tarnish the image
acquired out the plaintiff's great expense by associating the 2 pageants or
by neglecting to correct misapprehensions by consumers
United Artist Pictures Inc. v. Pink Panther Beauty Corp. [1998] FCA
F
Pink Panther & Desgin vs. Pink Panther in words
I
Whether there is confusion or likely to be confusion
H  The 5 specific considerations that must be considered indicate that the
court must balance the right of the trademark owner to the exclusive use of
his or her mark, with the right of others in the marketplace to compete
freely
The inherent distinctiveness of the TMs or tradenames and the extent to
which they have become known
 the 1st item listed under subsection 6 (5) is the strength of the mark. This is
broken down into 2 considerations:
o the inherent distinctiveness of the mark, and
o the acquired distinctiveness of the Mark.
 Mark’s are inherently distinctive when nothing about them refers the
consumer to a multitude of sources.
 Where a market may refer to many things were, it’s only descriptive of the
wares or of their geographic origin, less protection will be afforded.
 Where the market is the unit were invented name, such that it could refer
to only one thing, it will be extended the greater scope of protection
 where Mark does not half inherent distinctiveness it may still acquire
distinctiveness through continued use in the marketplace. To establish this
acquired distinctiveness, it must be shown that the mark has become
known to consumers as originating from one particular source.
Length of time in use
 a market that has been the use for a long time, versus one newly arrived on
the scene, is presumed to have made a certain impression which must be
given some weight.
 Note: uses us defined under section 4 of the Act
Nature of the wares, services or business
 similarity in words were services cannot be a sina quo non in the
determination of confusion. However the ultimate task is confusion, and
where one product to does not suggest the other it will be a strong
indication that confusion is unlikely
 the nature of the wares, services and business, though not always
controlling, are certainly of significance.
 Relevant factors:
o the general class of goods
o the quality and price of those goods
Nature of Trade
 the risk of confusion is greater where the winners were services, though
dissimilar, or are distributed in the same type of stores or are off the same
86
general category of goods.
o If both items are in the general category of household products and
are sewed in similar places, then confusion is more likely
o where one Mark refers to household printouts and the other 2
automotive products, and they are distributed in different types of
stores, there is less likelihood that consumers will mistake one Mark
for the other
 the type of trading environment
o where one product is traded on the wholesale level and the other
through retail outlets.
o This relates both to the environment and to the nature of the
consumer
o a professional consumer purchasing at the wholesale level is less
likely to be confused to ban the casual shopper in a retail setting.
 The questions to be answered is not whether the parties sold
their products in the same channels, but whether they were
entitled to do so
Similarity in appearance, sound and idea suggested
 likely impression made by the marks on the public
 what marks must be assessed in their entirety, it is still possible to focus on
particular features of the Mark which may have a determinative influence
on the public’s perception of it
 the analysis of subsection 6 (5) is fact specific
All the surrounding circumstances
 the overriding general consideration as the surrounding circumstances this
includes the specific factors listed above, but it allows to judge or the
registrar the flexibility to take account of any fact PKWare to the situation
at hand.
 In particular cases there may be a history of competition between the
marks without resulting in any confusion
 any evidence of actual confusion will always be relevant
 survey evidence may be entered were it has been conducted in an objective
manner, so that the results how some prepaid value
 one important circumstances the presentation of the trademark in the
context of the product itself
o the get up, or the way that the product is packaged, and as a
consequence the way the market is presented to the public, is an
important factor in determining whether confusion is likely.
 Surrounding circumstances are also important in determining how much
weight each of the enumerated factors should be given
Famous TMs
 in a case with the famous mark, it is necessary to adjust the weight given to
the individual criteria or to the surrounding circumstances
 the fact that the market was very famous did not automatically prohibit its
use by other persons in fields outside those used by the owner of the mark.
87
What the extended ambit of protection meant was that the onus on other
factors became heavier if the applicant was to satisfy the registrar or the
court that the public would not be confused
 marks are not entitled to extend the protections simply because they have
become well-known, indeed famous. This conclusion is confident with the
overall purpose of the act, which is to provide the registered owner of the
trademark with its exclusive use in association with specified wares and
services.
 We must remember that the registration of the trademark does not grant
the registrant ownership of the words or images in that Mark
 the white scope of protection afforded by the fame of the opposer’s mark
only becomes relevant when applying it to the connection between the
opposers and the applicant’s trade in services. No matter how famous of
Mark as, it cannot be used to create the connection that does not exist
 the fact that the opponents Mark was a world renowned could not be a
factor so important has to make the difference in wares and services
irrelevant
 it is possible to use a famous mark for a different product in a different
context without infringing; same is not everything
Analysis
 the marks while not identical, are very similar
 the trademark owned by United artists is clearly a famous and inherently
distinctive one. It has been used in Canada for 30 or more years. While this
may not be a very long time, it cannot be denied that it is a longer time than
the Mark proposed by the applicant, which has not been used at all
 there’s no doubt that the pink panther is a famous and strong trademark. Is
it does not have the inherent distinctiveness, then it certainly has acquired
a great deal of distinctiveness in the 30 years or so that it has been part of
popular culture. However the issue to be decided is not how famous the
Marques, but whether there’s a likelihood of confusion in the mind of the
average consumer between United artists Mark and the one proposed by
the applicant with respect to the goods and services specified. That
question must be answered in the negative there is no likelihood of
confusion as to the source of the products. The key factor here is the
gapping divergence in the nature of the wearers in the nature of the trade it
is not a fissure but a chasm.
 United artist produces movies. It does not manufacture or distribute beauty
products. United artist products are not likely to be made available in the
same places of trade as the applicant’s products. Shampoo is not so in
movie theaters or video stores. Videos are not available in beauty parlors.
 What the trial judge did not give sufficient weight to is that, not only were
the wares in each case completely disparate, but there is no connection
whatsoever between them
 based only on the fact that the opposer’s mark is famous, there should not
be an automatic assumption of confusion
88

consideration of future events and possibilities of diversification is
properly restricted to the potential expansion of existing operations. It
should not include speculation as to die versification into entirely new
ventures, involving new kinds of wares, services or businesses.
 To find that such a connection was sufficient in this case would effectively
extend protection to every field of endeavor imaginable. There would be no
area that Hollywood’s marketing machine would not control. Just because
they are well known, the whole world is not barred forever from using
words found in the title of a Hollywood film to market unrelated goods
 while the public might be confused by a product which used to name pink
panther and simultaneously depicted a pink cat, the use of the words alone
cannot be said to give rise to such confusion. One of the surrounding
circumstances that the trial judge should have adverted to is the fact that
much of the same which this court and the court below attached to the
opposer’s mark stems not from the words the pink Panther but from the
associated music and cartoon images.
 In this case, words only are used. There is no accompanying design or
music. It is reasonable to conclude that the average person, we doubt being
presented with these other hallmarks, would not confuse disorders of the
applicants propose the Mark
Dissent:
 It is precisely because of the fame and goodwill associated with the name
the pink Panther that the applicant has chosen that name for its business.
What the applicant seeks to do is profit financially from the goodwill
associated with the opposers tradename. There are many other feline
animals the applicant could have chosen for its business but instead of
choosing one of these, the applicant closed a very famous name, pink
panther.
 To come to any other redoubt in the case of such a famous and widespread
tradename as the pink Panther, tips the balance too far in favor of the
copycat artist seeking to profit financially from someone else creative
fortune. The decision of this case launches trademark protection down the
slippery slope which will result in the protection of famous names in only
the very clearest of cases.
Toyota Jidosha Kabushiki Kaisha v. Lexus Foods Inc. [2000] FCA
F
Lexus cars vs. Lexus canned fruits
I
confusion
H  It is necessary to evaluate all of the relevant factors listed in subsection
6(5) in each case in to make a determination which gives appropriate
weight to each of them.
 In this case when of the key factors that was at play was the striking
difference in the wares.
 It must be recalled that trademarks are always used and recognized in
association with certain wares and services
89








the protection granted must be related to certain wares were services,
because confusion is less likely window wares are markedly different, even
when the market is the well-known one
confusion may be generated with clues that are not in the same general
clause, us do have some resemblance or a linkage to the wearers in
question. The type of goods being compared in order to determine if there
might be confusion as to relevant, and, where they are asked automatically
different as cars and count fruit, that must be given considerable weight.
In this case automobiles are sold by automobile dealers all over the world
usually in special beauty was used for that purpose. That can't lose in
question were so largely to institutional purchasers in the province of
Quebec. It is hard to see what anyone about to buy some of the canned fruit
juice of the applicant would even entertain this thought that the Japanese
automobile manufacturers of Lexus was the source of this product.
o The survey evidence to the fact that the name Lexus was associated
by the interviewees with an automobile does not establish that there
was any confusion between the 2 projects. It merely shows that
many people knew about the fine car made by the opposer.
Trial judge's reliance on the finding that the Lexis Mark was either famous
or becoming so let him to be overly protective of it
while notoriety also Mark may well be a significant factor to consider,
assess the length of time it has been used, factors (a) and (b) is not
controlling. Famous Marks. alone does not protect the trademark
absolutely. It is merely a factor that must be weighted in connection with
out the rest of the factors. If the fame of the name could prevent any other
use of it, the fundamental concept of a trademark being granted in relation
to certain wearers would be rendered meaningless. Moreover, password
there are being any obligation on the court to new church up and coming
trademark to preserve their rising reputation, it is not supportable. The
court must take the facts as they exist on the issue of same as at the time of
this decision
the fact that the word Lexus was a coined word, well that may well be a
factor worth considering in deciding whether there might be confusion, it
cannot control the outcome of the case. Ordinary words used in trademarks
in relation to certain wearers can be used in relation to other wearers if
there is no confusion in the circumstances. Similarly pointed words may
also be so used us lost no confusion results
the fact that the applicant chose to use the word because it was so quality
name. This may be a factor to consider in an infringement claim,
particularly in relation to the amount of damages to be awarded, it cannot
have much, if any, weight in the context of dealing with whether there was
confusion created by the use of the name
the decision cannot be based on whether someone knew about the
existence of the trademark or not. There's no doctoring of mens rea in the
field of trademarks. In fact, just a business come plan to avoid tax in the
90
context of income tax act, 1 can plan to avoid trademark infringement in the
commercial world.
Mattel USA Inc. v. 3894207 Canada Inc. [2006] SCC
F
Barbie dolls vs. Barbie & design for restaurant
I
confusion
H  No matter how famous and valuable the mark becomes, the legal purpose
of the trademarks continue to be there accused by the owner “to
distinguish words for services manufactured, sold, leased, hired or the form
and by him from those manufactured, sold, leased, hired or performed by
others”
 the mark is a guarantee of origin and inferentially, under assurance to the
consumer that the quality will be what he or she has come to expect.
Nothing prevents the opposer from using its BARBIE trademark to boost
sales of everything from bicycles to foot products, but the question is
whether the opposer can all in aid trademark law to prevent other people
from using a name as common as Barbie in relation to services remote to
that expand from the products that gives rise to Barbie's fame.
 Under section 6 (2), confusion arises of it is likely that the hapless article
purchaser–the casual consumer is somewhat in a hurry–will be led to the
mistaken inference that “the wares or services associated with those
trademarks are manufactured, sold, leased, hired or performed by the same
person, whether or not the wares or services are off the same general class”
the general class of wares and services, while relevant, is not controlling.
All the surrounding circumstances must be considered, including the
factors cited out in section 6 (5). In a context of specific assessment,
different circumstances will be given different weight
 the federal Court of Appeals decisions in Pink Panther and Lexus should
not be followed to the extent they suggest that, for confusion to occur, there
must be some resemblance or a linkage to the wares in question.”, i.e. to the
wares for which registration of a trademark is sought.
 Resemblance is clearly not a requirement under section 6. On the contrary,
the point of the legislative addition of the words “whether or not the
wearers were services are of the same general class” conveyed Parliament’s
intend that not only need there be no resemblance to the specific wares or
services, but the wares or services marketed by the opponent under its
mark and the wares or services marketed by the applicant under it's a fight
for Mark need not even be of the same general class.
 The trademarks fame is capable of carrying the mark across product lines
where lesser marks would be circumscribed to their traditional wares or
services.
 Each situation must be judged in its full factual context. The difference in
wares were services does not trump all other factors, nor does the fame of a
trademark. The totality of the circumstances will dictate how each
consideration should be treated. If in the end, the rates out of the use of the
91






new market would be introduce confusion into the marketplace, it should
not be permitted “whether or not the wares or services are off the same
general class”
Parliament’s agreement that some trademarks are so well known that
they're using connection with any wares or services would generate
confusion does not mean that Barbie has such transcendence.
In this case, having regard to all the surrounding circumstances and the
evidence before the board, his decision that there was no likelihood of
confusion between the 2 marks in the marketplace was reasonable. The
onus remained throughout on the applicant to establish the absence of
likelihood, but the board was only required to deal with potential sources
of confusion about, have about them an air of reality. When the relevant
factors of the pragmatic and functional approach or properly considered,
the standard of review applicable to the board's decision is reasonableness.
Barie has acquired a strong secondary meaning associated with the
opposers doll products and, on that account, has achieved considerable
distinctiveness. The Barbie Mark also has deep roots and has been highly
publicized over a large geographic area.
The applicant applied for trademark, which does not lie only in the word
Barbie bed in the totality of the effect, including the script in which it is
written and the surrounding design, has become somewhat known within
the area were both parties marks are used. The doll business and the
restaurant business appeal to the different tastes of largely different clients.
Unlike the case with other forms of intellectual property, trademark
entitlement that's based on actual use. Here, the board did not accept that
Barbie mark is famous for word distinctive of anything other than dolls and
dolls accessories. Its assessment was supported by the evidence. If the
Barbie market is not famous for anything but dolls and doll accessories and
there is no evidence that Barbie's licenses are in the relevant markets using
the Barbie Mark for restaurant services, it is difficult to see the basis on
which a casual consumer somewhat in a hurry is likely to draw the
mistaken inference. Quite apart from the great difference between the
opposers wares and the applicant's services.
o They occupy different channels of trade found the increased
potential for confusion that might arise through intermingling in a
single channel of trade it's not present
evidence of actual confusion would be irrelevant surrounding
circumstances. Such evidence is not necessary even where are trademarks
or shown to halt operated in the same market area for a significant period
of time because the relevant issue has likelihood of confusion not actual
confusion. Nevertheless an adverse inference may be drawn from the lack
of evidence of actual confusion in circumstances where it would readily be
available if the allegation of likely confusion was justified.
92
(f) Prohibited Marks: Paragraph 12(1)(e)
(i) Scandalous, Obscene, or Immoral Marks: Paragraph 9(1)(j)
The use that triggers s. 9 is broader than the technical definition under s. 4
 s. 3 definition of adoption – commence to use the mark or to make the mark
known
Enforcement – s. 53.2
 upon the application of any interested person
s. 9 prohibition is sweeping and potentially subjection to constitutionality challenge.
s. 9 allows the public authority to adopt an official mark and then the use official mark
is then prohibited.
 There is no analysis of the registrability analysis of the official marks.
 There is no way to challenge the mark except judicial review.
 There is no definition as to what constitutes public authority.
 For any marks that can become prohibited marks, the bar for prohibited
marks obliterates the considerations of the length of use or who’s been using
the mark.
o S. 9 contemplates prevention of use or adoption; as such, the owner of
a mark that has become a prohibited mark can still use the mark as
long as it has been registered.
s. 9(2) possible license of an official mark
 9(2) for an official mark, with consent of the public authority, the official
marks can be licensed out. It makes the prohibition of the official marks are
more problematic since it provides for the commercial exploitation of the
prohibition.
(ii) Connection to an Individual: Paragraph 12(1)(e), 9(1)(k) and (l), Subsection 9(2)
Protection against false association with an individual
 TM law protects against a false association with an individual at common law
and under the trademarks act
s. 9(1)(k)
 No person shall adopt in connection with the business, as a trademark or
otherwise, any mark consisting of, or so nearly resembling as to be likely to
be mistaken for any matter that may falsely suggest the connection with any
living individual
 Such marks are barred from registration under s. 12(1)(e)
 Note: this does not prevent adoption or registration where the
suggestion is not false
93
s. 9(1)(l)
 The portrayed and signature of any living individual or one who has died
within the preceding 30 years it's prohibited
 Such marks are barred from registration under s. 12(1)(e)
 Note: this does not prevent adoption or registration where the
suggestion is not false
The common law of passing off equally effective
 The common goal of passing off could equally be effective in protecting the
plaintiff's interest so long as she is able to use doubtless the necessary
elements for the tort on the balance of probability
 in a passing off action, the plaintiff's ability to prove reputation and goodwill
in the indicia she seeks to protect, whether her name, image, or other
distinctive quality, is critical to a favorable finding
Statutory protection
 Under the statute there is no such requirement to prove reputation or
goodwill.
 Nevertheless the reputation of the individual often does factor into Judy
show determinations of whether a false connection has been suggested by
the defendant such that adoption and registration of the mark are prohibited
 The statutory basis for him joining another from creating any fossil
Association house therefore suffered leakage from the common law despite
the language of the trademarks act.
Carson v. Reynolds [1980] FCTD
F
Here’s Johnny in association with portable trailers and lavatory facilities
I
Prohibited marks
H  s. 9(1)(k) and (l) are absolute prohibition not dependent upon proof of
injury or damage.
 It is clear that Here’s Johnny probably suggests, to a significant number of
people in Canada, a connection with the P. Since there is no connection
between the D and the P, the P being a living individual, Here’s Johnny is
not registrable as a TM on the D’s application without the P’s consent under
s. 9(2).
Fawcett v. Linda Lingerie Manufacturing Inc. [1984] TMOB
F
Fara in association with Ladies’ garments for lounge
I
Prohibited marks
H Ground 1: a living person’s name
 There is no evidence as to the extent of the circulation and availability of
the various periodicals in Canada such that it is impossible to conclude that
Farrah Fawcett or Farrah Fawcett-Majors is well-known in Canada. The
evidence is totally insufficient to lead to a conclusion that the opponent’s
given name Farrah has become well-known in Canada.
 There is insufficient evidence to lead to a conclusion that there was any
94
spillover effect in Canada from broadcasts of such commercials in the US,.
 S. 9(1)(k) does not by itself form the basis for a ground of opposition
 The opponent’s evidence fails to establish any measure of fame or notoriety
for her name Farrah Fawcett, much less her given name Farrah.
 In the Carson case, the appellant-opponent filed evidence of considerable
use of the TM Here’s Johnny in Canada by the appellant in association with
clothing and entertainment services. No such evidence exists in the present
case. Furthermore, in the Carson case, there was evidence of significant
viewership of the appellant’s television program in Canada. Furthermore, a
survey evidence taken in Toronto clearly established the connection in the
minds of the Canadian public between the appellant’s trade-mark and the
appellant.
Ground 2: confusing
 The ground of confusion fails since the opponent failed to evidence any use
in Canada for its alleged trade names FARRAH and FARRAH FAWCETT in
association with any business whatsoever.
 The existence on the register of a TM at least somewhat similar to the
applicant’s mark for wares in the same nature as the applied for wares in
the present case – even if the opponent had established some use in Canada
or a reputation in the trade in relation to the clothing industry, it would
have been difficult to assert that her trade name FARRAH was exclusively
distinctive of her in relation to clothing items.
Relevant date for s. 37(2)(d):
 Filing of the opposition
Baron Phillipe de Rothschild S.A. v. Casa de Habana Inc. [1987] ON HC
F
ROTHSCHILD AT YORKVILLE vs. the Rothschild family
I
Prohibited mark
H  S. 9(1)(k) prevents the adoption by a person of any mark that falsely
suggests connection with living individuals. The conduct of the D is a
grossly improper use of the Rothschild name. No proof of injury or damage
need be shown
 Further there has been appropriation of personality. One cannot
commercially exploit anther’s name or likeness without his permission.
Misappropriation of Personality
Privacy Interest
 Include appropriation of the P’s name or likeness for the D’s economic gain.
 This category of privacy interest enjoys an overlap with the law of
misappropriation of personality
The doctrine of Misappropriation of Personality
 Best understood as a reflection of two aspects
95
o The indubitable power of celebrity endorsement and its significant
commercial value
o The pervasive desire to label anything with economic value as
property
Athans v. Canadian Adventure Camps Ltd. [1977] ON HC
F  P: professional water skiing athlete
 D: a water skiing camp and the marketing company D hired
 P engaged in commercial activities using his fame
 Drawing in the promotional material derived from P’s signature picture
I
Whether there is an appropriation of personality
H Passing off
 A limited group knowledgeable of the water skiing sport identifies the
picture
 Two D did not intend to improperly use the image of P; “their intention was
innocent, but their judgment was faulty and misinformed.”
 The action of passing off constitutes the sale of goods or the carrying on of a
business under a name, mark, or description in such a manner as to mislead
the public into believing that the merchandise or the business is that of
another person. The law is designed to protect traders against a form of
unfair competition, which consists of acquiring for oneself by means of
false or misleading devices the benefit of the reputation already achieved
by a rival trader. The D seeks to acquire benefit by passing off his goods as
the goods of the P.
 P has not made a case for passing off.
o The use of the line drawings in the advertisement and the brochure
were not likely to give rise to confusion between the P’s business
and that of the D.
o The segment of the public who read the advertisement and the
brochure would not associate the business of the P with D – people
who wanted to send their kids to the camp were not particularly
knowledgeable about the sport
Misappropriation of personality:
 P has a proprietary right in the exclusive marketing fro gain of his
personality
 P is entitled to injunction and damages if the case is made out
 Apart from the drawing, there is no representation in the promotional
material suggestion a connection with the P.
 As to the drawing, it is unlikely that the consumer would associated the P
with the camp.
 Although not necessary to show proof of confusion, the lack of the evidence
shows no confusion in fact.
 Nevertheless, the commercial use of the P’s representational image by the
D without his consent constituted an invasion and pro tanto an impairment
of his exclusive right to market his personality.
96
 P is entitled to damage for using the copyright of his photo
Comment:
 Freedom of expression vs. the ability of famous people to control their names
and images
Baron Phillipp de Rothschild S.A. v. Casa De Habanna Inc. [1987] ON HC
F
ROTHSCHILD AT YORKVILLE
I
appropriation of personality
H  S. 9(1)(k) of the TMA prevents the adoption by a person of any mark that
falsely suggests connection with a living person. The conduct of the D is a
grossly improper use of the Rothschild name. No proof of injury or damage
need be shown
 Appropriation of personality: one cannot commercially exploit another’s
name or likeness without his permission. The tort of appropriation of
personality has been committed and must be enjoyed
Comment:
 Local fame is not sufficient in Canada. The fame must be established in at
least several major cities.
Gould Estate v. Stoddart Publishing Co. [1996] ON Gen Div
F
Book about Gould after he died, written by a journalist who interview Gould
when he was a young artist
I
Did Gould in fact have any proprietary rights in his image, likeness or
personality which have been appropriated by the publication of the
photographs in the book?
H (i) The tort of appropriation of personality
 The limited number of case law dealt with situations where the name or
image of an individual enjoying some celebrity status has been used in the
advertising or promotion of the D’s business or products
o There is an implication that the celebrity is endorsing the activity
of the D
 The tort of appropriation of personality is limited to the endorsement-type
situations
 The court should be mindful of the public interest: the danger of extending
the law of tort to cover every such exposure in public not expressly
authorized is obvious
 US position:
o The scope of the right of publicity should be measured or
balanced against societal interests in free expression
o Where the activities in question consists of thoughts, ideas,
newsworthy events or matters of public interest – vehicles
through which ideas and opinions, the claim is not successful.
 Freedom of expression should impose limits on the tort of appropriation of
personality
 Sales vs. subject distinction
97
o 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
o Subject: the celebrity is the actual subject of the work or
enterprise  not within the ambit of tort
 The book provides insight to anyone interested in Gould.
 The author put in his own creativity
 There is public interest in knowing more about Gould.
 No appropriation of personality
(ii) Survivability of the Right of Publicity: whether the tort of appropriation of
personality survives the death of the individual
 The right of publicity an intangible property like CR, should descend to the
celebrity’s heirs. The heirs should be able to exploit.
 At least no less than 14 years
3. Functionality and Distinguishing Guises: Section 13 and 32
Public interest and functional distinguishing guises
 The provisions dealing with functionality and utilitarian features in the TMA
reflect public policy considerations – perpetual monopoly – if a TM is
primarily functional, it is not registrable
o Distinguishing guises are registrable under s. 2 of the TMA
 Distinguishing guises: a shaping of wares or their containers,
or a mode of wrapping or packaging the wares, the appearance
of which 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 done so by
others.
o The registrability of distinguishing guises is governed by s. 12 and
subject to s. 13.
s. 13



Distinguishing guises are registrable only if it has been used in Canada by the
applicant or predecessor in title so as to have become distinctive at the date
of filing the registration application and the exclusive use by the application
for the wares or services for which it has been used is not likely
unreasonably to limit the development of any art or industry.
Where the limit is unreasonable, the FC may order the registration expunged
on application by an interested party pursuant to s. 13(3)
In accordance with s. 13(2), no registration of a distinguishing guise
interferes with the use of any utilitarian feature embodied in the
distinguishing guise.
98
o A D who can claim to have done no more than use a utilitarian feature
of the guise may therefore have a complete defense.
Note:
 Application for distinguishing guises cannot be made based on proposed use.
S. 13 requires use.
s. 32

Requires an applicant to provide specific and sufficient evidence to show that
the use had made the guise distinctive.
Distinguishing guises are registrable to the extent that they are used, distinctive and
do not run afoul of the doctrine of functionality.
 Note: the invalidity of a TM registration on the basis of functionality has
express statutory basis and has to be found in case law, beginning with
Imperial Tobacco and Elgin Handles
 Anti-monopoly concern underlies the jurisprudence; it does not matter if
there are other ways of achieving similar function to achieve competiveness
o Goodall Rubber: protection allowed, stripe mere aesthetic
 A mark that is primarily ornamental in relations to the product
is not a proper subject matter for TM; yet it should boil down
to distinctiveness – whether the public associates the TM with
a specific source
o Ornamental aspect of the functionality doctrine: primarily ornamental
and therefore not the subject of TM law.
 More of a monopoly issue when dealing with an “ornamental
industry” such the fashion industry
The doctrine of functionality
 Seeks to eliminate barriers to competition that would stem from recognition
of proprietary rights in the underlying product or its functional features.
 Functional and ornamental feature can be protected under patent law and
industrial design; nevertheless, they are able to gain some TM protection,
depending on the facts.
Parke, Davis & Co. v. Empire Laboratories Ltd. [1964] SCC
F
Band to seal capsules in different colors
I
Whether the bands are registrable?
H  The colored bands have a functional use or characteristics and cannot be
the subject of a TM.
 Any combination of elements which are primarily designed to perform a
function, is not fit for TM protection, and if permitted would lead to grave
abuses Imperial Tobacco
 The P in this case sought to perpetuate its monopoly of the patent by
applying for registration of the TMs after the patent expired.
 The applicant considered the P performed a function in its patent
application in the US and is considered as an evidence of functionality in
99
R
this case.
Passing off:
 The P has not established that the manner in which its goods or wares were
done up has become associated in the mind of the consumer or purchaser
with its goods or wares and the evidence does not show that these marks
have been relied upon by the pharmacists, physicians nor the public who
consumes the goods as distinguishing them from all others
If what is sought to be registered as a TM has a functional use or
characteristics, it cannot be the subject of a TM
IVG Rubber Canada v. Goodall Rubber Co [1980]
F
Coloured helical stripes running the length of flexible hose found not to “play
the same type of functional use as the band on Parke Davis” – rather, it told
customers what type of hose could be used for what
I
Registrable?
H Protection was allowed, stripe was mere aesthetic
Pizza Pizza Ltd. v. Canada [1989] FCA
F
Phone number
I
Whether the phone number is registrable as a TM?
H Urie J.
 A telephone number functions to enable a person to contact a predesignated instrument. Does this function preclude registration of the
number on the basis of the jurisprudence?
 Distinguishable from previous jurisprudence:
o Not ornamental feature
 Corn Flower and Adidas: performs only ornamental
functions and could not be TMs
o Not solely functional
o Unrelated to the wares – anyone is free to make, sell and deliver
pizza
 Granting the TM will not grant a monopoly interest in the phone number so
as to hinder competition
o The number is registered only in association with the specific wares
or services
o The registration will not hinder the right of telephone company. If
the telephone company feels otherwise, it may oppose during the
advertising. And other remedies available if the telephone company
feels its rights are infringed.
 Elgin Handles: the change in the appearance in the wood is the ordinary
consequence of fire hardening and cannot be a TM. Not a property subject
of a TM; the act was done to improve the durability of the wares.
Pratte J.
 Only in the cases where the applicant seeks to monopolize the functional
elements or characteristics of their wares through TM registration the
100
functional indicia is not registrable.
Remington Rand Corp v. Phillips Electronics N.V. [1995] FCA
F
Shave head design of an electronic shaver
I
Whether the design is regitrable?
H  Broad rule: if mark is functional, not registrable
 Narrower rule: something that is primarily functional is
problematic..suggests that some functionality is permissible but it cannot
be the primary attribute of the mark (Pizza Pizza case as showing when
functionality is relevant and when it is not)
 What is determinative is the kind of functionality
 If a mark is primarily functional as “part of the ware”  not registrable
because otherwise an effectual monopoly would be granted
 If it is merely peripheral, like a telephone # with no connection to wares,
may be registrable.
 This is exactly the effect of upholding the registration here…precisely what
the functionality doctrine evolved to prevent because wrt the design mark,
they have a reference to the principal functional feature of the Phillips
razor.
 While a distinguishing guise may possess a functional element or
component, a mark which goes beyond distinguishing the wares of its
owner to the functional structure of the wares transgresses the legitimate
boundaries of a trade-mark.
 the DG also invalid, they could have proceeded under s. 13, at least wrt the
distinguishing guise but we reach the same result through a general claim
of invalidity invoking the functionality doctrine
R
while a DG may posses a functional element or component, a mark which goes
beyond distinguishing the wares of its owner to the functional structure of the
wares transgress the legitimate boundaries of a TM. To decide whether a mark
transgresses that boundary, a court must decide whether the design is
primarily functional, or whether the design ‘s functionality is secondary to the
role it plays in distinguishing the holder’s wares from those of its competitors.
WCC Containers Sales Ltd v. Haul-All Equipment Ltd. [2003] FC
F
Animal proof garbage bin for national parks
 industrial design on the wares expired
I
Whether registration invalid?
H  while a DG may posses a functional element or component, a mark which
goes beyond distinguishing the wares of its owner to the functional
structure of the wares transgress the legitimate boundaries of a TM. To
decide whether a mark transgresses that boundary, a court must decide
whether the design is primarily functional, or whether the design ‘s
functionality is secondary to the role it plays in distinguishing the holder’s
wares from those of its competitors.
 Each element of the bin performs a function, as supported by the
101


advertising materials
The expert evidence suggesting that the function can be achieve in some
other ways is irrelevant; the question is still whether the design is
functional
If the design is to perform a function, then it is not a TM since it goes to the
functional nature of the wares.
Kirkbi AG v. Ritvik Holdings Inc./Gestions Ritvik Inc. [2005] SCC
F
LEGO indicia: the micro and mini lines of small bricks
I
The doctrine of funtionality
A
 The doctor of functionality establishes that the mark which goes beyond
distinguishing the wares of its owner to the functional structure of the
wares themselves is transgressing the legitimate bounds of a trademark.
 The doctrine reflects the purpose of the trademark, which is the protection
of the distinctiveness of the product, and applies equally to registered and
unregistered marks.
o The doctoring recognizes that trademark law it's not intended to
prevent the competitive use of utilitarian features of products, but
that it fulfills the source distinguishing function
o Registration does not change the nature also Mark; it merely grants
more effective rights against 3rd parties
o marks, registered or not, share a common legal attributes and grant
exclusive rights to the use of the distinctive designation or guise.
 In the present case, K claimed an unregistered trademark consisting solely
of the technical or functional characteristics of the LEGO bricks, formerly
protected by the patents.
 A purely functional design cannot be the basis of the trademark in
trademark law should not be used to perpetuate monopoly rights enjoyed
under now-expired patents.
 The monopoly on the bricks of over, and the paradox of the plaintiff and the
defendant may be interchangeable in the bins of the play rooms. The
marketing operations of the defendant are legitimate and may not be
challenged under section 7 (B)
Crocs Canada Inc. v. Holey Soles Holdings Ltd. [2008] FC
F
The design of shoes
I
Whetther Crocs’ claims in passing off under s. &(b) and (c) of the TMA defeated
by the application of the doctrine of functionality?
H  There are striking similarities between the products of the plaintiff and the
defendant
 whether the pattern of the circles and semi circles can qualify as a
distinguishing guise or get up so as to receive protection under the
trademarks act in that their functional role can properly be viewed as
separate and different from the distinguishing role of the pattern in which
they are built into the clogs
102





trademark protection is not available for a mark or get up that was purely
functional Kirkbi
the doctrine does not exclude from protection any and every mark which
displayed some functional features.
Subsection 13 (2) suggests a policy choice to permit some
functional/utilitarian features in the Mark so long as they do not create a
monopoly of the function
in the present case the question of whether the design and pattern of the
circles and semi circles on the plaintiff's clogs is primarily functional it's
one of fact which cannot and should not be decided at this stage
the underlying policy is the prevention of the obtaining a monopoly by
means of a trademark in circumstances where a patent either cannot be
granted or has expired and is not without significance that the evidence on
the present motion shows that other manufacturers including the
defendant have been able to use some of the purely functional features of
the plaintiff's clocks without mimicking their get up.
Chapter 5: Entitlement to Register
1. Understanding Section 16: Entitlement and Priority
Entitlement to register is about being the first – s. 16
 An applicant must have the basis upon which to claim title to register, and
contesting claims are then resolved by establishing priority -- Party with the
earliest priority date of entitlement is the party with the best title
Priority based on either prior use or first filing due to Canada’s mixed legacy from both
common law and civil law
s. 16(1) – prior use or making known in Canada
 The applicant or his predecessor in title house used the mark in Canada or
made known the mark in Canada
 Priority date
o The earliest date at which such use or making known as defined in
section 5 took place
 s. 5 when deemed to be made known
o The wares are distributed in association with it in Canada, or
o the wares or services are advertised in association with it
o And it has become well known in Canada by reason of the distribution
or advertising
103
s. 16(2) – registration in foreign countries and use in association with the
wares/services
 The applicant or his predecessors in title has duly registered the mark in his
country of origin and has used the mark in association with wares or services
 Priority date: The date on which the application was filed in Canada, subject
to section 34
 S. 34:
o Where the Canadian application is filed within 6 months of the 1st
foreign filing, the date of filing in Canada is deemed to be the date of
filing of the application of broad.
o Rationale: To facilitate international trade, and to streamline the
protection of the single trademark in multiple jurisdictions,
potentially preventing the domestic usurpation of a foreign marked by
a third-party
s. 16(3) – filed application for a proposed-trademark
 The applicant where his predecessor in title has filed an application for
registration of a proposed trademark
Use is still the key element
 Subsection 16 (3) grounds entitlement simply on the application to register,
actual use of the mark remains key to registration by virtue of the condition
contained in subsection 40 (2)
o S. 40(2): The application may be allowed, but the trademark will only
be registered on receipt of a declaration that the use of the trademark
in Canada, in association with the wares or services specified in the
application, has been commenced
Priority date
 Definition: The date on which an application 1st established the basis for its
entitlement to register
The applicant with the better right to register is the party whose priority date is prior
in time pursuant to s. 16(1),(2), and (3) unless prior to that date the mark was
confusing with
 (a) A trademark that had been previously used in Canada or made known in
Canada by any other person;
 (b) A trademark in respect of which an application for registration have been
previously filed in Canada by any other person; or
 (c)A trade name that had been previously used in Canada by any other
person
104
Application only affected by pending applications; abandoned or refused applications
irrelevant – s. 16(4) and (5)
 if a mark described above has already proceeded to registration, then the
applied for mark is not registrable pursuant to s. 12(1)(d): confusing with a
registered TM
s. 17 – Effect of registration in relation to previous use and when registration is
incontestable
 s. 17(1) an opponent must establish he/she has not abandoned the confusing
TM or trade-name at the date of advertisement of the applicant’s application
 s. 17(2) registration not contestable unless the person who adopted the
registered TM in Canada did so with prior knowledge of a previous use or
making it known.
s. 57 – Exclusive Jurisdiction of Federal Court and Restriction to Challenge the decision
of a registrar
 s. 57(1) the FC has the exclusive jurisdiction to order any entry in the register
to be struck out or amended upon the application of the Registrar or any
person interested
 s. 57(2) NO proceeding calling into question any decision given by the
Registrar of which that person had express notice and from which he had a
right to appeal
Masterpiece Inc. v. Alavida Lifestyle Inc. [2011] SCC
F
Masterpiece living
I
entitlement
H  In order for the owner of a registered trademark to have exclusive use of
the trademark throughout Canada, there cannot be a likelihood of
confusion with another trademark anywhere in the country as suggested
by s. 16(3)
 S. 16(3) states that an applicant for a proposed mark will be entitled to
registration unless at the date of filing the trademark it is confusing with
the trademark or trade name that had been previously used in Canada
 registration itself does not confirm priority of title to a trademark. At
common law it was use of a trademark that conferred the exclusive right to
the trademark. While the trademarks act provides additional rights to a
registered trademark holder than were available at common law,
registration is only available once the right to the trademark has been
established by use.
 Rights arising from use has be incorporated into the act by granting rights
to the 1st user of a trademark in 2 ways
o 1st under section 16 of party normally gains a priority right to
register a trademark when it 1st uses that trademark
o 2nd, the user is also able to oppose applications or apply to expunge
registrations based on his earlier use of confusing trademark
 in the present case the unregistered trademark of M can be basis of the
105


challenge to A’s subsequent registration application. Section 16 (3) of the
act recognizes the right of a prior user against any application for
registration based upon subsequent use. Section 17 (1) preserves that right
subject to certain limitations that are of no relevance here, where the
trademark has been registered.
A’s application for a pro-poster trademark would preclude M’s subsequent
trademark applications based on actual use.
Because M’s use preceded A’s proposed use, A was not entitled under
section 16 (3) to registration of his trademark. As a result, A was not the
person entitled to secure the registration of its trademark under section 18
(1) and those ground of invalidity has been made out.
2. Use and Making Known
(a) “Used in Canada”
Use and making known—the technical definition
 Use in Canada:
o Use is defined in section 2 as meaning any use.by section 4 is deemed
to be a use in association with wares were services
o Section 4(1) provides:
 The trademark is deemed to be used in association with wares,
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 were on the packages in which they are
distributed or it is in any other manner so associated with
awareness that notice of the associations then given to the
person to form the property where possession is transferred.
o section 4(2) provides:
 a trademark is deemed to be used in association with services
of it is used or displayed in the performance or advertising of
those services
 note: this definition is potentially broader in scope than that of
subsection 4(1), particularly in light of its inclusion of using
advertising .
 this definition produces some in balance in terms of the
technicalities involved in establishing use of a mark in
Association with wares and use of the service marks
 uses merely ancillary to the sale of goods, such uses on
invoices or in correspondence have been held to meet the s.
4(2) definition Hartco Enterprises
 the advertising of services in Canada will not be sufficient to
establish using Canada unless there are also actual services
being delivered in Canada Porter v. Don the Beachcomber
 To establish use in association with wares:
106
o (1) The Mark must be a trademark as defined in section 2 that is, used
for the purpose of distinguishing wearers;
o (2) The Mark must be associated with the wares so that notice of the
associations given; and
o (3) The transfer of the property or possession there in must occur in
the normal course of trade (White Conslolidated Industries)
Bombardier Ltd. v. British Petroleum Co. [1971] FTD
F
App. by BP to register "Ski Doo". Bombardier claims better entitlement.
I
whether castro ever used mark in association with the wares as a TM, if not
obviously not a use or relevant use in which they can base there entitlement.
H  What does it mean for something to be used as a TM? The idea that
underlies this concept, is that the use has to be as a TM, which needs to
distinguish wares from another.
 BP trying to register 23 skidoo for use with motor oil and lub, D opposed
since had been used prior. S16(1)(a) saying they have better entitlement.
 D claim is based on previous use of mark based of motor oils with castro,
who then assigned all rights and interests in relation to skidoo mark in
association with motor oil and lube.
 Here trying to registers as a proposed mark s16(3), opposition s16(3)(a).
 The way the mark used, was skidoo appeared on castro containers, but nxt
to it said ppt of bombardier. So never used mark suggesting they were the
source of the product. It was in effect saying this is not our TM, not using
as our TM, and have no right to do so. Need to establish onus of prior use,
they could not show they had used the mark as a TM. Without being able to
show use, need also to show that use not of a foreign manufacture.
J
Bombardier could not claim use in association with motor oil so it was allowed
for BP
R
 Where a mark is used for a purpose other than to distinguish the
goods/services of the user, the mark is not being used as a TM
 Where two marks are used on a product, it is possible that only one mark in
fact distinguishes the source and the other may be merely descriptive of
informative
Express File Inc v. HRB Royalty Inc. [2005] FC
F
EXPRESS FILE H&R BLOCK vs. EXPRESS FILE
I
Whether the applicant’s express file TM used within the meaning of the Act in
association with the services on electronic tax filing on or before the filing date
of the respondent?
H  Subsection 4 (2) of the act provides “a trademark is deemed to be used in
association with services if it is used or displayed in the performance or
advertising of those services”. The display of a mark in the advertising of
the service may constitute use in association with the service however the
service that is advertised must also be performed in Canada.
 In Mayflower, it is held.it may be sufficient if the trademark owner is
107
R
offering and is prepared to perform that service in Canada, but this view is
limited by subsequent decision in Denman Place, where it was held that a
mark displayed in the pre-launch advertising of the service that is not yet
available does not constitute use of the mark.
 The analysis of use of a trademark in relation to the service must be
decided on a case-by-case basis.
 In the present case there's no evidence demonstrating that the trademark
of the service was advertised in Canada nor is there any concrete evidence
that it is used or known by Canadians of the relevant period of time.
 The evidence adduced by the applicant assumes that Canadians were aware
of the existence of the applicant's product.
 There's no evidence that the applicant's services were advertised in Canada
in newspapers, magazines worry that direct mail advertising the applicant
services was sent to Canadians
 according to the evidence, no promotional material was directly provided
for promotion in Canada nor word Canadian residents directly targeted
 even if this product have been advertised in Canada the service was not
offered in Canada
The display of a mark in the advertising of the service may constitute use in
association with best service however the service that is advertised must also
be performed in Canada.
Lin Trading Co. v. CBM Kabushiki Kaisha [1988] FCA
F
Q & Q Design and Q AND Q
I
What is “in the normal course of trade”
H  The design Mark was clearly marked on the watches and appeared in
accompanying material of the time of the transfers
 the question remains whether these transfers were made in the normal
course of trade so as to constitute use of the mark in Canada by the
opponent.
 “in the normal course of trade”:
o if any part of the chain takes place in Canada, this is use in Canada
within the meaning of section 4
o the phrase “in the normal course of trade” does not exclude the sale
by a foreign trade mark owner of goods bearing his mark to a
Canadian wholesaler or distributor
o sales do not have to occur along the entire chain in order to qualify
as in the ordinary course of trade
J
Sale of watches bearing the trademark at issue and with accompanying
materials in Canada with the TM constitutes use of the TM in the normal
course of trade and as such constitutes use within the meaning of the act.
Citrus Gowers Assn. Ltd. v. William D. Branson Ltd. [1990] FTD
F
ORTRANIQUE registered by Canadian distributor
I
Whether there is use?
108
H
S. 57(1)
 CGA is the owner of the TM in several other countries, therefore an
interested party within the meaning of s. 57.
 CGA’s selling agent is also an interested party, as they may be affected
by the WDB’s registration, and have some entitlement to use of the
mark.
 Importer or agent has no right to register a trademark owned by the
foreign principal, under his own name and for his own benefit
 anything the importer does with respect to the trademark must be for
the benefit of the foreign supplier and owner of the mark
 under section 57, breach of fiduciary obligations of the importer/agent
to his foreign principal is a legitimate basis of attack, and the application
can succeed on this ground alone
s. 16
 the definition of use in section 4 is satisfied by the applicant, since the
fruit was marketed under its trademark, which also appeared on the
promotional materials sent by the applicants
 under section 16, an applicant is entitled to registration of the
trademark if he has used or made known in Canada in association with
the wares, and it is not confusing with the trademark previously used in
Canada
o Manhattan Industries Inc.: use in Canada by a wholesaler or
distributor of goods bearing the mark of the foreign trademark
owner was use by the former owner, not the Canadian importer
 based on this reasoning there has been no use in Canada by the
respondents, and therefore they were not entitled to registration of the
trademark
 the absence of a written agreement or of the exclusivity does not alter
its status as importing agent, who alternately owns a fiduciary duty of
care to its principal. This duty is breached by the registration of the
trademark rightfully belonging to CGA
 section 17 merely requires that a prior user not have abandoned use of
the mark as at the date of the application
 the respondent although it was the 1st to user as well as the party
making known the Mark, did so in law on behalf of of the rightful owner,
whose consent it had not obtained. The respondent therefore cannot
invoke the limitation. In section 17
Registrability of the mark
 the mark itself is descriptive us the name of the fruit
Sequa Chemicals Inc. v. United Color & Chemicals Ltd. [1993] FCA
F
SUNREZ
 Respondent an American company which produces in the US, under the
TM, a paper-coating insolubilizer used in the paper-coating industry.
 Appellant a Canadian company, was a distributor of paper chemical
109
I
H
products of the respondent.
 The distributorship agreement was terminated.
 The respondent applied for the TM itself in Canada
Entitlement and use
 Applicant is an interested person
 Section 16 requiring trademark not be confusing with trademark
previously used or made known in Canada by another to secure
registration
 in this case, the marks not only confusing, that they are identical
 Used by distributor constitutes use by the manufacturer. So the TM was
previously used by the applicant in Canada within the meaning of section
16.
 Section 18 stipulates that trademark may be invalid if the owner of the
mark is not entitled to secure its registration subject to subsection 17.
 Section 17 stipulates that registration of a trademark that's not invalid
based on 1st use of confusing trademark if previous user subsequently
abandoned the Mark.
 The applicant never abandoned the Mark since they continued to use the
mark in the US in addition, there's no evidence of intention to abandon the
Mark.
 Sequa Chem Was entitled to registration of the trademark in Canada
 Section 17 is not a barrier to expungement. United, as the distributor, is not
entitled 2 registration in Canada of the trademark.
 The applicant has also discharged the onus of proving the trademark has
not adapted to distinguish the United’s products
 Evidence establishing Mark made known in Canada coupled with use in the
US sufficient to show trademark is not distinctive of another party
(b) Make Known in Canada
s. 5 and making known in Canada
 Section 5 sets out the circumstances in which a trademark is deemed to have
been made known in Canada
 the provision requires that the market that used by that person in a country
of the Union, other than Canada, in association with wares or services, and
o (a) The wares were distributed in association with it in Canada, or
o (b) The wares for services are advertised in association with it in
 (i)Any printed publications circulated in Canada in the
ordinary course of commerce among potential dealers in or
users of the wares or services, or
 (ii) Radio broadcasts ordinarily received in Canada by
potential dealers in or users of the wares were services
o And it has become well known in Canada by reason of the distribution
or advertising
Note:
110


Although the language of the provision contains outdated technological
specificity, this provision is still narrowly interpreted.
A person who fails to bring his dealings within the strict confines of section 5
may nonetheless be able to establish sufficient goodwill in the foreign market
in the Canadian marketplace to be able to assert common-law rights and
thereby prevent passing off in Canada.6
Rober C. Wian Enterprises Inc. v. Mady [1965] Can. Ex. Ct.
F
 Applicant for expungement the owner of the TM BIG BOY in association
with hamburgers in the US
 The TM in the US has been licensed for use by franchise holders
 Expungement was seeking on:
o TM invalid it was confusing with a TM previously made known in
Canada pursuant to s. 16(1)(a)
o D not satisfied that they were entitled to use their TMs in Canada
I
The meaning of making known in Canada
H
 That in order to show that the trade marks under consideration were,
prior to April 12, 1955, made known in Canada by some other person,
the plaintiff must establish that, (a) the trade marks were, prior to April
12, 1955, used by the plaintiff in the United States in association with
wares or services, (b) that such wares or services were, prior to April
12, 1955, advertised in association with the trade marks in (i) any
printed publication circulated in Canada in the ordinary course of
commerce among potential dealers in or users of such wares or
services, or (ii) radio broadcasts, as defined in the Radio Act, ordinarily
received in Canada by potential dealers in or users of such wares or
services, and (c) that such trade marks had, prior to April 12, [page4]
1955, "become well known in Canada" by reason of "such . . .
advertising".
 2. That to bring itself within the exception under s. 16 of the Trade
Marks Act, the plaintiff must establish that each trade mark attached
was "confusing" with a trade mark that had been made known in
Canada in the manner set out in s. 5 of the Act at the date on which the
applicant for registration of the trade mark "first so used it".
 3. That in addition to having established that the trade marks had been
"made known in Canada" by the plaintiff itself prior to April 12, 1955,
within the meaning of those words as defined by s. 5 of the Act, the
plaintiff must also have discharged the burden imposed upon it by s.
17(1) of the Act, of showing that it had not abandoned the confusing
trade marks at the date of advertisement of the defendant's applications
and it must have established that the trade marks attached were
"confusing" with the trade marks so made known within the meaning of
that word as defined by s. 6 of the Act.
 4. That regardless of the effect of United States legislation in relation to
the facts of this case, user by some person other than the plaintiff of
111









trade marks that are not registered under the Canadian Trade Marks
Act cannot be regarded as user by the plaintiff of these trade marks for
the purposes of s. 5 of the Act by virtue of s. 49 thereof.
5. That the provisions of s. 49 of the Trade Marks Act cannot, by any
strain placed on their words, be interpreted as applying to user that is
not in accordance with a registration under that section in respect of a
trade mark that is registered under the Canadian Act.
6. That s. 49 of the Trade Marks Act has no application to user of a trade
mark registered under United States law by a person other than the
registered owner pursuant to some United States legislative scheme for
letting persons other than owners of trade marks use them for
distinguishing their goods or wares.
7. That the plaintiff's attack on the defendants' registrations by virtue of
the wording of s. 16 of the Trade Marks Act fails because the plaintiff
has failed to establish "user" of its United States trade marks by it in the
United States.
8. That circulation of publications in the "ordinary course of commerce"
is accomplished by putting the publications into the hands of members
of the public either as subscribers or as persons purchasing from
newsstands or other outlets that exist for getting such publications into
the hands of the public.
9. That the affidavit of Robert C. Wian, sworn on August 25, 1961, is
rejected on the ground that the evidence contained therein is based on
information and belief and not on personal knowledge and so is not
admissible as this is not an interlocutory motion for the purposes of
Rule 168 of the General Rules and Orders of this Court, and, even if it
were, the evidence would be inadmissible because the affidavit does not
give the grounds of belief.
10. That it is doubtful whether s. 5 of the Trade Marks Act can be read
as providing that a trade mark is deemed to be made known in Canada
"by a person" by virtue of advertising distributed or published in
Canada when that advertising was sponsored by some other person.
11. That a thing may be regarded as known in Canada if it is known only
in some part of Canada but it is not "well known" in Canada unless
knowledge of it pervades the country to a substantial extent. A trade
mark cannot be regarded as "well known in Canada" when knowledge
of it is restricted to a local area in Canada, but it must be "well known"
[page5] across Canada "among potential dealers in or users of" the
wares or services with which it is associated.
12. That the plaintiff has adduced no evidence to discharge the burden
imposed upon it by s. 17 of the Trade Marks Act to establish that it had
not abandoned its trade marks at the date of the advertisement of the
defendants' applications for registrations of their trade marks under the
Canadian Act.
13. That it cannot be argued by the plaintiff that the defendants could
112
R
not have been satisfied that they were entitled to use the trade marks in
Canada in association with the wares or services described in the
applications; as required by s. 29, para. (i) of the Trade Marks Act, when
the plaintiff has failed to establish that the registrations were otherwise
invalid.
 14. That there is no provision in the Trade Marks Act under which the
failure of the defendants to include in their applications for registration
of their trade marks a statement that they were satisfied that they were
entitled to use the trade marks in Canada in association with the wares
or services described in the applications, is a basis for finding that the
registrations are nullities.
Expungement based on s. 16(1) must establish:
 in order to show that TM made known in Canada by some other person, the
plaintiff must establish that,
o (a) the trade marks were, prior to the date of the first alleged use
by the applicant, used by the plaintiff in the United States in
association with wares or services,
o (b) that such wares or services were, prior to the date of the first
alleged use by the applicant, advertised in association with the
trade marks in
 (i) any printed publication circulated in Canada in the
ordinary course of commerce among potential dealers in
or users of such wares or services, or
 (ii) radio broadcasts, as defined in the Radio Act,
ordinarily received in Canada by potential dealers in or
users of such wares or services, and
o (c) that such trade marks had, prior to the date of the first
alleged use by the applicant, "become well known in Canada" by
reason of "such . . . advertising".
 The applicant also must show the confusing mark has not been abaonded
 The applied for mark and the mark existing were confusing within the
meaning of s. 6
Principles:
 Use by some person other than the plaintiff of trade marks that are not
registered under the Canadian Trade Marks Act cannot be regarded as use
by the plaintiff of these trade marks for the purposes of s. 5 of the Act by
virtue of s. 49 thereof
 circulation of publications in the "ordinary course of commerce" is
accomplished by putting the publications into the hands of members of the
public either as subscribers or as persons purchasing from newsstands or
other outlets that exist for getting such publications into the hands of the
public.
 it is doubtful whether s. 5 of the Trade Marks Act can be read as providing
that a trade mark is deemed to be made known in Canada "by a person" by
virtue of advertising distributed or published in Canada when that
113

advertising was sponsored by some other person.
A trade mark cannot be regarded as "well known in Canada" when
knowledge of it is restricted to a local area in Canada, but it must be "well
known" across Canada "among potential dealers in or users of" the wares
or services with which it is associated.
Valle’s Steak House c. Tessier [1980] FTD
F
 P: an American corp operating a chain of restaurants in the US under the
name VALLE’S STEAK HOUSE or VALLE’S
 P registered the mark in Canada
 D:operating a restaurant in Montreal under the name VALLE’S
I
Since making known in Canada of a TM used abroad is equivalent to its use in
Canada, then whether the P had made its mark known in Canada prior to the
filing of the application by D and whether its mark was sufficiently well known
in Canada to comply with the requirements of s. 5.
H  The suggestion by plaintiff that section 5 could be interpreted as designed
simply to give evidentiary effect to the means referred to in it, without
thereby excluding the validity of other means which might be used to make
a trade mark known fails.
 Within the specific limits of that section, the evidence here was quite
sufficient to demonstrate that, before November 1972, plaintiff had
advertised its services in connection with its mark in several publications
which, although American, are circulated in Canada and in a number of
radio or television broadcasts received in Canada.
 It is clear that the means of making the mark known in Canada, provided
for by section 5, were fully used here. However, in order to be considered
"well known in Canada", it is not enough for a mark to be known merely
within the boundaries of some locality; it must be known in "a substantial
part" of the country.
 Here, the plaintiff's trade mark was known in the eastern Canadian
provinces, and in Quebec: clearly, these constitute a sufficiently
"substantive" part of the country to meet the requirements of section 5.
J
Action allowed
3. Foreign Registered Marks
s. 16(2) – title flowing from foreign registration and use
 An applicant to register a TM in Canada can base her title on a foreign
registration where the mark has been duly registered in the applicant’s
country of origin and has been used in any country.
Preferential Treatment – s. 14
 A mark with a pre-existing foreign registration enjoys an ostensibly
advantage over other marks insofar as it may be spared the rigors of a
section 12 examination
114

However, the exempt from s. 12 examination does not necessarily translate
into an actual advantage, since the key requirements of registrability remain.
s. 14 Restrability of a mark with pre-existing foreign registration
 (a) not confusing with another registered TM
 (b) not without distinctive character
 (c) not contrary to morality or public order or of such a nature as to deceive
the public; or
 (d) not a TM of which the adoption is prohibited by s. 9 or 10.
Union Carbide Corp. v. W.R. Grace & Co. [1987] FCA
F
This was an appeal from a finding that the trade mark BARRIER BAG for heat
shrinkable, thermoplastic bags for packaging food products was unregistrable
as the mark was descriptive and not distinctive. The mark had been registered
in the United States but this registration had been held invalid.
I
 the registrability of the TM BARRIER BAG under s. 12(1)(b) of the Act
 If the TM is not registrable pursuant to s. 12(1)(b), is there, pursuant to s.
14(1)(b)
o A duly registered foreign mark for BARRIER BAG for the same wares
for which the registration of the mark is sought in Canada
o If so, is it registrable because it is not without distinctive character
having regard to those factors referred to in para (b) of s. 14(1)?
 If the TM is not registrable under s. 12(1)(b) of the Act, was it distinctive of
the wares of Grace at the date of filing its application for registration so that
it may be registrable under s. 12(2) of the Act?
H Registrability and s. 12(1)(b)
 There was ample to support the finding of descriptiveness made by the
Board and in the Trial Division. That being so, and no error in principle
having been shown, this Court ought not to interfere with those findings
nor to substitute our views for those of either the Opposition Board or the
Trial Judge
Registrability and s. 14(1)(b)
 The application for registration in its very terms relied on the existence of
the US registration. To invoke section 14 a foreign registration of the trade
mark must exist at least until the date upon which registration is granted in
Canada.
 The one relied on by Grace in these proceedings has been cancelled. There
is no foundation, then, for the Registrar to grant the registration of the
mark BARRIER BAG in Canada based on the United States registration.
 If a mark to some extent in fact distinguishes the wares or services of the
owners from those of others, the mark is not without distinctive character.
In the context of this case, the trade mark being descriptive, it may not be
sufficiently distinctive to have acquired a secondary meaning in Canada to
satisfy the definition of distinctive. Nonetheless, it may have some
distinctiveness. If that is so, it is not without distinctive character in
115
Canada.
 The burden of proof of being not without distinctive character is less
stringent compared to proof of distinctiveness
 The applicant has failed to prove the mark is not without distinctive
character anyway.
Registrability and s 12(2)
 Having found already that BARRIER BAG is without distinctive character it
obviously cannot be distinctive. But if I have erred in reaching this
conclusion and even if section 14 does not otherwise apply, paragraph
12(1)(b) may enable Grace to obtain registration of its mark.
 Since Grace made the claim that its mark is distinctive, section 31 comes
into play with the result that it must furnish the Registrar with affidavit
evidence to establish the extent to which and the time during which the
trade mark has been used in Canada. The evidence provided in this case by
the Appellant was in the form of the affidavits of a trade magazine editor,
emloyees of food processors and of meat packing firms. They had been
prepared from answers given in telephone interviews by a member of the
Appellant's firm of solicitors. The deponents represented the public to
which the sale of the wares in issue was directed.
 I do not find the evidence persuasive in view of the heavy onus resting on a
party relying on subsection 12(2) for registration of an otherwise
descriptive mark.
 The paucity of persuasive evidence on behalf of Grace, the short period of
time relied upon by Grace to establish the distinctiveness of its mark and
the ambiguous and sometimes contradictory nature of some of the other
evidence from various publications, copies of which were filed by the
parties, leads me inevitably to the conclusion that the Appellant has failed
to discharge the burden of proof necessary to establish the distinctiveness
of the mark BARRIER BAG in association with the wares earlier described
within the requirements of subsection 12(2) of the Act. Grace, therefore,
also fails on this branch of its appeal.
Canadian Council of Professional Engineers v. Lubrication [1992] FCA
F
Trade mark "Lubrication Engineers" for use in association with greases, oils
and lubricants prima facie not registrable under s. 12 as describing recognized
occupation or profession
I
Whether the mark is registrable under s. 14?
H  appellant's trade mark "Lubrication Engineers" for use in association with
greases, oils and lubricants, was not registrable under section 12 of the Act.
o The words "Lubrication Engineers" describe a recognized
occupation or profession. Their use as a trade mark in association
with wares which are themselves intimately associated with the
practice of that occupation or profession fails to distinguish those
wares in any way.
o In the words of paragraph 12(1)(b), the trade mark is "either clearly
116

R



descriptive or deceptively misdescriptive of the character or quality
of the wares ... or the persons employed in their production." In the
same way as such marks as "Pipefitters" wrenches, "Doctors"
thermometers, or "Surveyors" theodolites, the trade mark
"Lubrication Engineers" grease is prima facie unregistrable.
the appellant's earlier registration of its trade mark in the United States, its
country of origin, does not serve to make that trade mark registrable under
section 14 of the Act.
o Under that section the appellant has the burden of showing that the
trade mark is "not without distinctive character" in Canada.
Whatever that burden may be, it requires at least some evidence
that the mark has become known so as to distinguish the appellant's
wares.
o In a case such as this one, where the mark itself has no inherent
distinctiveness, mere evidence of the use of the mark in association
with the wares and in advertising them (such use not even being
asserted to have been exclusive), without anything more, is not
enough to establish that it has acquired any distinctive character.
Earlier registration of trade mark in U.S.A. not making trade mark
registrable under s. 14
Burden on appellant to show trade mark "not without distinctive
character" in Canada requiring some evidence mark has become known so
as to distinguish appellant's wares
Where mark having no inherent distinctiveness, mere evidence of use of
mark in association with wares and in advertising them insufficient to
establish acquired any distinctive character
4. Proposed Use
s. 16(3) – title flowing from filing of an application for proposed TM
 S. 16(3) permits applications to register marks that have not yet been used
on the basis of proposed use
 Applicant relying on this must include in their application a statement that
the applicant, by itself or through a license, or by itself and through a
licensee, intends to use the TM in Canada, pursuant to s. 30(e).
 The system remains true to its use-based origins, by requiring a declaration
of actual use under s. 40(2) before a certificate of registration will be issued
 Where a declaration of use is not received within 6 months of the Registrar’s
notice of allowance of the mark or, if later, 3 years after the date of filing of
the application, then the application is considered abandoned pursuant to s.
40(3)
Lassonde Inc. c. Canada [2003] FTD
F
 Appeal by A Lassonde Inc. from a decision by the Registrar of Trade-marks
117





I
H



denying its request for an extension of time to file a declaration of
commencement of use of its proposed trade-mark.
Lassonde filed its application for registration of the proposed trade-mark
OASIS in 1983. The Registrar issued a notice of allowance in January 1997,
which allowed Lassonde to register the trade-mark if it filed a declaration
of use of the mark by July 1997.
Lassonde successfully applied for successive six-month extensions to file
declarations from July 1997 through August 1999, stating that it needed
further time to sign commercial agreements for the use of the marks and to
find suppliers and distributors.
In the interim, Lassonde filed a declaration of use for a small portion of the
wares and services covered by the application.
In February 2000, the Registrar refused a further extension, stating that the
reasons given for the request were no longer sufficient and that the
application would proceed to registration only for the portion of the wares
for which it had filed a declaration.
Lassonde filed additional evidence on appeal that it had used the trademark in a number of areas of its business, that the business was heavily
dependent on the trade-mark and that there had been a delay in marketing
due to the establishment of a licensing department within Lassonde.
Appeal dismissed.
The Registrar had a broad discretion to grant or refuse the request for an
extension of time. The Registrar did not err in law in refusing to grant the
extension, and was entitled to consider the reason for the request
insufficient.
The partial registration of the OASIS mark in association with a portion of
the wares did not conflict with or reduce the requirement to file a
declaration of use within a certain time. The new evidence was not
sufficient to affect the exercise of the Registrar's discretion.
Chapter 6: Assignment and Licensing
1. Assignment and License Compared
Transferring and Licensing of the TM  validity of the TMs  basis on which the
validity can be challenged
 TM is perceived as an identifier of a single source in the market place.
118



With each grant of permission to use or transfer of a mark, there is a
corresponding increase in the actual number of sources potentially
associated with the mark.
The law has adapted in response to the reality of such market transactions,
but the fact remains that in order ot be valid, a registered TM must be
distinctive.
Each license or assignment thus carries with it a certain risk to the validity
and value of the mark.
s. 48 -- assignment
 S. 48: the transfer of a TM – the assignment of a TM
o Equivalent to selling a piece of property; exchange of the Mark from
one owner to another. Happens when a owner sells his business. The
TM is sold along with other tangible properties.
o Should be compared with licensing: a license is a permit that someone
else can do something that would otherwise be an infringing conduct.
 There is usually conditions attached as to how the mark can be
used, the duration of how the mark can be used
o S. 48(1) A TM is transferrable, and deemed always to be transferrable either in
connection or separately from the goodwill of the business in respect of either all
or some of the wares or services in association with which it has been used
 One can divide it up for using it with some of the wares and keep it in
association with other wares.
 Unlike CR, one cannot divide it territorially in Canada due to the national
scope of the protection.
 A 3rd party cannot get the right to use the mark on TV while the owner
still keeps the right to use it in Quebec. Because otherwise the mark
would not be valid.
 S. 48(2): all the conditions for validity continue to apply notwithstanding a
transfer.
o If it would be confusing to use it with both cameras and TVs, it can still
be invalid in that the mark will lose its distinctiveness.
 S. 48(3): The registrar registers the transfer of the TM; but the transfer does
not depend on the registration. One is not obliged to register the transfer.
Note: the transfer of a mark can result in a loss of distinctiveness, leaving the mark
vulnerable to a challenge to validity
s. 50 -- licensing
 Not a transfer of title of a mark but rather is permissive in nature, permitting
the licensee to make certain use of a protected mark, typically subject to
certain conditions.
 1953, the New TMA permits licensing with the condition that the permitted
user registers as such. It should be a separate application to the registrar,
119



which the registrar can accept or reject. A mark can be held to be invalid if it
is not registered.
S. 50(1) provides that: if an entity is licensed to use a Mark, the owner has
direct or indirect control over the character or quality of the wares or
services, then any use of the TM by that entity is deemed to have the same
effect as such use by the owner. – use by a licensee subject to sufficient
control will accrue to the licensor
o Creates a legal fiction, a means by which to multiply the number of
users of a TM without multiplying the number of the sources
identified by the mark
o Notionally the use of the licensee’s use does not result in a second
source; rather, there is only a single source to which all of the wares
and services can be attributed. So there is no loss of distinctiveness
o It is not clear what control means: it can be direct or indirect. But it
must be active control; passive control cannot qualify – there has to be
actual monitoring, standards – mechanism through which the
character and quality can be maintained.
Where public notice is given of a licensing arrangement, sufficient control is
presumed pursuant to s. 50(2)
S. 50(3) makes it possible for a licensee to bring infringement proceedings in
his own name, if the owner refuses or neglects to do so
Magder v. Breck’s Sporting Goods Co., [1975] SCC
F
 Appellant is the registered owner of the trade mark "Mepps" used in
association with fishing tackle and, in the main, lures of various types.
 These lures are imported from France, assembled and packaged in Canada
by appellant, and bear the "Mepps" trade mark as stamped on the parts by
the French manufacturer.
 Rights to the trade mark, together with the goodwill of the business
symbolized thereby, were assigned to appellant's predecessor in 1959 by
an American company which, in 1956, had itself obtained from the French
manufacturer assignment of all rights to the trade mark together with the
goodwill of the business which it symbolized and the application for
registration of the word "Mepps" on the Canadian trade mark register.
 This application was filed by the manufacturer in 1955 and obtained by the
American company in 1956, after the assignment.
 Prior to 1959, appellant's predecessor obtained its "Mepps" lures from the
French manufacturer through an agreement with the American company
and developed a large business in Canada.
 After obtaining the assignment from the American company, appellant
signed a five-year contract with the French manufacturer guaranteeing
appellant exclusive distribution rights to the lures in Canada, and
forbidding it any dealing with products competitive to "Mepps" without the
French company's written permission. This agreement was renewed twice.
 Respondent sold "Mepps" lures in Canada in competition with appellant,
120
obtaining its lures elsewhere than from appellant or from the French
manufacturer.
 An infringement action was brought by appellant against respondent. The
latter attacked the validity of the trade mark as not sufficiently distinctive
within the meaning of the Trade Marks Act.
 The Federal Court of Appeal concluded, contrary to the trial judge, that the
trade mark lacked distinctiveness at the time when the action was begun,
and that it was invalid. Hence the appeal to this Court.
I
Whether the mark is invalid as being non-distinctive?
H  Section 47 of the Trade Marks act does not permit untrammelled
assignment in gross without regard to the associative character of the
assigned trade mark in identifying the goods as those of the assignee
owner.
o The TM continues to identify the French manufacturer
o the mark should have been licensed instead of being assigned, since
the marks continue to identify the foreign source.
o “it is not enough for the appellant to rely on its registration and on
the fact that it has promoted, by assiduous cultivation of the market
in Canada, the widespread sale of Mepps lures if it be the case that at
the material date or dates, those wares, so marked by the French
supplier, have not become identified with the appellant as its wares
either as their manufacturer or seller. It was no this basis that the
appellant contended that the trial judge’s findings of the fact should
be sustained and that the FCA had wrongly interfered with them.
 Protection against public deception resides in the definition of
distinctiveness in s. 2(f) and in the application of s. 18 of the Trade Marks
Act.
 The appellant's contention that it can obtain an assignment in gross of a
trade mark 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 with the mark
attached thereto by the latter, cannot be accepted.
 It would not satisfy the requirement of distinctiveness under the Canadian
legislation, especially in view of the agreements between appellant and
Mepps.
Comment: the foreign manufacturer can apply in Canada and register if nobody else
has become associated with the mark in association with fishing gears.
Smith & Nephew Inc. v. Glen Oak Inc. [1996] FCA
F
 This was an appeal from a Trial Division decision granting respondent's
application for an interlocutory injunction to enjoin the appellants from
selling and distributing products bearing the "Nivea" trade-marks.
 The appellants are importers and distributors of beauty products bearing
the "Nivea" trade-mark, namely facial cream which is manufactured and
put on the market by a Mexican affiliate of a German company, Beiersdorf
121
I
H
AG (BDF).
 The respondent also markets in Canada goods bearing the "Nivea" trademark which are manufactured in the United States by a wholly owned
subsidiary of BDF.
 At one time, the respondent had been the owner of the Canadian trademarks, as well as of the goodwill associated with the Nivea name and
distinctive get-up, but that situation ceased in 1992 when the marks and
goodwill were sold to BDF and the respondent became a registered user
and licensee of BDF's marks.
Whether the respondent as licensee of Canadian registered trade-marks could
assert any rights against persons importing, distributing and selling goods
bearing those same trade-marks which the owner thereof has put into the
stream of commerce.
 The respondent could not assert rights other than those which may flow to
it from the Trade-marks Act and its status as licensee of the registered
Nivea marks. Neither could it bring a common law action for passing off.
 The purpose of a trade-mark is to distinguish and identify the origin of
goods to which it is affixed. The respondent, as Canadian licensee and
importer of goods bearing BDF's trade-marks, could not complain of the
sale in Canada of other goods which are also manufactured by or under
license from BDF and bear the same trade-marks.
o There could be no deception as to the origin of the goods, which are
exactly what they purport to be, Nivea facial cream and soap, the
quality and character of which are controlled by BDF.
o There was no evidence that the appellants have obtained the goods
illegally and they had no obligation either in contract or under the
provisions of the Trade-marks Act not to compete with the
respondent in the Canadian market.
o The respondent's only rights were as licensee and not as owner of
the trade-marks in question. It could not assert rights as a licensee
against goods which, directly or indirectly, originate with its
licensor.
 The respondent could not assert rights to a statutory action in passing off
under section 7 of the Trade-marks Act even if paragraph 7(b) had the
reach contended for by it and created protection for other than
unregistered trade-marks.
 The wares sold by the appellants and the respondent were not theirs but
rather those of BDF. The latter alone owned the trade-mark and the
goodwill associated with it and the statutory passing-off action, like its
common law counterpart, could only be brought by it as the owner of such
goodwill.
 The specific statutory rights which registration of a trade-mark vests in the
owner or registered user thereof could not avail the respondent against
goods emanating from the registered owner of the marks. In its application
for an interlocutory injunction the respondent failed to establish that it had
122
advanced a serious case to be met and such application should therefore
have been dismissed.
Comment: Parallel importing issue cannot be really addressed in TM law since there
is no misrepresentation, confusion and deception.
 Kraft Canada Inc v. Euro Excellence Inc.
o The law of CR may be employed to achieve the result that TM law and
policy denies.
o Under CRA s. 27(2)(e), it is a secondary infringement of CR to import
to Canada for trade distribution purposes copies of a work that the
importer knows or should have known would have infringed CR if
they had been made in Canada.
o TM may enjoy CR protection if they meet the minimal threshold of
original expression, such that many logos in particular may be
protected as artistic works.
o The importation of goods bearing the logo may give rise to secondary
liability.
2. Control of Character or Quality: Section 50
Licensing and Control
 In order for use by a licensee to accrue to a licensor, s. 50(1) requires a
license, and an exercise of direct or indirect control of the character or
quality of the wares or services
Note: this applies to both registered and unregistered marks. Whether the level of
control is sufficient to meet the demands of s. 50(1) is a question of fact to be
determined on a case-by-case basis
Eli Lilly & Co. v. Novopharm Ltd. [2000] FCA
F  Eli Lilly Canada Inc., a wholly-owned subsidiary of the United States-based
Eli Lilly and Company, both sell fluoxetine hydrochloride under the brand
name Prozac.
 Lilly Canada marketed Prozac under a licensing agreement with Lilly U.S. In
1996, after the expiry of the patent for Prozac, the respondents entered the
market with products of similar appearance.
 In the Trial Division, the appellants claimed that the respondents had
passed off their generic fluoxetine hydrochloride capsules as the appellants'
Prozac brand. The Trial Judge stated that the issue was whether the capsule
appearance of the Lilly fluoxetine was distinctive as an indication of trade
source or provenance, and whether the use of a similar capsule appearance
by the defendants would result in a likelihood of confusion.
 Reed J. found that the appellants had not proven that the size, shape and
colour of the Prozac capsules had acquired a secondary meaning or that the
respondents' sale of their product was likely to cause confusion. She further
found that there was no valid licence to use the size, shape and colour of
Prozac as a trade-mark. This was an appeal from that decision.
123
I
H
Passing off and licensing arrangement
Passing off
 In Ciba-Geigy, the Supreme Court confirmed the three necessary
components of a passing-off action and noted that a manufacturer must
avoid creating confusion in the public mind by a get-up identical to that
of a product which has acquired a secondary meaning by reason of its
get-up. The S.C.C. also pointed out that while it is the competitor who is
chiefly concerned by the unfair act of passing-off, there is also a public
interest concern: the protection of customers. It observed that drug
companies are limited in the way of distinguishing the get-up of their
products: their shape, size and colour. S.C.C. determined that
patients/customers were to be included in the target clientele, together
with physicians, dentists and pharmacists.
 The Ciba-Geigy decision stands for two propositions: the target clientele
in the pharmaceutical field encompasses the patient; and the general
rules in a passing-off action apply to the prescription drug market
without any difference or exception. It cannot be said that the S.C.C. is of
the view that the appearance of a prescription drug constitutes in every
case a trade-mark right. Each case must be demonstrated by relevant
evidence.
 The dispute herein concerned the extent to which potential patients and
members of the general public were to be included as the target
clientele in a passing-off action in the field of prescription drugs. The
Trial Judge did not apply Ciba-Geigy incorrectly, nor did she misdirect
herself as to the law. In effect, she found that the scope of "target
clientele" did not matter since the get-up had not become sufficiently
associated with the product to create confusion with the respondents'
products. It was open to the Trial Division Judge, as a trier of fact, to
conclude that the appellants had not met the requirements of a passingoff action.
s. 50
 Although it was not necessary to pronounce on the question whether
Reed J. had correctly interpreted subsection 50(1) of the Act, the Court
dealt with this issue in view of its importance and because it was
pronounced upon by the Judge below. The 1991 and 1995 agreements
and subsection 50(1) of the Act dispose completely of the respondents'
argument that the use by Lilly Canada of the alleged trade-mark rights
of Lilly US was unlicensed and that the appellants' claim should have
failed for that reason. Subsection 50(1) of the Act, enacted in 1993, must
be read in the light of the pre-existing registered user provisions it
replaced. Those provisions required that a licensee be a registered user
if the trade-mark was registered. The mischief to be remedied by the
new subsection 50(1) was the restrictive character of the existing law
relating to the transfer and licensing of trade-marks. The new provision
revoked the concept of registered user. The respondents relied upon
124
the case of Robert Crean & Co., Ltd. v. Dobbs & Co., [1930] S.C.R. 307, but
that decision was one of the reasons why legislation was enacted to
change the law.
 The court found that Lilly US controlled Lilly Canada’s use of the capsule
appearance and directed it to use the green and cream and green and grey
capsules.
o Because the direction to use the trade dress and the element of
control retained by Lilly US, there is control over the product.
 any interruption of the line indicative of origin of the goods was
regarded as vitiating the trade mark. Thus, any assignment of a trade
mark not accompanied by the goodwill of the whole of the business
concerned in the goods in association with which the trade mark was
used, or any licensing of its use by others than the trade mark owner,
rendered the mark, in the eyes of the law, non-distinctive and hence
invalid and open to use by anyone.
 But the trend of thought has been increasingly in favour of discarding
the indication of origin theory of trade marks. It has gradually come to
be recognized that this theory is not based so much on common sense
as had been supposed.
 Origin and ownership are by no means the sole indication of a trade
mark. We feel that modern commercial development has demonstrated
that the public is not so much interested in source as in the
maintenance of quality, kind and type. Rules which were valid in the
days of simple and closely connected trade relationships show many
discrepancies and absurdities when forced to accommodate themselves
to the established circumstances of modern commercial practice and
usage.
 there is no logical reason for fettering the disposition or use of trade
marks with artificial and antiquated rules and restrictions
 The Trial Judge ignored completely the direction to use the trade dress
given by Lilly U.S. to Lilly Canada, and the element of control retained by
Lilly U.S. which was explicit in the 1991 agreement as key to the
retroactive effect of subsection 50(1) of the Act.
Tommy Hilfiger Licensing Inc. v. Produits de Qualite I.M.D. Inc. [2005] FC
F
 Action by the plaintiff Tommy Hilfilger Licensing alleging that the
defendants Quality Goods, a souvenir products manufacturer, and Harry
Rosen, its President, infringed five trade-marks held by Hilfilger.
 Hilfilger also alleged passing-off and depreciation of the value attached to
the trade-marks.
 The defendants sought dismissal of the action on the grounds that that the
trade-marks were invalid. Rosen also sought damages for loss of sales and
profit caused by Hilfilger's actions.
I
H  The logo used by Quality Goods infringed s. 20 of the Trade-marks Act
125
because it was likely to cause confusion with the main Hilfilger Mark.
 The main Hilfilger trade-mark was inherently distinctive and a prima facie
strong mark. It was considerably more distinctive than Quality Goods' logo
and had been in use longer.
 There was additionally a clear overlap in the nature of both the products
and the trade of both companies.
 Lastly, the Quality Goods bore a high degree of visual resemblance to the
Hilfilger trade-mark, as both consisted of the same colors and special
arrangement, with the former adding only Canadian place names or the
phrase Explore Canada.
 There was no likelihood of confusion with respect to two of the Hilfilger
trade-marks, which were sufficiently different from the Quality Goods logo,
nor with respect to two other Marks, which were for wares of a different
nature than those sold under the Quality Goods logo.
 There was no evidence of a depreciation of the goodwill attached to the
Hilfilger trade-marks, or that Hilfilger suffered any loss as a result of Quality
Goods passing off its goods as Hilfilger goods.
 There was no infringement under s. 19 of the Trade-marks Act, as logo used
by Quality Products was not identical to the Hilfilger trade-mark.
 Rosen was not personally liable as there was no evidence that he ever acted
outside his capacity as director or officer of Quality Goods. Rosen's
counterclaim was dismissed due to lack of evidence. The trade-marks were
valid. The Hilfiger trade-mark was distinctive both at the time of
registration and at the commencement of the counterclaim.
 Though the 2001 reorganization of Hilfilger resulted in a transfer of the
trade-marks, no confusion concerning the trade-marks was created by the
transfer, which was properly effected between Hilfilger companies.
Effect of the transfer
 I admit that it is possible that as a result of a transfer that the right to use a
trade-mark may subsist in two or more person, therefore, creating some
confusion as of what is the source of the product. Such confusion may have
the effect of interfering with the trade-mark distinctiveness.
 The transfer was not made between companies that had absolutely no link.
Those companies are all subsidiaries of TH Corp. This transfer occurred
following the reorganization of THC. The company to which the licence was
transferred is still a Tommy Hilfiger company. Therefore, I cannot conclude
that it could or had created confusion regarding the source of the wares.
 he transfer between THC and THC Retail has not caused the marks to lose
distinctiveness. In order for a mark to lose its distinctiveness, the transfer
must create a confusion in the customer's mind regarding the source of the
product. In the present case, the source of the wares is Tommy Hilfiger and
because the transfer was made to a subsidiary of Tommy Hilfiger, I do not
believe that a customer would have been confused about the origin of the
wares. In addition, the defendants did not present any evidence to establish
that a confusion in regard of the source of the product occurred.
126
Licensing
 Since the merger of THI with THUSA in 1994, THUSA's functions have not
changed. THLI does control the character and quality of the wares. Even if
quality control is executed by another Tommy Hilfiger subsidiary, it does
not mean that a lack of quality control exists. To the contrary, in the present
case, THLI has a Service Agreement to ensure that the control is present.
Since this control was established according to certain guidelines, I have no
problem concluding that THLI does control the quality of the product even
though it does not manufacture the goods. The delegation of such an
obligation is not fatal to the licence and the registration.
 use by a registered owner (now a licensee) has the same effect as use by the
owner. He however held that it does not mean that the owner must be
deemed to be engaged in the manufacture, sale, leasing or hiring of the
wares or the performances of the services in association with which the
trade-mark is used.
Dynatech Automation System Inc. v. Dynatech Corp. [1995] TMOB
F
TM in association with computer apparatus
I
Whether the use shown of the trademark in Canada in association with
communication apparatus, Namely computer peripherals exceptional is use, or
more accurately, deemed use by the registered owner
H  The registrant has the legal and practical ability to intervene if it is not
satisfied with the use being made of the trademark
 Control merely by share ownership does not appear to satisfy the
requirement of section 50(1) of the Act, since section 50 (1) clearly states
that the owner must help under the license control over the character and
quality of the wearers. The fact that the registrant cam controlled is used by
the licensee would not appear to be sufficient.
Comment: one cannot just rely on corporate structure to demonstrate adequate
control.
Chapter 7: Invalidity and Expungement
1. Gounds for Invalidity and Expungement
Grounds on which a TM may be found invalid – s. 18
 s. 18(1)
o initial non-registerability
 relevant date: the date of registration
o current lack of distinctiveness
 relevant date: the date of bringing the proceeding
o abandonment; and
127


o inferior title
s. 18(2): a mark that was used by the registrant and had acquired
distinctiveness at the date of registration will not be invalid merely due to a
failure to submit evidence of distinctiveness before registration
o relevant date: post-registration becomes the date of registration
although not expressly mentioned in the language of s. 18, false information
or a material misrepresentation may also be grounds for invalidating a mark.
The federal court of Canada stressed action to expunge a mark that has been found to
be invalid from the register as per section 57 of the trademarks out
A mark is always vulnerable to the challenge of its initial register ability pursuant to s.
18(1)(a)
A TM owner must police his TMs
 Section 18 charges trademark owners with the responsibility of maintaining
the capacity of the mark to distinguish its source throughout its life.
 .Failure to oppose confusing marks, prevent infringing uses, or keep the
public informed about the changing use, or trade source of a mark risks the
validity of a registered mark.
Policing a mark should be without delay
 where there has been prejudicial delay bya P in complaining about the D’s
mark or their use, courts are loathe to interfere and reward such inertia.
 Equitable defense of acquiescence may be raised where the mark is belatedly
under attack even though the courts recognized invalidity and expungement
challenges carry no limitation period.
o The compound word Coca-Cola, having been registered in Canada as
early as 1905 and used by the P as its trade name and TM in
connection with the sale of its beverage, could not then be attacked by
a D in 1936, given the balance of equities lies Pepsi-Cola of Canada
Ltd.
o Where a mark has stood unchallenged on the register for many years
it will not be expunged where grave commercial injustice would
thereby result The Canadian Law of TMs and Unfair Competitions
s. 57: confer jurisdictions on the federal court to order something struck or amended
on entries of the register.
 A competitor or someone having an interest in the confusing mark may bring
the action
 The register did not correctly express or define the existing rights of the
person appearing to be the registered owner of the mark.
S. 58 provides for how proceedings under s. 57 shall be instituted
s. 45: Registrar may request evidence of user
 To clear the dead wood on the register
128

If a TM owner has not used a mark for 3 years preceding the notice in Canada,
then a registration may be struck on that basis.
 The registrar may at any time gives notice to the owners, requiring the
owner to show that the mark has been used within the 3 years preceding the
notice.
o The failure to use the mark makes the mark vulnerable
Note: Every abandoned mark is not used; but not every non-used mark is
abandoned.
 There is a genuine discretion on the part of the registrar to accept excuses
within the limit of statutory languages.
o S. 45(3) Special circumstances might be taken to excuse the non-use.
2. Loss of Distinctiveness
s. 18(1)(b) the loss of distinctiveness of a mark
 A mark is distinctive if it distinguishes the wares or services in association of
which it is used
 If it ceases to be distinctive, it is vulnerable for being not distinctive
 Allowing others to use its mark or similar marks; if the owner fails to police
the mark adequately, then the mark can cease to be distinctive and lose the
ability to distinguish.
 One can lose the distinctiveness and regain it. So long as the mark is not
challenged at that period, the mark is safe; otherwise the mark would be
struck. The owner might have to seek new registration of the mark and make
sure the public is aware of the re-launch of the mark.
Heintzman v. 751056 Ontario Ltd [1990] FTD
F
 Application to expunge trademark for loss of distinctiveness.
 The mark "Heintzman" was registered in 1926 in association with pianos
manufactured by Heintzman Co., the applicant's predecessors.
 The mark was generally identified in Canada with the high quality pianos
manufactured by Heintzman Co.
 Upon changes in ownership of the Company, the applicant gained
ownership and control of three of the Company's retail outlets and was
allowed to use the trademark as part of its business name and style.
 The applicant diversified its business into selling and servicing pianos
manufactured by other companies.
 Heintzman Co. was later sold to the respondent company, together with the
trademark.
 The respondent used the acquired trademark on pianos manufactured by
other companies and imported from other countries. The applicant sought
to expunge the trademark for lack of distinctiveness.
I
H  Application granted.
129





A trademark by definition must be and remain distinctive of a single source. It must
distinguish the goods and services of its owner from the goods and services of all others.
In the present case, the trademark did not lose its distinctiveness by reason of use by any
member of the Heintzman family, including the applicant.
However, the mark lost its distinctiveness when the respondent used the mark in
connection with pianos obtained from other sources than those which the public
associated with the mark.
Accordingly, the mark as registered for the respondent would be expunged from the
Register of Trade Marks.
“The function and purpose of a TM is to indicate the source from which goods come.” “the
mark, at least, allows a purchaser to tell whether or not the goods have came from a source
in which he or she has confidence.”
Comments:
 line-drawing pbl: it is a business decision as to where to make the pianos and
what kind of quality is aimed at. Is it legitimate for the court to interfere?
A disconnect between the message and the reality
Aladdin Industries Inc. v. Canada Thermos Products Ltd. [1969] Can. Ex. Ct.
F  In 1964 a company which competed with respondent in the manufacture
and sale of vacuum bottles etc. in Canada applied under s. 56 of the Trade
Marks Act to expunge respondent's trade mark, THERMOS, registered in
Canada in 1907 and in 1960, and in Newfoundland in 1908, on the grounds
that the word "thermos" was generic and not distinctive at the dates of
registration and also at the date these proceedings were commenced, and
that the registrations were therefore invalid under s. 18(1)(a) and (b).
 Subsequently the original applicant was liquidated and its parent company,
which was also in competition with respondent, was, with respondent's
consent, given leave to continue the proceedings; the style of cause was
amended accordingly but the original pleadings remained unamended.
 Evidence was lacking as to usage of the word "thermos" in Canada and
Newfoundland in 1907 and 1908 but it was established that by 1960 the
word had come into common use as a generic word descriptive of the
ordinary vacuum bottle and that it was also distinctive of respondent's
vacuum bottle both to the trade and in a lesser degree to the public when
purchasing vacuum bottles.
I
H Held, the application must be dismissed.
 1. None of the Canadian registrations was invalid under s. 18(1)(a) as not
being registrable when registered. In 1907 the word "thermos", taken from
the Greek word for hot, was a new and freshly coined fancy word without
obvious meaning to ordinary Canadians and it was therefore registrable
under the Trade Marks and Designs Act For the like reason the trade mark
SUPER THERMOS was registrable in 1931: the addition of SUPER to
THERMOS did not make the trade mark descriptive or non-distinctive. In
1960 the word "thermos", although commonly used in a descriptive sense
for ordinary vacuum bottles, was not a merely descriptive word but was
also distinctive of respondent's bottles and it was therefore registrable
130








2. None of the Canadian registrations was invalid under s. 18(1)(b) as not
being distinctive when these proceedings were commenced in 1964.
Although the word "thermos" had become generic and descriptive by 1964
the trade marks were distinctive of respondent's bottles to a substantial
portion of the consumer public throughout Canada in 1964.
3. As to the Newfoundland registration in 1908, applicant had not satisfied
the onus of establishing that the trade mark was not then registrable under
the Newfoundland statute respecting trade marks, viz c. 112 of the
Newfoundland Consolidated Statutes 1896 (2nd series).
4. In the interests of justice the proceedings should not be dismissed on the
narrow technical ground that the present applicant was not an "interested
person" within the meaning of s. 56 of the Trade Marks Act at the time these
proceedings were commenced.
6. Whether a common word used in the ordinary way in the English or
French languages is generic, and what it means, are not questions on which
expert opinion evidence should be received. whether the judge must decide
those questions solely on the evidence or may use his own knowledge of the
word and of the way persons use and respond to it in conversation in
ordinary society.
7. While the court may refer to dictionaries these do not always reflect
accurately the true meanings of words.
8. Respondent's contention that a trade mark may lose distinctiveness only
through the actions of its owner is incorrect.
9. Respondent's contention that the application should be dismissed
because of laches and acquiescence by appellant in delaying the
commencement of these proceedings until 1964 could not be upheld.
10. Appellant's contention that respondent's trade marks were "deceptively
misdescriptive" of its non-vacuum insulated wares such as ice buckets and
chests within the meaning of the quoted words in s. 12 of the Trade Marks
Act was without merit: it had validity only if "thermos' were synonymous
with "vacuum insulated" which it was not.
 The evidence establishes two facts of major importance insofar as this
case is concerned.
o The first is that at the date the proceedings were commenced the
words "thermos" and "thermos bottle" had come into popular
use in Canada and, when used in relation to the common kind of
vacuum bottles, the kind found in the average home, were used
and understood by persons of average education and intelligence
in ordinary society as generic words descriptive of that class of
bottle, and they had fallen, into the day-to-day English and
French languages of the Canadian people as synonymous with
"vacuum bottle" in English and "bouteille isolante" in French,
and as descriptive of the common household vacuum bottle.
o an appre-ciable portion of the population in Canada knew and
recognized the respondent's trade mark "THERMOS" and its
131





significance, and that to them it was distinctive of the
respondent's vacuum bottles.
the more successful the manufacturer of a product, identified by some
registered word mark, is in inducing the public to consume his product,
the nearer he approaches the end of the user of his trademark even
though originally it was a proper entry. The implications from such a
state of the law are considerable and serious, and even with statutory
authority existing to expunge trade-marks in such a condition of facts,
one can readily perceive the difficulties in justly resolving the many
complex issues which might arise.
Notwithstanding my conclusion as to the generic and descriptive use of
the word "thermos" ' I do not think that the trade marks should be
found to be invalid under section 18(1)(b)
There are conflicting interests among the manufacturers and sellers of
vacuum bottles. There is the interest of the respondent to maintain its
trade mark and to have the advantage of whatever good reputation is
associated with that trade mark. There is the interest of the applicant to
be allowed to use the generic term "thermos" in connection with its
vacuum bottles so as to improve its competitive position.
There is a real risk that an appreciable number of ultimate purchasers
might be misled or confused if imported bottles and bottles of
manufacturers other than the respondent are marked thermos bottles.
endeavoring to balance the several conflicting interests involved, of
which the public interest is paramount, I have come to the conclusion
that expungement of the respondent's trade mark would involve the
risk above mentioned and that the risk is sufficiently serious to override
the disadvantage under which the applicant is labouring in not having
the use of the word "thermos" in its business
Comment:
 The use of the mark in a generic sense does harm the goodwill of the P. see s.
20(1)(b)(ii).
 The public interest: public is at the heart of the dispute. In this case, evidence
shows that the consumers are not really rational: the D’s products are better
and cheaper. So the public interest is not to be confused. But there are other
interests under the rubric of public interest, such as access to cheap products
with comparable or better quality.
3. Abandonment and Non-Use: Use it or Lose it
S. 18(1)(c) – abandonment or non-use
 Non-use and demonstrate intention to abandon or no intention to use.
 A pattern of use and not policing the use of the marks by others – can
demonstrate the intention to abandon the mark and thereby making the
mark struck.
132

Not all marks that are not used are abandoned. It is not uncommon that the
mark is not used but aggressively defended  it means the mark is not
abandoned by lack of the intention to abandon.
Evidence and Use or Intention to Use
 Even with evidence that an owner fully intends to assume or resume using
the mark, however, a mark may be struck from the register in the absence of
actual use under s. 45.
 Not any use will do.
 Minor changes in the mark risk compromising the integrity of the message
conveyed in the minds of the consumers, and ultimately protection under the
TMA.
 In determining whether a mark has been abandoned, courts will also
consider the intention of the owner, the practice of the owner, and any
specicific extenuating circumstances that may excuse the non-use.
Summary expungement – s. 45
 To facilitate the registrar with housekeeping to clear the deadwood in the
register
 Two means for summary expungement proceedings to be initiated:
o The registrar may at any time give notice to the registered owner of
the trademark requiring a sworn affidavit or statutory declaration
showing, with respect to each of the wares or services specified in the
registration, whether the trademark was he using Canada at any time
during the 3 years immediately preceding the date of notice and
reason for not use.
o Section 45 also allows for summary expungement where any person
as defined under section tool, after 3 years from the date of
registration, pays the prescribed fee and makes a written request to
the registrar to give the same notice
o Note: in either case the owner has 3 months to comply with the
registrar's request and provide evidence of use
 subsection 45 (3) outlines effect of non-use and provides that, in the absence
of special circumstances that excuse non-use, the registration of the
trademark is liable to be expunged or amended accordingly
 An appeal will lie to the federal court of Canada out for a trademark that has
been expunged pursuant to section 56.
 If the decision is not appealed, the registrar is bound to execute his section
45 decision
note: section 45 summary procedure is not meant to substitute for section 57 inter
partes expungement proceeding before the federal court, where other issues for
attacking validity under section 18 may be raised.
133
(a) Use and Non-Use
Promafil Canada Ltee v. Musingwear Inc. [1992] FCA
F
Fat penguin vs. Slim penguin
I
H Held, the appeal was allowed, the decision of the trial Judge was set aside and
the action for expungement was dismissed.
 The trial Judge committed a palpable and overriding error in finding that
the visual impact of the two designs was substantially different.
 The two designs were different but they differed only in petty details. Both
designs were of a spread-eagled, formally dressed penguin, with head, beak
and limbs turned similarly. It was permissible for appellant to have more
than one almost-identical designs in use at the same time.
 Appellant did not have to maintain absolute identity of its mark in order to
avoid abandonment. Appellant only had to have such an identity of its mark
as to maintain recognizability and avoid confusion on the part of unaware
purchasers.
 Use may be recognized despite of slight deviation from registered marks.
 the applicable test:
o The practical test to be applied in order to resolve a case of this
nature is to compare the trade mark as it is registered with the trade
mark as it is used and determine whether the differences between
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 the same origin.
 In a theoretical way, as to the maintenance of identity and recognizability in
spite of the use of different forms of the mark; in a practical way, by
estimating the likely confusion of an unaware purchaser.
 The Canadian law emphasizes the maintenance of identity and
recognizability and the preservation of dominant features,
 The dominant impression created by the dominant features in both designs
is that of a spread-eagled, formally dressed penguin, with head, beak and
limbs turned similarly.
 Canadian law does not incorporate a linear view of trade mark registration
but can tolerate multiple variants of a mark.
 Obviously, with every variation the owner of the trade mark is playing with
fire. In the words of Maclean J., "the practice of departing from the precise
form of a trade mark as registered . . . is very dangerous to the registrant."
But 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.
(b) Excuse for Non-use
Non-Use
 S. 45 proceeding
134



o Can be initiated at any time by any person.
o 3 years preceding the notice.
If the use under s. 4 is not shown, then evidence of the last use and an excuse
for not having used it since.
Services must be performed in Canada for the use to count.
Q: what is an acceptable excuse?
o The reason why the mark has not been used should be unusually,
uncommon and exceptional.
 Normal strategic decisions do not count
McCain Foods Ltd. v. Chef America Inc. [1996] TMOB
F
 P brings s.45 claim against D for lack of use of TM’s on food items:
Breakfast Pockets, Hot Pocket, Lean Pockets. D argues that, although it
admits to over-running the 3 year period during which a TM must be
shown to be “in use”, several factors (including an earthquake knocking out
the main plant) forced them to delay their planned introduction of the
items. Why use the term “brand” – make sure that the public understands
that it’s a brand and not a product.
 The products are not going to sell well in Canada. Marketing strategies pbls.
Production pbl so a new facility was built. And then major earthquake.
I
H  The court considers extensive evidence of intent (product development,
market strategies etc) and a challenge of the non-usage provision of s.45
under s.45(3) allowing for the consideration of special circumstances if a
last date of use is not provided.
 D: The finding of the court on the facts was that a genuine intention to
use the mark in Canada existed, allowing the invocation of s.45(3) to
protect its registration.
 Note: The court chose to protect the “Hot Pocket” registration only, as the
evidence brought before the court only supported this registration.
 Notes Lander case : special circumstances have to be special – which
means that they have to be out of the ordinary, and cannot just be on
the basis of your own personal choices on what makes economic sense
at a particular time. So for example in the Lander case: there was an
argument that their had been a downturn in the market – industry
recession – economic conditions were poor. Therefore, they had decided
not to use the mark yet, decided to wait for an upturn in the market. BUT,
poor market conditions are not the kind of special circumstances that s.
45(3) imagines. The idea here is that the circ’s should be unusual,
uncommon or exceptional.
 Three criteria concerning non-use & special circumstances
o Length of time during which TM has not been in use
o Determination whether the registered owners reasons for not
using the TM were due to special circumstances beyond its
control
135



o Serious intention to shortly resume use
Intention is key – if they don’t’see that, they’ll be inclined to strike..,
Hearing officer thought that all of the problems, when examined together –
short time window, changes to product, US demand, construction of new
plant, earthquake,  these were circ’s outside of the control of the
registrant. So registration was allowed to survive. At end of judgment:
consider yourself notified, we expect use NOW, so you can’t sit back on
your mark anymore.
Conscience strategic business decisions are not enough…
Scott Paper Ltd v. Smart & Biggar [2008] FCA
F
 Appeal by Scott Paper from a decision allowing the respondents' appeal
from a decision of a Senior Hearing Officer finding that a 13-year period of
deliberate non-use of a trade-mark could be excused by a registrant's
intention to use the mark in the near future.
 In accordance with the procedure set out in subsection 45(1), on April 29,
2002, the Registrar, at the request of Smart & Biggar, gave notice to the
appellant to show whether the registered trade-mark VANITY had been
used in Canada in the three years preceding the giving of the notice, and if
not, to show the date of the last use and the reasons for the absence of use.
 The appellant responded by filing the affidavit of Teijeira, the appellant's
Marketing and Legal Affairs Manager. The affidavit set out that as of the
date of the section 45 notice, plans were already well underway to
commence use of the mark in 2002 and that, as of the date of the affidavit,
October 28, 2002, such sales had already begun.
 According to the affidavit, the appellant's Away from Home Division began
to discuss and review the re-introduction of the VANITY brand as early as
late summer 2001.
 Given the absence of any evidence of use, the Senior Hearing Officer
considered that the date of last use was the date of acquisition of the trademark by the registered owner, March 28, 1989, approximately 13 years
prior to the decision.
 After reviewing the affidavit and other evidence, the Senior Hearing Officer
concluded that there was a serious intention on the part of the appellant to
resume use of the trade-mark prior to being served with the s. 45 notice.
 The Senior Hearing Officer decided that that amounted to special
circumstances within the meaning of s. 45. He concluded that the trademark was not deadwood and should not be expunged.
 On appeal to the Federal Court, that Court concluded that the Senior
Hearing Officer erred in applying the law to the facts in finding that a 13year period of deliberate non-use could be excused by a registrant's
intention to use the mark in the near future. In the Court's view, that
conclusion was not reasonable.
I
Does evidence of an intention to resume use of a trade-mark which has been
absent from the marketplace for some 13 years, coupled with evidence of a
136
H
single sale transaction amount to "special circumstances" that justify the
absence of use of the trade-mark for the purposes of section 45
Appeal dismissed.
Test for s. 45:
 the length of non-use
 whether the non-use was due to circumstances beyond the registered
owner's control, and
 whether there was an intention to resume use of the mark in the near term.
General Principle of s. 45
 The general rule was that absence of use was penalized by expungement.
 There was an exception to the general rule where the absence of use was
due to special circumstances.
 Special circumstances were circumstances not found in most cases of
absence of use of the mark. The special circumstances that excused the
absence of use of the mark had to be the circumstances to which absence of
use was due.
Application to the case
 This last factor was sufficient to dispose of the appeal. In this case, it was
clear that the 13-year absence of use was due to a deliberate decision not to
use the mark.
 A registrant's intention to resume use of a mark which had been absent
from the marketplace, even when steps had been taken to actualize those
plans, could not amount to special circumstances which excused non-use of
the trade-mark. The plans for future use did not explain the period of nonuse and therefore could not amount to special circumstances.
Chapter 8: Infringement – Section 19
and 20
1. Understanding Infringement
s. 19, 20 and 22 – scope of rights and basis for infringement
 Section 19, 20 and 22 established the scope of all rights of a registered
trademark owner in her mark and are the basis for bringing an action for
infringement.
 These provisions are not available to owners of unregistered marks, who are
restricted to actions brought under the common law or section 7
137
s. 19



s. 20




s. 22


Section 19 establishes the exclusive right of the owner to the “use throughout
Canada out of the trademark in respect of those wares or services” in
association with which it is registered.
The section also conveys the presumption of validity that exists for a
registered mark unless invalidity is shown
In order to make out a s. 19 case, a P must prove a D has:
o Employed the mark as registered
o in association with wares or services for which its use is registered
o the Mark must have been used within the meaning of section 4
o been used as a trademark with the function or effect of the
distinguishing source
Section 20 deems it to be an infringement of the trademark owner's exclusive
right where a person “sells, distributes or advertises wares or services in
association with a confusing trademark or trade name”
To make out a s. 20 case, a P must prove a D has:
A confusing Mark within the meaning of section 6
o in association with the same or different wares or services
o in the sale, distribution or advertising of wares or services
o as a trademark or trade name
Note: Whether they use requirement for a section 20 infringement require us
section for use is a matter open to dispute
o In Michelin, the court refused to confine an infringement under
section 20 in the absence of a section 4 use
Section 22, further prohibits the use of a registered trademark in a manner
that is likely to have the effect of depreciating the value of the goodwill
attaching thereto
To make out a s. 22 case:
o The use of the mark as registered
o in association with the same wares or services
o A technical use of the mark
o the function or effect need not be used as a trademark to distinguish
source–it is enough that the use is likely to depreciate the value of the
goodwill attached to the registered mark
UNDERSTANDING CANADIAN TRADEMARK
INFRINGEMENT
Prof. C. Craig
138
TMA
Section
The Mark
The Goods and
Services
The Use
The Function
or Effect
Section
19
As registered
The same
Section 4 “use”
As a trademark
Section Confusingly similar (s. 6) Can be different “Sells, distributes or As a trademark
20
(s. 6)
advertises in
association with
wares or services”
Section
22
Casual observer would
recognize mark – make
“link, connection,
mental association”
(Veuve)
Can be different
Section 4 “use”
Likely to
depreciate the
value of the
goodwill
attached to the
mark
2. Section 19 Infringement
Clairol International Corp. v. Thomas Supply & Equipment Co. [1968] Can Ex Ct
F
 Defendants marketed hair colouring products under the trade marks
Revlon and Colorsilk, employing advertising brochures and packages which
contained colour comparison charts of defendants' and competitive
products in which plaintiffs' products were identified by their registered
trade marks Miss Clairol and Hair Color Bath.
 The plaintiffs' trade marks were widely advertised and their hair colouring
products dominated the market.
I
H Defendants were not in violation of secs. 7(d), 7(e) or 19 of the Trade Marks
Act but were in violation of s. 22, and plaintiffs were entitled to relief including
damages.
 Defendants' representations did not falsely describe defendants' products
in a material respect and so violate s. 7(d) of the Trade Marks Act.
 Defendants' reference to plaintiffs' products was not "contrary to honest
industrial or commercial usage in Canada" within the meaning of s. 7(e) of
139
the Trade Marks Act as being a device for describing defendants' products
as equivalent to plaintiffs' and thus to obtain the benefit of the goodwill
which plaintiffs had built up over a long period by great effort and massive
advertising. In the context of section 7 as a whole para. (c) does not prevent
a person from taking advantage of a market situation created by the efforts
of another if the means used are not dishonest.
s. 19
 While defendants' use of plaintiffs' trade marks on the packages though not
in the brochures, was a use of those marks in association with the packaged
wares within the meaning of s. 4(1) defendants did not thereby infringe
plaintiffs' exclusive right to the use of those marks under s. 19, which right,
in view of the definitions of "use" and "trade mark" in secs. 2(v) and 4, does
not apply to use of a trade mark otherwise than to identify the user's wares.
 4. In placing plaintiffs' trade marks on the packages (though not in the
brochures) defendants used the marks, in association with their wares
within the meaning of s. 4 "in a manner likely to have the effect of
depreciating the value of the goodwill attaching thereto" within the
prohibition of s. 22 of the Trade Marks Act. The verb "use" in s. 22(1) is to
be interpreted by reference to the definition of the noun "use" in s. 2(v).
The goodwill attached to a trade mark is that portion of the goodwill of the
business of its owner consisting of the whole advantage, whatever it may
be, of the reputation and connection which may have been built up by years
of honest work or gained by lavish expenditure of money and which is
identified with the goods distributed by the owner in association with the
trade mark. Depreciation of the value of that goodwill occurs whether
through reduction of the esteem in which the mark is held or through
enticement of customers for goods bearing the mark (though not from loss
of exclusive rights as a result of use by others, since that affects the trade
mark itself rather than the goodwill attached to it).
 The presence of the plaintiffs' marks on the defendants' packages is a use of
those marks "in association with" the wares in the defendants' packages
within the meaning of section 4(1)
 The presence of the plaintiffs' marks on the comparative shade charts of
the defendants' brochures is not a use of such marks within the meaning of
section 4(1) since the brochures are neither the wares themselves nor the
packages
 Any association of the plaintiffs' marks with those wares, so far as I am
aware, ever occurs in any use to which the brochure or its chart can be put
at the time of the transfer of the property or possession of the defendants'
goods to their purchaser.
 The exclusive right to the use of such mark in association with such wares
or services (within the meaning of sections 2(v) and 4) for the purpose of
distinguishing the wares or services as being those of the user of the trade
mark or of a defined standard from others.
 Confers an exclusive right to the use of the trade mark upon or in
140



connexion with the goods in respect of which it is registered, and that
therefore, where the trade mark is a word, that word cannot be used by
anyone else upon or in connexion with such goods even though the use is in
a phrase or sentence intended to indicate that the goods are not goods
originating with the owner of the registered mark.
The phrase "the exclusive right to the use of such trade mark" carries in my
opinion the implication of use of the mark for the purpose of indicating in
relation to the goods upon or in connection with which the use takes place,
the origin of such goods in the user of the mark by virtue of the matters
indicated in the definition of "trade mark" contained in Section 3.
In these circumstances, it is, I think, abundantly, clear from looking at the
packages that the marks, Miss Clairol and Hair Color Bath, are not intended
to indicate and do not indicate to anyone that the contents of the package
are the defendants' goods. Nor do I think it likely that any prospective
purchaser of a package of these wares would be likely to be deceived by the
presence of the marks, Miss Clairol and Hair Color Bath, as they appear on
the package, into thinking that they were intended to indicate the origin of
the goods in the package.
Some importance to bear in mind that in the case of the packages the attack
failed not because the trade marks were not used "in association with" the
defendants' goods within the meaning of sections 2(v) and 4(1) but
because the use made of them "in association with" the defendants' goods
was not a use for the purpose of distinguishing the goods as goods of the
defendants and for that reason alone was not a use the exclusive right to
which had been conferred on the plaintiffs by section 19.
Mr. Submarine Ltd v. Amandista Investment Ltd. [1987] FCA
F
 The appellant, registered owner of the trade mark "Mr. Submarine",
specializes in the sale of submarine sandwiches.
 It sought, but was denied, an injunction to prevent the defendant from
using the trade marks "Mr. Subs'N Pizza" and "Mr. 29 Minite Subs'N Pizza"
in relation to the sale of submarine sandwiches and pizza.
 The facts show that the appellant's mark has been used and advertised
extensively, that its business focuses on walk-in trade while that of the
respondent focuses on telephone orders, and that both businesses have
been operating since 1976 in the Halifax-Dartmouth area.
 The appellant submits that by using "Mr. Subs" as part of its trade mark, the
respondent has taken an essential element of the appellant's trade mark,
thereby infringing section 19 of the Trade Marks Act which gives to the
owner of a registered trade mark the exclusive right to the use of that mark.
 The appellant also submits that the Trial Judge erred in finding that the
respondent's marks were not confusing with those of the appellant.
I
H the appeal should be allowed.
 The appellant's submission that its exclusive right has been infringed by
141




the respondent on the basis of section 19 alone is rejected.
o It would appear that only the taking of a trade mark as registered
can maintain an action based solely on section 19, without reference
to any likelihood of confusion (section 20) or depreciation of
goodwill (section 22).
o A right of action based on the taking of a part of the registered mark
or on the use of a similar trade mark must arise, if at all, under
section 20 or 22. That issue was not finally determined since it was
clear from the facts of the case that the trade mark "Mr. Submarine"
had neither been taken nor used by the respondent.
The Trial Judge was wrong in emphasizing the differences between the
trade marks rather than considering their similarities from the point of
view of a consumer with an imperfect recollection of the appellant's mark
or business.
The Trial Judge also erred in taking into account the parties' different
business systems (telephone and delivery system as opposed to walk-in
trade), and the fact that the respondent's business is predominantly that of
selling pizza.
Furthermore, he should not have taken into account the style of lettering,
the colouring of the signs and the appearances of the marks on signs, boxes,
etc. The latter are relevant considerations in a passing off action. They are
irrelevant in a proceeding for infringement of a registered trade mark. They
should be given no weight in determining the issue of confusion.
Reference was made to subsection 6(5) of the Act to determine the issue of
likelihood of confusion.
o Although no instance of actual confusion had come to light, it was
nevertheless found that the use of the marks in the same
geographical area was likely to lead to the conclusion that the marks
are in some way associated with one another.
o While the degree of resemblance between the marks is small when
the marks are considered as a whole, there are respects in which
they are manifestly similar, in particular in the combination of "Mr."
with "Submarine" and "Mr." with "Subs".
o They have partial similarity in appearance, whether written or
printed, in sound, and in ideas suggested by them. All the marks
suggest a business in which submarine sandwiches are sold. Both
"Mr. Submarine" and the respondent's marks depend for their
distinctiveness in whole or in part on the association of a word
meaning a submarine sandwich with the courtesy title "Mr.".
o The respondent is enjoined from using the word "Mr." in association
with the word "submarine" or "subs" or any other word suggestive
of submarine sandwiches.
142
3. Section 20 Confusion Infringement
Pepsi-Cola Co. v. Coca-Cola Co. [1939] SCC
F
Pepsi vs. Coca-Cola
I
H  Plaintiff's action for infringement should be dismissed. Defendant's attack
against plaintiff's trade mark fails, except that this Court makes no order on
defendant's counterclaim in respect of plaintiff's registration in 1932;
subject to that, the counterclaim is dismissed.
Per The Chief Justice and Rinfret, Davis and Hudson JJ.:
 Though "coca" and "cola" is each a descriptive word, it does not follow that
a trader cannot join them into a compound which, written in a peculiar
script, constitutes a proper trade mark.
 If there ever was any legitimate ground for impeaching the 1905
registration of "coca-cola," there has been such long delay and acquiescence
that any doubt must now be resolved in its favour. It would be a matter of
grave commercial injustice to cancel the registration which has stood since
1905 and become widely used by plaintiff.
 As to defendant's contention that one of plaintiff's courses of dealing-selling its syrup to some 80 different bottling concerns throughout Canada
who add carbonated water according to standard instructions and then
bottle the beverage and sell it as coca-cola to retail dealers--constitutes a
public use of the word "coca-cola" as the name of a particular beverage and
an abandonment of the word as a trade mark for the product of a particular
manufacturer:--There may be some force in that contention, but the
evidence at the trial was not developed sufficiently on this branch of the
case to show explicitly how these bottling concerns or the retail dealers
who purchased from them actually sold the beverage, and if said course of
dealing were to be relied upon as an abandonment by plaintiff of its trade
mark, the facts should have been plainly established.
 Plaintiff had not established a claim for infringement from defendant's use
of the trade mark "Pepsi-Cola." In the general attitude taken by plaintiff, its
objection really went to the registration by any other person of the word
"cola" in any combination, for a soft drink; and if such objection were
allowed, then plaintiff would virtually become the possessor of an exclusive
proprietary right in relation to the word "cola"; and to this it was not
entitled. (In this connection it was held that 30 certificates of registration of
trade names or trade marks in which the word "cola" or "kola" in some
form was used were admissible as some evidence of the general adoption
of the word in names for different beverages or tonics.) It cannot be said by
tests of sight and sound that "Pepsi-Cola" bears so close a resemblance to
"Coca-Cola" as to be likely to cause confusion in the trade or among the
purchasing public. Each case depends upon its own facts.
 In the present case further circumstances that might be taken into account
were: That "Pepsi-Cola" as a registered trade mark in Canada had stood
143








unimpeached since 1906, and the evidence disclosed that pepsin and cola
flavour actually formed part of the ingredients of the beverage
manufactured and sold by defendant as pepsi-cola; that no application in
objection to defendant's corporate name was made by plaintiff following
upon defendant's incorporation; that there was no evidence that anyone
had been misled, and where a defendant's trade is of some standing the
absence of any instance of actual confusion may be considered as some
evidence that interference is unnecessary. Under all the circumstances of
the case, commercial injustice would follow the injunction sought by
plaintiff against defendant's use of the mark "Pepsi-Cola."
While the rules of comparison for testing an alleged infringement of a
registered mark resemble those rules by which the question of similarity
on an application for registration is tested, it is necessary to establish a
closer likeness in order to make out an actual infringement than would
justify the refusal of an application to register; the burden on a plaintiff in
an infringement action is to show reasonable probability of confusion,
while an applicant for registration must establish, if challenged, the absence
of all reasonable prospect of confusion.
R: Even common words, when used in the form of compounds are
registerable marks, and for consideration for confusion, marks may
only be considered in their entirety.
H: When considered in their entirety, there is no similarity in sound,
appearance, or general impression* of the marks, therefore “confusion”
is not a consideration.
General note: these factors may now be supported by the use of survey
evidence (non-existent in 1940) We’ve come across this case before – but
before it was 12(1)(b) context (clearly descriptive section)
I: Here the question is: Is Pepsi-Cola confusingly similar to Coca-Cola?
We know that this means – is the Pepsi mark likely to be mistaken
signifying that Coca-Cola is the source of the product. WHAT’s important:
it’s a Q of fact, case by case basis, so authorities aren’t that helpful. So you
have to look at the act, look at the marks in front of us, and formulate an
opinion on that basis. Here we have the word Cola – that’s the crux of the
similarity b/w the two marks in question. Also relevant that what was
distinctive of the Coca-Cola mark was it’s nature as a compound mark,
where Coca-Cola where put together, and the particular script in which
they were written.
Here all that pepsi has really done is use “cola”  court notes that what is
protected is the “whole mark as registered” – but a part of the mark
might be so taken and used which amounts to a substantial taking of
the whole
So the court seems to frame this that confusion is TM’s law of substantial
taking – i.e. is this taking so substantial that it encroaches on the rights of
the TM owner? What we’re doing is comparing the marks as a whole to see
what has been taken and if that’s enough to amount to an infringement.
144







Reason we’re doing this under s. 20 – is b/c it’s not the same mark. If
someone was using Coca-Cola then it’d be s. 19 thing here it’/s a diff. mark
so we’re instantly dealing w/ s. 20 even though it’s the same wares.
One of the big things that’s important here is that we’re considering the
mark as a whole – even where parts of that mark might not be
protected. E.g. cola is descriptive, coca might be descriptive, but put it
together and you have a mark. But you still have to consider if there’s an
infringing /confusing use – b/c cola is part of the whole mark. It also seems
to follow that you only take the thing that’s not protected, or the thing that
is disclaimed, then its very unlikely that you’ll be found to be infringing.
Only thing here they took is cola – and cola itself is not what made the TM.
Coca-Cola does not have a right in the word cola standing on its own. 
would be a monopoly
Coke is really attempting to secure a monopoly in the word cola
If such objection is allowed coke has an exclusive proprietary right in
relation to the word cola
So when assessing confusion, same types of elements are creeping in to the
analysis – assess confusion and infringement bearing in mind the need to
allow freedom of competition. Not to disadvantage competitors who want
to sell a similar drink w/ a different name.
So the analysis of how they compare the mark Look at different factors
and similarities,  look at sounds, appearance, general impression on the
mind of the ordinary person  they find there is more contrast than there
is similarity. They cannot say by tests of sight and sound that the
compound word pepsi cola bears so close a resemblance to coca cola as
to be likely to cause confusion in the trade or among the consumers.
Differences apparent. So PEPSI might be the thing of arresting significance
that means Pepsi-cola is something that is obviously different from Cocacola. Pepsi actually distinguishes the product from Coca-cola Also based
upon the peaceful coexistence of the mark – the fact that there wasn’t
evidence of actual confusion although there had been plenty of time where
in cases of actual confusion could have arisen if that was going to happen.
Sun Life Assurance Co. of Canada v. Sunlife Juice Ltd. [1988] ON HC
F
I
H
D: SL Juice P: Sun Life
 D changed its label slightly in response to P’s complaint
whether the defendant's use of the plaintiff's mark in association with the sale
of its juice is confusing
P entitled to an injunction
 If the use of the mark is confusing, then there is s. 20 infringement. It does
not matter that the wares are not of the same type. The test is likelihood of
confusion
 While it may be said that there is nothing particularly distinctive about the
word "Sun" or the word "Life", it is the use of those two words linked
145










together as one word and extensively used as such which gives it its
distinctiveness
It is not necessary in an infringement action to show that there has been
actual confusion; it is necessary only to show a likelihood of confusion.
The defence argued strenuously that because the wares of the plaintiff and
defendant were so dissimilar there was no realistic chance of confusion.
The plaintiff has established on the evidence that it has long used the trade
mark or trade name SUNLIFE in connection with its promotion of physical
fitness, cultural events and its many wares and services offered to the
public. Its usage is widespread and established.
The onus in this situation is on the defence to establish, if it can, that the
difference in wares is such that there is no likelihood of confusion. This the
defence has failed to do. That statement is made but no evidence called to
support the statement. In fact the only evidence relating to confusion is the
survey evidence tendered by the plaintiff which I accept and which proves
the contrary.
And in any event, while the wares of the plaintiff and defendant may seem
dissimilar in the first instance, it cannot be forgotten that the plaintiff has
made extraordinary efforts in this country to promote physical fitness. It
has done so by sponsoring a variety of athletic and sporting events. The
defendant's products are juices which on the admission of the defendant
company's principal, were chosen because of the public's concern for
matters of health.
It is not inconceivable, with respect to Mr. Birken, to imagine that a bottle of
the defendant's juice may very well end up beside the plaintiff's brochure at
one of these sporting events.
For all of these reasons I reject that defence.
The defence also argued that by changing its labels to read "Sunlife Fresh"
it had effectively removed any likelihood of confusion. The answer to such
argument is first, that the product continues to be advertised by the use of
the name "Sunlife" alone without the additional word "Fresh"
In addition, the added word does not dispel confusion."No amount of added
matter intended to show the true origin of the goods can affect the
question, ... Indeed, as indicated in a number of cases, the very fact that
additions are made to a trade mark by a defendant only serves to show that
the defendant knew he was sailing close to the wind ..."
the doctrine of laches cannot apply where a limitation period has not yet
expired.
Mr. Submarine Ltd v. Amandista Investment Ltd. [1987] FCA
F
 The appellant, registered owner of the trade mark "Mr. Submarine",
specializes in the sale of submarine sandwiches.
 It sought, but was denied, an injunction to prevent the defendant from
using the trade marks "Mr. Subs'N Pizza" and "Mr. 29 Minite Subs'N Pizza"
in relation to the sale of submarine sandwiches and pizza.
146



I
H
The facts show that the appellant's mark has been used and advertised
extensively, that its business focuses on walk-in trade while that of the
respondent focuses on telephone orders, and that both businesses have
been operating since 1976 in the Halifax-Dartmouth area.
The appellant submits that by using "Mr. Subs" as part of its trade mark, the
respondent has taken an essential element of the appellant's trade mark,
thereby infringing section 19 of the Trade Marks Act which gives to the
owner of a registered trade mark the exclusive right to the use of that mark.
The appellant also submits that the Trial Judge erred in finding that the
respondent's marks were not confusing with those of the appellant.
the appeal should be allowed.
 The appellant's submission that its exclusive right has been infringed by
the respondent on the basis of section 19 alone is rejected.
o It would appear that only the taking of a trade mark as registered
can maintain an action based solely on section 19, without reference
to any likelihood of confusion (section 20) or depreciation of
goodwill (section 22).
o A right of action based on the taking of a part of the registered mark
or on the use of a similar trade mark must arise, if at all, under
section 20 or 22. That issue was not finally determined since it was
clear from the facts of the case that the trade mark "Mr. Submarine"
had neither been taken nor used by the respondent.
 The Trial Judge was wrong in emphasizing the differences between the
trade marks rather than considering their similarities from the point of
view of a consumer with an imperfect recollection of the appellant's mark
or business.
 The Trial Judge also erred in taking into account the parties' different
business systems (telephone and delivery system as opposed to walk-in
trade), and the fact that the respondent's business is predominantly that of
selling pizza.
 Furthermore, he should not have taken into account the style of lettering,
the colouring of the signs and the appearances of the marks on signs, boxes,
etc. The latter are relevant considerations in a passing off action. They are
irrelevant in a proceeding for infringement of a registered trade mark. They
should be given no weight in determining the issue of confusion.
 Reference was made to subsection 6(5) of the Act to determine the issue of
likelihood of confusion.
o Although no instance of actual confusion had come to light, it was
nevertheless found that the use of the marks in the same
geographical area was likely to lead to the conclusion that the marks
are in some way associated with one another.
o While the degree of resemblance between the marks is small when
the marks are considered as a whole, there are respects in which
they are manifestly similar, in particular in the combination of "Mr."
147
o
o
with "Submarine" and "Mr." with "Subs".
They have partial similarity in appearance, whether written or
printed, in sound, and in ideas suggested by them. All the marks
suggest a business in which submarine sandwiches are sold. Both
"Mr. Submarine" and the respondent's marks depend for their
distinctiveness in whole or in part on the association of a word
meaning a submarine sandwich with the courtesy title "Mr.".
The respondent is enjoined from using the word "Mr." in association
with the word "submarine" or "subs" or any other word suggestive
of submarine sandwiches.
Veuve Clicquot Ponsardin c. Boutiques Cliquot Ltee [2006] SCC
F
 VEUVE CLICQUOT – famous champagne
 The appellant seeks to stop the respondents' group of six women's wear
shops in Quebec and eastern Ontario from using the tradename Cliquot and the respondents' own registered trademarksCliquot and Cliquot "Un monde à part", and to have these trademarks expunged from the Register.
 The appellant claims that consumers will likely be confused to the point of
thinking that the women's clothing and the champagne originate with the
same source, thereby infringing the appellant's registered trade-marks
contrary to s. 20 of the Trade-marks Act.
 It further claims that even if the respondents' use is not confusing, that use
nevertheless depreciates the value of the goodwill attaching to its mark,
contrary to s. 22 of the Act.
 The Federal Court concluded that the appellant was not entitled to
expungement. Taking all the surrounding circumstances into account, the
trial judge found there was little, if any, risk of confusion as to source.
 She also found that the use by the respondents of their registered trademarks did not reduce the value of the goodwill attaching to the appellant's
VEUVE CLICQUOT mark.
 The Federal Court of Appeal upheld the decision.
I
s. 20 infringement and s. 22 infringement
H s. 20
 The question whether there exists a likelihood of confusion is largely one of
fact. Since this is an infringement claim rather than an opposition
proceeding, the onus was on the appellant to prove such likelihood on a
balance of probabilities.
 Under s. 6(2) of the Trade-marks Act, confusion occurs "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."
 In every case, the factors to be considered when making a determination as
to whether a trade-mark is confusing to the somewhat-hurried consumer in
148



"all the surrounding circumstances" include, but are not limited to, those
enumerated in s. 6(5) of the Act. The fame of the mark is not, as such, an
enumerated circumstance (although it is implicit in three of the
enumerated factors, namely inherent distinctiveness, the extent to which a
mark has become known, and the length of time that it has been used).
The trial judge's finding that VEUVE CLICQUOT is a "famous" mark is of
importance in considering "all the surrounding circumstances" because
fame presupposes that the mark transcends at least to some extent the
wares with which it is normally associated. However, the fact of being
famous or well known does not by itself provide absolute protection for a
trade-mark. It is one factor which must be assessed together with all the
others.
Here, having regard to all the surrounding circumstances and the evidence
before the trial judge, there is no basis to interfere with her conclusion that
there was no likelihood of confusion between the two marks in the relevant
markets. The VEUVE CLICQUOT trade-mark, registered in 1899, is
distinctive. The respondents' women's wear boutiques are also known in
the area in which both trade-marks are used. Their marks, which were
introduced in 1995, are not famous. However, the difference between the
appellant's luxury champagne and the respondents' mid-priced women's
wear is significant. While some trade-marks transcend the wares, services
and businesses with which they were originally associated, no witness in
this case suggested that the VEUVE CLICQUOT mark would be associated by
ordinary consumers with mid-priced women's clothing.
The respondents' goods and those of the appellant also move in different
channels of trade and distribution. While it was unnecessary to lead
evidence of actual confusion, it is nevertheless relevant to note that no such
evidence was adduced. The appellant's expert witness did little to suggest a
likelihood of confusion; at most, she speculated about possibilities. Having
considered all of the surrounding circumstances the trial judge held that
ordinary consumers would be unlikely to make any mental link between
the marks and the respective wares and services of the parties saying that
in her view "... it is not likely that a consumer would think the plaintiff was
affiliated with the defendants or that the plaintiff had granted a third party
a licence to allow it to use the distinctive part of its mark in association
with a women's clothing store". The appellant thus failed to discharge its
onus of proving a likelihood of confusion.
4. Exception to Infringement
(a) Bona Fide Use Defense
There is no fair dealing defense as in CR law. Only:
 any bona fide use of one’s personal name as a trade-name, or
 any bona fide use, other than as a TM,
149
of the geographical name of his place of business
of any accurate description of the character or quality of his wares or
services
Where the TM owner owns a prima facie unregistrable mark under s. 12.
 A trade mark does not include trade name.
 None of the defenses allow for use as a TM.
o Not much of a defense as a confirmation of the limits of the owner’s
rights.
It also has to be demonstrated that one is not going to depreciated the value
attached to the mark before one can avail himself of the defense.
 Can save for use of confusing trade name
 Can not save someone who is liable for s. 19: use of a TM
 Cannot save someone who is liable for s. 22: depreciation of goodwill.
o E.g. someone registered Sparkly for kitchen wares: describe the wares
and the not depreciating the goodwill.
Nothing benefitting from these defenses would not have been an infringement in the
first place.
o
o
Limited defense for good faith users – s. 20
 Rationale: TMs ought not to prevent other traders either from using their
own name in association with, or from accurately describing, their wares and
services
 S. 20(1): no registration of a TM prevents a person from making
o (a) any bona fide use of his personal name as a TM, or
o (b0 any bona fide use, other than as a TM,
 (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
TM
Defense narrowly drawn – heavy burden of proof
Bagagerie Sa v. Bagagerie Willy Ltee [1992] FCA
F
 Appeal from a decision dismissing an application for a permanent
injunction and damages to prohibit the respondent from using words "La
Bagagerie" in its trade name.
 The appellant relied on sections 20 and 22 of the Trade-marks Act. The trial
judge had held there was no possibility of confusion.
I
Bona fide defense
H Appeal allowed.
 The trial judge erred in applying section 6. There was a risk of confusion.
 The defence under section 20 could not stand as the word "bagagerie" was
not descriptive of the articles sold by the respondent but was at most
suggestive.
 The trial judge had misunderstood the meaning of the word in French.
150







R: While the s.20(1)(b)(ii) exclusion was allowed at trail, on appeal the
judge states that under the circumstances the trial judge misinterpreted the
connotation of “bagagerie” as it was in the French language, and thus not
eligible for protection as if it were recognizable in English.
D: Hence, the court finds on prima facie confusion as per s.6(1) of the
Act.
But b/c he uses Bagegerie in his Trade Name, he’s defending himself from
an action of infringement
And the Trial judge had found that there wasn’t any confusion b/c of the
nature of the trade & the nature of the wares. But here FCA – the court
thinks that this would be confusing usage, and unless he has another
defence, he can’t operate under this name so his defence is that Bagagerie
is an accurate description of the wares he sells
I : So is Bagagerie descriptive?
Testimony over the meaning of the words…
What the court concludes word Bagagerie is not descriptive, at most its
suggestive – why?  court thinks based upon evidence, baggage is when
you have your stuff in your luggage, BUT he’s not selling luggage that has
stuff in it, he’s selling empty luggage which would be a valise and not a
baggage A lot of testimony – and if it’s not accurately describing your
product, it doesn’t fit within s. 20(b)(ii) the defence cannot stand
Guccio Gucci S.p.A. v. Meubles Renel Inc. [1992] FCA
F
 The appellant appealed a trial judge's finding that it had infringed, passed
off, and depreciated the goodwill in the respondent's trade-marks.
 The appellant had been permanently enjoined from selling furniture in
association with the marks "PAOLO GUCCI" and "PAOLO DESIGNED BY
PAOLO GUCCI" as they were infringing on the respondent's mark "GUCCI",
registered in association with clothing and gift items.
I
Bona fide use defense
H The appeal was dismissed.
 The appellant failed to establish three of the four conditions required to be
fulfilled for the exception in s. 20(b)(ii) of the Trade-Marks Act to become
operative, and as such the trial judge's conclusion as to infringement stood.
 Although the court was not prepared to conclude there was a lack of bona
fides on the part of the appellant, and although the mark was incapable of
registration as a trade-mark, the mark was in use as such, which was
sufficient for a finding of infringement.
 The appellant had used the labels and insignia to distinguish his wares. The
appellant failed to demonstrate that the furniture in question was in fact
designed by the individual Paolo Gucci. Finally, the appellant was unable to
impeach the finding that the appellant's use had had the likely effect of
depreciating the value of the admitted substantial goodwill in the
respondent's marks.
 whether the appellant could qualify for the exception to confusing use of a
151






mark legitimized by par. 20(b)(ii).Such an exception must fulfil four
conditions: the use must be
o (1) bona fide,
o (2) other than as a trade mark,
o (3) of an accurate description of the character of the wares or
services,
o (4) in such a manner as is not likely to have the effect of depreciating
the value of the goodwill attaching to the trade mark. It is evident
from the wording of the provision that to benefit from the exception
all four conditions must be fulfilled.
H: (1): no explicit findings as to bona fides by the trial judge, I won’t either
b/c unnecessary, in light of the appellant’s failure to qualify for the
exception under the other conditions  not prepared to find lack of bona
fide
(2): while the trademark “Paolo Designed by Paolo Gucci” may not be
registrable, it nevertheless is use as a trademark – appellant claimed that
the mark was not used to indicate the origin of the furniture, but of the
design – court: infringement consists in using the mark as a trademark as
indicating any origin (Saville Perfumery case); used mark to distinguish
his wares
(3): court: “I cannot conclude that the furniture in question was in fact
designed by the individual Paolo Gucci” thus use of the mark was not an
accurate description of the character or quality of the appellant’s wares
(4): same requirement found in s. 22(1) of act; use had likely effect of
depreciating the value of the goodwill attached to the respondent’s
trademark
court: respondent failed to establish 3 of 4 conditions required for the
exception of s. 20 (b)(ii); thus infringement under s. 20 must stand
NOTE: s. 20(1)(a) defence wasn’t used because the appellants were unable
to show any link between their business and Paolo Gucci whose name was
used
(b) Concurrent Use
s. 21—Concurrent use
 Subsection 21 (1) of the trademarks act permits a court to order that the
party may continue to use a trademark that is confusing with the registered
mark in certain limited circumstances, with adequate specified distinction
from the registered trademark, and subject to such terms as the court may
deem just.
 a concurrent use order it's available only where “any proceedings respecting
a registered trademark the registration of which is entitled to the protection
of subsection 17 (2), is made to appear to you the federal court that one of
the parties to the proceedings, other than the registered owner of the
trademark, had in good faith used the confusing trademark or trade name in
Canada before the date of filing the application for the registration, and the
152



court considers that it is not contrary to the public interest that the
continued use of the confusing trademark or trade name should be permitted
in a defined territorial area concurrently with the use of the registered
trademark”.
The availability of a concurrent use order appears designed to ameliorate the
position of a 1st user who remained unaware of another party's registration
of a confusingly similar mark until he was time-barred, under subsection 17
(2), from challenging its validity on the basis of prior entitlement
Note: the good faith use need only occur “before the date of filing of the
application” for the registered mark; party could possibly benefit from a
concurrent use order even if he could not have successfully challenge the
registrations title within the 5 years following registration of the confusing
Mark
e.g. where its good-faith use was prior to the registered owner’s application
date but subsequent to her 1st use
5-year time bar – s. 17(2)
 A party has a better entitlement if they use or make it known first. But only
have 5 years to challenge a validity of a mark on the basis of the use of a
confusing mark or making it known first.
 Under s. 17(2), a mark can no long be challenged … unless adopted in bad
faith.
 s. 21: if a mark becomes uncontestable (time bared), then it is possible to ask
the court to issue an order under s. 21: to continue to use a mark that one has
adopted in good faith before the registered TM’s application to register.
Conditions for s. 21(1)
 The mark is not challengeable pursuant to s. 17(2).
 The party other than the registered owner has in good faith before the date
of the registration used the mark.
 If the court considered not contrary to the public interest
o Defined territorial area
o Subject to the terms the court deemed to be just.
o The court may request a disclaimer.
 The concurrent use is entered into the register.
Use of two confusing marks by different persons?
 Owned by a family
 Concurrent use under s. 21
A uses (good faith)  B applies (good faith)  B registers  five years A time
barred  s. 21
Kayser-Roth Canada (1969) Ltd. v. Fascination Lingerie Inc. [1971] Can Ex Ct
F
 Plaintiff sued defendant, a company incorporated in Quebec in 1969, for
infringement of the trade mark Fascination registered by plaintiff in 1968
in respect of lingerie.
153
Defendant pleaded prior use and, pursuant to leave granted, also sought an
order under s. 21(1) of the Trade Marks Act authorizing it to use its
confusing trade mark in Quebec.
s. 21 concurrent use
 (1) It was no defence to the action that under the Quebec Companies
Act defendant was entitled and obliged to operate under its corporate
name.
 (2) A corporate name is not a "personal" name within the meaning of s.
20(a) of the Trade Marks Act.
 (3) The court could not grant defendant the order sought under s. 21(1) of
the Trade Marks Act. An order can only be made under s. 21(1) if a
registered trade mark is entitled to the protection of s. 17(2), viz, if (1) it
was registered more than 5 years before proceedings are commenced, and
(2) plaintiff adopted it without knowledge of previous user. Neither
condition obtained here.
 Furthermore, the fact that the registration of plaintiff's trade mark could be
held invalid under s. 17(1) if defendant had sought that relief did not
enable defendant to obtain the relief it claimed under secs. 21(1) and 17(2).
 Although s. 21(1) permits, under the circumstance that two “similar”
marks may be allowed in the same geographic area, to achieve this D must
show that it has used the mark consistently in the area prior to P’s
registration (if they could they would achieve a court supported alteration
of P’s protection, allowing D to a restricted geographic area of P’s
coverage). However, D cannot show use before P’s registration, and the
court reasons anyway that allowing two similar marks in the same
geographic area flies in the face of the objectives of the TM’s Act overall. D:
Injunction granted against D
 Because the D had a prior use in good faith before the registration of the
mark, they should be able to continue to use it.
 The court rejected on two grounds:
o One has to prove all the material facts necessary:
 Registration over 5 years
 S. 17(2) applies
 Not in bad faith
 Without the knowledge of prior use
 Then s. 21
 The pbl in this case: not yet 5 years. S. 17(2) does not apply so s. 21 is not
available.
 Then while the D has used the mark prior to the registration, it is not clear
that they use it before the application of the registration.
o For s. 17(2) to apply, the prior use must be prior to the date of the
application.
o So in this case, the D had no basis to challenge entitlement.
For s. 21(1) to apply, s. 17(2) must apply, which requires good faith use and
without knowledge of the prior use

I
H
R
154
Chapter 9: Depreciation of Goodwill:
Section 22
1. Depreciation of goodwill: Section 22
s. 22 – Depreciation of goodwill
 Section 22 (1) of the trademark soft states: “no person shall use the
trademark registered by another person in a manner that is likely to have the
thought of depreciating the value of the goodwill attaching thereto.”
 By virtue of section 22, the defendant may be infringing the rights of a
registered user even have she neither uses the registered mark as a
trademark nor engages in a confusing use thereof.
 the section thus significantly extends the traditional scope of trademark
protection.
 In many aspects, depreciation infringement in Canada is the policy equivalent
of the untied dilution provisions found in the US, which protect the owner of
a famous mark against any use of the mark “that is likely to cause diliution by
blurring or dilution by tarnishment of the famous mark, regardless of the
presence or absence of actual were likely confusion, of competition, or of
actual economic injury.”
Rationale for dilution liability
 The US rationale behind my pollution liability was originally articulated:
o non-confusing uses of similar marks in non-competing goods may
cause injury to a trademark owner through “the gradual whittling
away or dispersion of the identity and hold upon the public mind of
the mark.”
o A trademark owner, should be entitled to protect and preserve the
uniqueness of his mark and its psychological hold on his consumer,
which have been created by his ingenuity and the merit of his wares
or services.
 The Canadian rationale:
o the extension of trademark infringement liability is a means by which
to protect fair trading and to prevent non-confusing ues of wellknown marks that could bring such marks into contempt or disrepute
in the public mind.
o A cause of action under section 22 protects against the depreciation of
the value of goodwill attaching to the trademark or, expressed in
different terms, the dilution of the distinctiveness or the unique
character of the trademark. The advertising and sales value of the
155
trademark is in many cases depend upon its uniqueness and dilution
impairs the effectiveness of the trademark as an advertising or selling
medium. In this way the property rights in the trademark suffers
injury to the detriment of the owner
Veuve Clicquot Ponsardin c. Boutiques Cliquot Ltee [2006] SCC
F
 VEUVE CLICQUOT – famous champagne
 The appellant seeks to stop the respondents' group of six women's wear
shops in Quebec and eastern Ontario from using the tradename Cliquot and the respondents' own registered trademarksCliquot and Cliquot "Un monde à part", and to have these trademarks expunged from the Register.
 The appellant claims that consumers will likely be confused to the point of
thinking that the women's clothing and the champagne originate with the
same source, thereby infringing the appellant's registered trade-marks
contrary to s. 20 of the Trade-marks Act.
 It further claims that even if the respondents' use is not confusing, that use
nevertheless depreciates the value of the goodwill attaching to its mark,
contrary to s. 22 of the Act.
 The Federal Court concluded that the appellant was not entitled to
expungement. Taking all the surrounding circumstances into account, the
trial judge found there was little, if any, risk of confusion as to source.
 She also found that the use by the respondents of their registered trademarks did not reduce the value of the goodwill attaching to the appellant's
VEUVE CLICQUOT mark.
 The Federal Court of Appeal upheld the decision.
I
s. 20 infringement and s. 22 infringement
H s. 22
 With respect to the s. 22 depreciation claim, the appellant says that the
fame of the VEUVE CLICQUOT mark for upmarket luxury goods is such that
associating the name CLICQUOT (albeit misspelled as Cliquot) with a midrange women's clothing store robs the appellant's mark of some of its
lustre, blurring its powerful association with top quality luxury goods, and
thereby dilutes the distinctive qualities that attract high-end business. If the
champagne mark becomes associated in the public mind with a group of
mid-price women's clothing shops, the "brand equity" the appellant has
been building in France since the 18th century, and in this country since the
19th century, would be devalued and whittled away. Again, however, the
onus of proof to establish the likelihood of such depreciation rested on the
appellant. Despite the undoubted fame of its mark, the likelihood of
depreciation was for the appellant to prove, not for the respondents to
disprove, or for the court to presume.
 Section 22 of the Trade-marks Act has received surprisingly little judicial
attention in the more than half century since its enactment. It seems that
where marks are used in a confusing manner the preferred remedy is
under s. 20. Equally, where there is no confusion, claimants may have felt it
156




difficult to establish the likelihood of depreciation of goodwill. The two
statutory causes of action are conceptually quite different. Under s. 22, a
claimant must establish (1) that its registered trade-mark was used by the
defendant in connection with wares or services; (2) that its mark is
sufficiently well known to have significant goodwill attached to it; (3) that
its mark was used in a manner likely to have an effect on that goodwill
(linkage); and (4) that the likely effect would be to depreciate the value of
its goodwill (damage). Nothing in s. 22 requires a demonstration that use of
both marks in the same geographic area would likely lead to confusion. The
appellant need only show that the respondents have made use of marks
sufficiently similar to VEUVE CLICQUOT to evoke in a relevant universe of
consumers a mental association of the two marks that is likely to
depreciate the value of the goodwill attaching to the appellant's mark.
Without such a link, connection or mental association in the consumer's
mind between the respondents' display and the VEUVE CLICQUOT mark,
there can be no depreciation of the latter.
Goodwill is not defined in the Act. In ordinary commercial use, it connotes
the positive association that attracts customers towards its owner's wares
or services rather than those of its competitors. A court required to
determine the existence of goodwill capable of depreciation by a "nonconfusing" use (as here) will want to consider, amongst other
circumstances, the degree of recognition of the mark within the relevant
universe of consumers, the volume of sales and the depth of market
penetration of products associated with the claimant's mark, the extent and
duration of advertising and publicity accorded the claimant's mark, the
geographic reach of the claimant's mark, its degree of inherent or acquired
distinctiveness, whether products associated with the claimant's mark are
confined to a narrow or specialized channel of trade or move in multiple
channels, and the extent to which the mark is identified with a particular
quality.
In the instant case, the trial judge was correct to reject the s. 22 claim. The
appellant did not establish that the respondents had made use of marks
sufficiently similar to VEUVE CLICQUOT to evoke in a relevant universe of
consumers a mental association of the two marks that is likely to
depreciate the value of the goodwill attaching to the appellant's mark.
First, the respondents never used the appellant's registered trade-mark as
such. Although the use of a misspelled Cliquot would suffice if the casual
observer would associate the mark used by the respondents with the mark
of the appellant, the trial judge found that a consumer who saw the
word Cliquot used in the respondents' stores would not make any link or
connection to the appellant's mark. The appellant's s. 22 claim thus fails at
the first hurdle.
Second, while there is clearly considerable goodwill attaching to the VEUVE
CLICQUOT mark that extends beyond wine and champagne, if the casual
consumer does not associate the marks displayed in the respondents' store
157


with the mark of the venerable champagne maker, there can be no impact
on the goodwill attached to VEUVE CLICQUOT. The appellant's mark is
famous, but a court cannot assume the issue of linkage or mental
association in the appellant's favour or reverse the onus onto the
respondents to disprove such linkage. "Likelihood" is a matter of evidence,
not speculation, and the appellant's expert witness did not provide much
assistance on this point. Accordingly, the appellant failed to establish the
third element of the s. 22 test as well.
Lastly, there is no evidence of "depreciation". While the parties agreed to an
order under Rule 153 of the Federal Court Rules relieving them of any need
to call evidence as to damages flowing from any infringement alleged in this
case (i.e. the s. 20 claim), the essence of liability under s. 22 is precisely the
likelihood "of depreciating the value of the goodwill attaching" to the
claimant's trade-marks. The extent of any actual depreciation might be left
to a reference, but likelihood of depreciation is one of the elements of the
cause of action. The reference was designed to deal with the subsequent
quantification of s. 20 loss or entitlement, not the necessary conditions
precedent to s. 22 liability.
The respondents argued that the 1997 registration of their trademark Cliquot and Cliquot "Un monde à part" is a complete answer to the
appellant's claim. However, the appellant put the validity of the
registrations in issue and sought their expungement. Had the appellant
succeeded in obtaining expungement, no doubt the respondents could have
argued that they ought not to be liable to pay compensation attributable to
the period during which their own registrations were in effect. However, as
the appellants have not succeeded on this appeal, the scope of
compensation is not an issue that arises for determination in this case.
2. Comparative Advertising and Section 22
s.22 and restriction on comparative advertising
 Section 22 imposes potential restrictions on comparative advertising
practices
 it should be noted about the US dilution provision includes a specific
exception from liability for “fair use of the famous mark by another person
infant comparative commercial advertising or promotion to identify the
competing goods or services of the owner of the famous mark.”
 The fact that section 22 make Hatch even nominative uses of a mark
particularly in the context of truthful comparison by computing traders,
received some troubling questions about the scope of depreciation liability
and its potential impact on the free flow of information to consumers
Clairol International Corp. v. Thomas Supply & Equipment Co. [1968] Can Ex Ct
F
 Defendants marketed hair colouring products under the trade marks
Revlon and Colorsilk, employing advertising brochures and packages which
158

I
H
contained colour comparison charts of defendants' and competitive
products in which plaintiffs' products were identified by their registered
trade marks Miss Clairol and Hair Color Bath.
The plaintiffs' trade marks were widely advertised and their hair colouring
products dominated the market.
Defendants were not in violation of secs. 7(d), 7(e) or 19 of the Trade Marks
Act but were in violation of s. 22, and plaintiffs were entitled to relief including
damages.
 Defendants' representations did not falsely describe defendants' products
in a material respect and so violate s. 7(d) of the Trade Marks Act.
 Defendants' reference to plaintiffs' products was not "contrary to honest
industrial or commercial usage in Canada" within the meaning of s. 7(e) of
the Trade Marks Act as being a device for describing defendants' products
as equivalent to plaintiffs' and thus to obtain the benefit of the goodwill
which plaintiffs had built up over a long period by great effort and massive
advertising. In the context of section 7 as a whole para. (c) does not prevent
a person from taking advantage of a market situation created by the efforts
of another if the means used are not dishonest.
 While defendants' use of plaintiffs' trade marks on the packages though not
in the brochures, was a use of those marks in association with the packaged
wares within the meaning of s. 4(1) defendants did not thereby infringe
plaintiffs' exclusive right to the use of those marks under s. 19, which right,
in view of the definitions of "use" and "trade mark" in secs. 2(v) and 4, does
not apply to use of a trade mark otherwise than to identify the user's wares.
 4. In placing plaintiffs' trade marks on the packages (though not in the
brochures) defendants used the marks, in association with their wares
within the meaning of s. 4 "in a manner likely to have the effect of
depreciating the value of the goodwill attaching thereto" within the
prohibition of s. 22 of the Trade Marks Act. The verb "use" in s. 22(1) is to
be interpreted by reference to the definition of the noun "use" in s. 2(v).
The goodwill attached to a trade mark is that portion of the goodwill of the
business of its owner consisting of the whole advantage, whatever it may
be, of the reputation and connection which may have been built up by years
of honest work or gained by lavish expenditure of money and which is
identified with the goods distributed by the owner in association with the
trade mark. Depreciation of the value of that goodwill occurs whether
through reduction of the esteem in which the mark is held or through
enticement of customers for goods bearing the mark (though not from loss
of exclusive rights as a result of use by others, since that affects the trade
mark itself rather than the goodwill attached to it).



Claim #1: Does the use of the P’s TM by the defendant constitute infringement
pursuant to s. 19?
I: Was the trademark used by the defendant? Was the use of the plaintiff’s
trademark as a trademark?
H: The use is not as a trademark (but as a comparison); thus not infringement
159

















under s. 19
Claim #2: Does the use of the plaintiff’s trademark by the defendant depreciate
the goodwill of the trademark pursuant to s. 22?
I: Was the trademark used by the defendant? Did the use by the defendant
depreciate the plaintiff’s goodwill attaching to the trademark?
H: For P. Use of the plaintiff’s mark on the packages was use and is a use of them
in a manner likely to depreciate the value of the goodwill attaching thereto within
the meaning of s. 22(1)
The plaintiff’s trademark was mentioned on the chart and this was what made the
depreciation of goodwill obvious – if others on the chart would too this not have
been depreciation of goodwill?
We know that the same mark is registered for the same goods, but is it used as a
TM and within the meaning of “use” in s. 4. Appearance of the mark is a USE of
that mark in association w/ the wares. That flows from 4(1) – TM used in
association w/ wares, - see last “or” When on packages it is use…BUT when it’s on the brochures, the mark is NOT
being used within the meaning of s. 4
s. 4(2) – gives a broader definition of use, in relation to services, than s. 4(1) does
in relation to wares.
But b/c we’re dealing w/ wares – brochures does not come within the meaning of
s. 4(1)
A use of the mark in association with wares or services, within the meaning of
s4 that is NOT for the purpose of distinguishing or so as to distinguish the
particular wares or services from others is not, however, within the area of the
exclusive right conferred by s19
Conclusion – not a s.19 infringement…why? B/c use of the Revlon mark was not
used as a TM, function and effect is not as a use of a TM, so no s. 19 infringement.
 Comparisons (like in this case) – will likely never fall under s. 19
infringement – b/c competitors mark is not being used as a TM.
Note: same reasoning would apply in s. 20 use… - i.e. as a TM that
distinguishes source – which flows from defn. of confusion…
Section 22 could be broad enough to cover everything – we need to impose
limitations on it (technically, calling it crap could be a violation…)
Use has to be a use in the course of trading – commercial use in that
sense…this limitation is obviously present b/c what we’re dealing w/ is a
statute relating to TM and unfair competition. That is the setting – the
commercial setting, trade and competition. The only types of uses we will
regulate are uses from competitors or uses in the course of trade.
Find limitation in the word “use” - even in s.22 – uses in the TECHNICAL TM
sense…uses that fall into s. 4 – this produces some bizarre results, so maybe it’s
not true
Note: Not every commercial use falls under s. 4 use (i.e. technical use). In terms of
the wares s. 22 we do have a s. 4 use, but in terms of brochures (flyers), we don’t
have a s. 4 use. B/c brochures don’t meet requirements of use in association /w
wares as under s. 4(1), it cannot fall under s. 19/ 22
SO what is goodwill and is it likely to be depreciated by this kind of activity?
What makes reputation goodwill – functions to attract new customers or to
induce former customers to continue using the product. So what does it mean to
reduce the goodwill?  it reduces the advantage of the reputation & connection, to
160






take away the whole or some portion of the custom otherwise to be expected and to
make it less extensive and less advantageous.
Done either by reducing the esteem in which the mark is held, or through direct
persuasion/enticing of customers who would otherwise by the goods bearing the
TM.
This is another area where perhaps s. 22 could be more limited. Now it seems
that any diversion of custom or lack of respect that is shown to a TM could be
shown to depreciate the goodwill.
However, you probably have to show evidence of damages, dilution ,etc… -this has
been adopted in the U.S>, we should move towards this.
Obligations imposed by s. 22 on competitors  told that trader cannot use
competitors TM to get the other persons’ customers – whether or not there is
confusion. This is exactly what the D’s are doing here. They are doing this to
facilitate consumers familiar with Clairol to switch to Revlon.
Using competitors mark to take away competitors custom – this is bad
NOTE no s. 22 infringement for FLYERS b/c not s. 4 use - but on the PACAKGES
it is
Comment:
If you sell wares and you are distributing flyers around doors, comparative advertising is
fine, b/c you’re not actually using other persons mark, at least not in the technical sense
under s. 4(1).
But if you own a TM in association w/ services you offer, then advertising using another
persons mark, is USE in the technical sense under 4(2) – in association w/ services, that’s
where the anomaly comes about
B/c u could use wares and services of other TM’s identically (e.g. comparative advertising),
and there would be a violation under s. 22 for services, but no violation for wares.
Eye Masters Ltd. v. Ross King Holdings Ltd. [1992] FTD
F
 This was an application for an interlocutory injunction in an action for
infringement of a trade mark.
 The plaintiff and the defendant are competing retail opticians. The
defendant took out advertisements in which a model is depicted, frowning,
wearing the plaintiff's glasses, the price of which is stated to be $208 and,
smiling, wearing the defendant's glasses at a price of $107.
 The plaintiff argues that, in naming it by its trade mark, "Eye Masters," the
defendant infringes that mark, contrary to section 19 of the Trade-marks
Act. It further argues that the advertisement depreciates the value of the
goodwill attaching to the mark, contrary to subsection 22(1), and that it
constitutes a false or misleading statement under paragraph 7(a).
I
Depreciation of goodwill
H an interlocutory injunction should issue.
 The first test an application for an interlocutory injunction must pass is that
there be a serious issue to be tried. The advertisement could be said to be
directed at the goodwill of the plaintiff's business, not the goodwill of the
mark itself. Further, it is clear that trade marks can be used in comparative
advertising of goods without infringement of the mark. However,
subsection 4(2) of the Act provides that, where the mark relates to services,
161
R
advertising is a use; and it has been held that the question whether this
protects a mark used with services, as contra-distinguished from a mark
used on goods, gives rise to a serious issue to support the grant of an
interlocutory injunction. The Woods exception, which requires, for
situations in which the disposition of the application for injunction will be
dispositive of the issue between the parties, that there be a strong prima
facie case, does not apply where that situation is created by the respondent.
That the advertising campaign here is to end after three months is the
defendant's choice. The Court assumes, for the purpose of an interlocutory
proceeding, the constitutionality of the statutory provisions upon which the
application is based.
 To pass the second test, irreparable harm not compensable in damages, the
applicant need not prove that irreparable harm is bound to occur. It is
sufficient if there is doubt as to the adequacy of damages as a remedy. Here,
both parties are in a position where damages are an unsatisfactory remedy,
as it is difficult to quantify either the monetary effect of an advertising
campaign or that of not having the campaign. In such a case, if the effect of
an injunction is to postpone the date upon which a person is able to embark
on a course of action not previously open to him, the status quo should be
preserved. The damage done to plaintiff's goodwill by defendant's
campaign is likely to exceed the benefit to defendant, as there will be some
customers, dissuaded from dealing with the plaintiff, who will go to other
opticians.
Comparative advertising is allowed for wares but not for services
Future Shop Ltd. v. A. & B. Sound Ltd. [1994] BC SC
F
 Application for an interlocutory injunction. The parties were both engaged
in the retail sale of commercial electronic products.
 The plaintiff was the owner of the "future shop" registered trade mark and
two substantially similar marks.
 The defendant put out comparative advertisements in which it highlighted
the differences between its prices and those of the plaintiff.
 The ads were accepted as fair and accurate.
 The plaintiff claimed that the defendant's use of its trademark name in the
said ads violated its trademark rights under sections 19 and 22(1) of the
Trade Marks Act.
 It sought this injunction to restrain the continuation of the ads pending
determination of its action.
I
s. 22(1) depreciation of goodwill
H  Application dismissed.
 An injunction would deprive the defendant of the option of continuing to
pursue its strategy of seeking to attract customers by highlighting its low
prices in comparison with those of the plaintiff by fair and accurate ads.
 Inevitably, such an injunction would work to its disadvantage in the battle
for market share.
162














Also, the public had an interest in comparative advertising to the extent
that the comparative information offered in those ads helped consumers to
make better choices.
In the circumstances, the court was satisfied that to the extent that there
was a status quo, refusal of the injunction would best maintain that status
quo until all the issues between the parties could be canvassed.
Accordingly, the balance of convenience favoured refusing the injunction.
Court says that there’s no provision similar to s. 22 in any other jurisdiction &
it is capable of sweeping ambit. .s22 was not intended to forbid legitimate
comparisons or criticisms of that kind. There is no difference in principle b/n a
counter display of comparative prices & newspaper, radio, or T.V.
advertisement containing the same info
Court denied interlocutory injunction and tried to distinguish b/w two kinds of
comparative advertising They say that there are adverts which show the
difference b/w to named products, and adverts which show similarity. This
one was emphasizing the difference. And if you’re emphasizing the difference,
you’re not defending against s. 22 – b/c function/effect of your use is not the
kind that s. 22 is supposed to protect you from.
Court says comparative ad that stresses diff’s b/w advertisers products and that of
the competition does not attach itself to the goodwill in the same way. It seeks to
distance itself from the goodwill by showing differences.  So you’re not doing
anything that falls under s.22
Makes sense – b/c the law is supposed to deal w/ not misappropriating the
competitor’s goodwill –
If you’re distancing yourself, you’re not trying to benefit from the other persons
goodwill, you’re just trying to destroy it – you’d think this would fall under s22 –
but it doesn’t…
Whether the use of the competitor’s TM is for a purpose which stresses the
similarities or the differences with the trade marked competition. If purpose to
stress similarities, value of GW associated with TM is appropriated in a
manner contrary to the intent of s22. If uses stresses the differences with the
TM then the use is for the purpose of distancing the TM ware or service & s22
is not offended.
General agreement – weak distinction – doesn’t really fit squarely w/ what it
means to depreciate the goodwill. EYemasters at odds w/ this case…similarities
and differences (similarities in the frames, differences in the price…) SO which is
it? This case is an oversimplification of the problem…
So this case might oversimplify comparative advertising in a way that’s not
workable…
Overall s. 22 can be very wide in scope unless it’s limited, as it was in this case –
but the result is rather non-sensical E.g. distinction b/w wares and services
(Clairol) and “USE”
None for the cases address s. 22 in the sense on whether what you’re saying is
true or false, i.e. accurate or deceptive - i.e. if u say something completely true,
they shouldn’t have an action against you. You should only have a claim if
someone is trying to disparage you in an ungrounded way.
As it stands, even if people say things that are true about your product, that are
disparaging, could violate s. 22.
163
164