Unlike patents, trademark protection in Canada exists under both legislation and common law. Thus, there are causes of actions and remedies available to you for trademark infringement, even if you have never registered your trademark.
Generally, a trademark is a word (or words), design, shape or a combination of these, that is used to distinguish the products (that is, wares) and services you provide from those of your competitors.
Your protection extends only to the specific wares and services associated with the mark, and protection is limited in terms of geographical area. A registered mark will provide protection across Canada, whereas a common-law mark will only extend to where it is known by consumers. For a product, the mark must be on the packaging of the product at the time of sale. For a service, the mark can be used in advertising the service or when providing the service.
Determining trademark infringement is not an exact science. Rarely will a legitimate competitor attempt to directly pass off its goods or services as yours.
The common-law tort of “passing off” is committed when there exists goodwill, or a distinctive reputation of a business with respect to a particular product or service, the deception of the public by misrepresentation, and actual or potential damage.1
The Trade-marks Act also contains a prohibition for passing off (Section 7: Unfair Competition and Prohibited Marks). What makes this form of infringement rare, outside of counterfeiting, is that it is acceptable, and even common, under common law and the Trade-marks Act to have the same trademark as another, as long as the two marks are for different wares or services.
TOYO Tire & Rubber Co. has a registered trade-mark (TMA192714) for TOYO in relation to tires, and Mazda Motor Corporation also has a registered trade-mark (TMA470836) for TOYO, but in relation to machine tools.
It is more common that a trademark infringement dispute will involve “confusion” in the marketplace. The test of confusion is one of first impression.2 It is assumed that consumers may be aware of the registered mark but imperfect recollection may cause them to mistake one mark for another.
When dealing with the issue of confusion between marks, one must consider the degree of resemblance in the appearance, sound and ideas suggested by the marks.3
Section 6.(2) of the Trade-marks Act provides this guidance:
“The use of a trade-mark causes confusion with another trade-mark if the use of both trade-marks in the same area would be likely to lead to the inference that the wares or services associated with those trade-marks are manufactured, sold, leased, hired or performed by the same person, whether or not the wares or services are of the same general class.”
In order to determine whether or not a trademark is confusing to “the somewhat-hurried consumer,” the following factors are outlined for consideration:4
Under the Trade-marks Act, the remedies for passing off are the same as those for having a confusingly similar mark. A party who engages in these torts faces a number of liabilities, including:
*Interest is payable on the amount of the awarded judgment and is calculated from when litigation began until payment is received.
The remedies under common law are practically the same, which may lead you to question why you should register your mark. The answer lies in the fact that trademark registration provides prima facie evidence of ownership. Registration aids in a dispute because the registered owner does not need to prove ownership; the onus is on the challenger. Equally important is that registration puts others on notice of your intention to defend your mark.
Determining whether a trademark has been infringed is not straightforward, and, in almost all cases, litigation will offer the only recourse to a wronged party.
Note: The content in this article is for purposes of general information only. It is not legal advice.
1 Edward Chapman Ladies Shop Ltd. v. Edward Chapman Ltd. 2007 BCCA 370.
2 Rowntree Co. Ltd. v. Paulin Chambers Co. Ltd. (1967), 54 C.P.R. 43, p.47.
3 Canadian Intellectual Property Office. (2009, October 16). Trade-marks Examination Manual. Retrieved April 23, 2014, from http://www.cipo.ic.gc.ca/eic/site/cipointernet-internetopic.nsf/eng/wr01614.html.
4Trade-marks Act, R.C.S. 1985, c. T-13 s. 6 (5); see also Mattel U.S.A. Inc. v. 3894207 Canada, 2006 SCC 22; Veuve Clicquot v. Boutiques Cliquot Ltee., 2006 SCC 23.
Canadian Intellectual Property Office. (2011, April 27.) Retrieved May 3, 2011, from http://www.cipo.ic.gc.ca.
Mattel U.S.A. Inc. v. 3894207 Canada, 2006 SCC 22.
Veuve Clicquot v. Boutiques Cliquot Ltee., 2006 SCC 22.
Canadian Legal Information Institute. (2008, January 31.) Trade-marks Act, R.S.C. 1985, c. T-13. Retrieved May 3, 2011, from .