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Canadian trademark law

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Canadian trademark law provides protection to marks by statute under the Trademarks Act and also at common law . Trademark law provides protection for distinctive marks, certification marks, distinguishing guises, and proposed marks against those who appropriate the goodwill of the mark or create confusion between different vendors' goods or services. A mark can be protected either as a registered trademark under the Act or can alternately be protected by a common law action in passing off .

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54-444: A trademark is only protected to the extent that it is used by a person to distinguish a product or service from another. Trademarks do not give exclusive rights to a symbol, for instance, but only for the symbol in relation to a particular use in order to distinguish the product from others. Trademarks help potential customers to identify the source of products and thus have a significant impact on trade, especially when product identity

108-474: A basic concept of the federation is that it must be an economic union.... The relative unimportance of provincial boundaries has become progressively more obvious as industry has tended to become more concentrated. On the more specific questions of intellectual property law, Kirkbi can also be seen as encouraging manufacturers of products embodying functional modular designs to employ appropriately clever branding and marketing, so that such designs may be seen as

162-711: A diplomatic conference in Paris in 1880, the convention was signed on 20 March 1883 by 11 countries: Belgium, Brazil, France, Guatemala, Italy, the Netherlands, Portugal, El Salvador, Kingdom of Serbia , Spain and Switzerland. Guatemala, El Salvador and Serbia denounced and reapplied the convention via accession. The Treaty was revised at Brussels , Belgium, on 14 December 1900, at Washington, United States, on 2 June 1911, at The Hague , Netherlands, on 6 November 1925, at London, on 2 June 1934, at Lisbon, Portugal, on 31 October 1958, and at Stockholm, Sweden, on 14 July 1967. It

216-471: A distinguishing guise". It recognized that allowing the claim created a concern with "overextending monopoly rights on the products themselves and impeding competition, in respect of wares sharing the same technical characteristics." The Court agreed with the Federal Court of Appeal ruling, which found no difference between the legal attributes held by registered and unregistered marks. It looked to

270-494: A non-owner from using a registered mark in any manner likely to deteriorate the value of the goodwill attached to the mark. The common law protects marks by recognizing the owner's right to exclusive uses, subject to the geographical and market boundaries of the owner's established trade reputation. Registration also allows the owner to register in other countries that adhere to the International Convention for

324-473: A patent or of a registered trademark), the owner benefits from the same protections and the same legal remedy against any infringement as if the owner was a national owner of this right. The " Convention priority right ", also called " Paris Convention priority right " or " Union priority right ", was also established by Article 4 of the Paris Convention, and is regarded as one of the cornerstones of

378-497: A product carries all three attributes; however, consumers are not able to verify such information and distinguish trustworthy products from non-trustworthy ones. Honest sellers will ask for a more substantial price in order to maintain the quality of the product. But consumers will not be willing to pay more for a supposedly trustworthy product. Eventually, the honest seller will have to exit the market. A market for lemons phenomenon will appear due to this information asymmetry, in which

432-534: A product, however, can attract trademark protection. In Ciba-Geigy , the Supreme Court of Canada held that trademark infringement had occurred when the size, shape, and colour of Metoprolol tablets (used to treat hypertension) were mimicked by two competitors with comparable products. Canada, unlike the US, does not have a provision governing notice by a trademark owner of the existence of a trademark, other than in

486-517: A source of distinctiveness, and thus deserving of trademark protection. International Convention for the Protection of Industrial Property The Paris Convention for the Protection of Industrial Property , signed in Paris , France , on 20 March 1883, was one of the first intellectual property treaties . It established a Union for the protection of industrial property . The convention

540-548: A symbol cannot be registered or when registration is invalid. Moreover, its flexibility makes it more adequate than the concept of infringement provided by the Act for situations that are not covered by the legislation, for instance misleading practices on the Internet. It also gives more protection to non-profit and public activity than the Act , which is more constraining. Trademarks have two distinct yet related economic functions:

594-404: Is controversial since trying to protect marks at all costs could be harmful to free speech and free trade. The Act gives the following definition for the scope of trademarks: "trademark" means: Certification marks are used in classifying the nature of a good or service (e.g., a Fair Trade Certified logo). A distinguishing guise can only be registered if it "is not likely unreasonably to limit

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648-419: Is marketed as an extension of the customers' personal identity. Although any name or symbol could be protected under trademark law, there are issues concerning the limits of that protection. For instance, enforcing protection of a mark and its perception is questionable where there is no actual confusion for consumers. Likewise, protecting a mark against all criticism or allusions, as if it were an actual person,

702-538: Is not generally possible for one manufacturer to claim exclusive trademark protection. The Act also prohibits the registration of any mark connoting association with royalty, government, international agencies, professions, or marks containing obscenity . If a mark is eligible for registration, then trademark agents may conduct searches of registers to determine if any registered mark has similarities that may be confusing. A trademark does not have to be original, but it must be sufficiently distinct. Searches of registers at

756-426: Is not intended to prevent the competitive use of utilitarian features of products, but that it fulfills a source-distinguishing function. This doctrine of functionality goes to the essence of what is a trademark. Kirkbi clarifies that the mere purpose of a product, however unique, cannot be subject of a trademark. Such utilitarian features fall more properly within the realm of patent law. The distinct look and feel of

810-415: Is registered, proving an infringement is easier and therefore possibly less expensive than a common law passing-off action. The rationales behind the two notions also differ: passing off merely protects the disruption of economic relations by misrepresentation, while registration actually sees marks as commodities. Other differences exist: Relying on the common law action of passing off is still useful when

864-743: Is silent with respect to trademarks . However, the Judicial Committee of the Privy Council and the Supreme Court of Canada have both suggested in their jurisprudence that the Trade-marks Act is a valid exercise of the federal trade and commerce power. Kirkbi AG, a member of The Lego Group , previously held patents in the design and form of Lego blocks, which had expired in Canada and elsewhere. Ritvik produced

918-468: Is still in force in 2024. The substantive provisions of the Convention fall into three main categories: national treatment , priority right and common rules. According to Articles 2 and 3 of this treaty, juristic and natural persons who are either national of or domiciled in a state party to the Convention shall, as regards the protection of industrial property, enjoy in all the other countries of

972-461: The Act permit the registrar to require, from time to time, owners submit information or evidence regarding the ongoing usage of registered marks. If a trademark is abandoned, shows no evidence of being used or is not renewed, the Registrar of Trademarks may expunge the trademark from the register. Trademark owners typically retain the services of a trademark agent to advise, prepare and file

1026-518: The Canadian Intellectual Property Office (CIPO), NUANS, and possibly US registers are standard practice. Section 16 of the Act provides three basic grounds on which an applicant may base their application. First, the mark has been previously used or made known in Canada. Advertising the trademark may be sufficient to satisfy the mark being made known in Canada, even though it has never been used in Canada. Second,

1080-619: The Lego Case , is a decision of the Supreme Court of Canada . The Court upheld the constitutionality of section 7(b) of the Trade-marks Act which prohibits the use of confusing marks, as well, on a second issue it was held that the doctrine of functionality applied to unregistered trade-marks. While s. 91 of the Constitution Act, 1867 gives the Parliament of Canada jurisdiction over copyright and patent matters, it

1134-626: The Supreme Court of the United States , trademarks are very different from patents and copyrights to the extent that they require "no fancy or imagination, no genius, no laborious thought". The Supreme Court of Canada calls them "something of an anomaly". Unlike other branches of intellectual property law, protection of trademarks does not necessarily arise from any act of creativity. Using the term "industrial property" instead of "intellectual property" may be more appropriate when referring to trademarks, which are mainly commercial devices, although

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1188-550: The Trademarks Act also codifies the tort of passing off into federal law. Most of the law of passing off has been inherited from the UK case law. For a successful action in passing off the claimant must show three things: A mark must be registrable in order to be fully protected under the Trademarks Act . Generally, all visual marks can be registered with the exception of marks that possess certain characteristics prohibited by

1242-491: The Act, as well as under the common law doctrine of passing off . Ritvik denied any breach under the Act or at common law and counterclaimed, seeking a declaration that it was entitled to continue to make, offer for sale and sell in Canada its blocks and related parts. Gibson J . dismissed Kirkbi's claim of based on trade-mark, finding that: Kirkbi's appeal was dismissed. Writing for the majority, Sexton JA did not comment on

1296-448: The Act. Among the prohibited characteristics include: According to section 19 of the Act the owner of a valid registered trade mark has the exclusive right to the mark's use throughout Canada in respect of the wares or services for which it is registered. Section 20 provides that no unapproved person may sell, distribute, or advertise wares or services in association with a confusing trademark or trade name and section 22 further prohibits

1350-430: The Paris Convention. It provides that an applicant from one contracting State shall be able to use its first filing date (in one of the contracting States) as the effective filing date in another contracting State, provided that the applicant, or the applicant's successor in title, files a subsequent application within 6 months (for industrial designs and trademarks ) or 12 months (for patents and utility models ) from

1404-499: The Protection of Industrial Property . Prior to June 17, 2019, a duly registered trademark was valid for fifteen years and could be renewed in perpetuity . On June 17, 2019, amendments to section 46 of the Trademarks Act reduced this validity period to ten years for all future registrations and renewals. The renewable nature of trademark registrations makes it the only form of intellectual property with statutory protections that do not definitively expire. However, sections 44 and 45 of

1458-542: The Trade-marks Act. LeBel J stated that it was constitutional, saying: Citing jurisprudence dating back to 1964, LeBel noted: The law appears to be well settled that if what is sought to be registered as a trade mark has a functional use or characteristic, it cannot be the subject of a trade mark. The Court noted that the Trade-marks Act specifically excluded protection from "utilitarian features of

1512-455: The Union, the advantages that their respective laws grant to nationals. In other words, when an applicant files an application for a patent or a trademark in a foreign country member of the Union, the application receives the same treatment as if it came from a national of this foreign country. Furthermore, if the intellectual property right is granted (e.g. if the applicant becomes owners of

1566-405: The actual price and the price that consumers are willing to pay decrease. In this context, trademarks fulfill a trust function to the extent that they provide a more reliable market for consumers, who can't immediately tell if credence goods are trustworthy or not. Honest sellers can develop and provide more desirable products. Although the trust function is more important than the linguistic one,

1620-413: The application to register. Section 12 of the act contains subsections (a)-(i) which list the type of marks not eligible for registration. The ineligibilities are generally designed to ensure adequate distinctiveness and ensure that names, places, people and descriptive or common words are not monopolized through registration. In addition, when a generic product is legally sold by a number of distributors, it

1674-539: The brands are very similar for instance? The use of the same word will usually not frustrate the trust function, which is more crucial than the linguistic function. This might produce higher search costs for consumers, but as long as additional information is provided, the trust function is preserved and consumers can still distinguish the two products, although in some cases additional information can create even more confusion. Kirkbi AG v. Ritvik Holdings Inc. Kirkbi AG v. Ritvik Holdings Inc. , popularly known as

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1728-418: The case of a licensee being allowed by an owner to use one. The use of symbols such as ™ or ® is therefore optional but advised, accompanied by a full written notice. Trademark law appears to be divided in two types of purposes: The Supreme Court of Canada has emasized that the tort of passing off was intended to protect the property right that plaintiffs had in the goodwill of their business. However,

1782-494: The company to explain why the products it sells are different from the competitor's, which would create a trust problem (trust function) Why is the trust function more important than the linguistic one? Because frustrating the linguistic function would lead to higher search costs, while frustrating the trust function would cause market failure due to the fact that customers can't tell the products apart anymore. What happens when two products are virtually indistinguishable, because

1836-533: The current view of the Court that favours interprovincial economic integration, especially with the respect to the views expressed by Peter Hogg and Warren Grover: It is surely obvious that major regulation of the Canadian economy has to be national. Goods and services, and the cash or credit which purchases them, flow freely from one part of the country to another without regard for provincial boundaries. Indeed,

1890-400: The development of any art or industry". In Kirkbi AG v. Ritvik Holdings Inc. , the Supreme Court of Canada declared: 43. ... the Act clearly recognizes that it does not protect the utilitarian features of a distinguishing guise. In this manner, it acknowledges the existence and relevance of a doctrine of long standing in the law of trademarks. This doctrine recognizes that trademarks law

1944-429: The doctrine of passing off also covers negligent or careless misrepresentation by the trader. As there was no discussion in the present case as to the question of damages, no comment was made. Kirkbi , together with General Motors of Canada Ltd. v. City National Leasing , are leading cases on the scope of Parliament's trade and commerce power, particularly with respect to the general branch of that power. It reflects

1998-460: The first filing. Article 11(1) of the Paris Convention requires that the Countries of the Union "grant temporary protection to patentable inventions , utility models, industrial designs, and trademarks, in respect of goods exhibited at official or officially recognized international exhibitions held in the territory of any of them". If a patent or trademark registration is applied for during

2052-594: The following areas: noncompliance with filing requirements, mark unregistrable (see section 12), applicant is not the owner or the mark lacks distinctiveness. Once the statement of opposition is filed, the proceedings are determined by the Trademarks Opposition Board . Decisions of the Board can be appealed to the Federal Court of Canada . Registration is costly; however, once the trademark

2106-443: The linguistic function and the trust function This function deals with the idea that trademarks help condensing complex information into a single word or symbol, immediately recognizable by consumers. This eventually reduces search costs for customers by simplifying the decision-making process and facilitating exchanges between the seller and the consumers. There are three classes or attributes of goods: A seller will often say that

2160-488: The mark eligible or ineligible for registration. An owner may appeal the registrar's ineligibility decision to the court. For an eligible mark the next step is for CIPO to issue a notice of the application's approval for advertisement. The application and trademark must then be advertised in the Trademarks Journal for two months, providing a window of opportunity for opponents to file a statement of opposition to

2214-410: The mark has been registered and used in a country party to the international convention. Third, the applicant proposes to use the mark in Canada; since the mark will be registered only after the applicant files a declaration of commenced use of mark in Canada, as per subsection 40(2), the applicant satisfies the requirement of owning the trademark at the time of registration. The registrar either finds

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2268-400: The pieces known as Mega Bloks . Kirkbi attempted to register the design of their blocks as a trade-mark but was denied by the Registrar of Trade-marks . Kirkbi then asserted unregistered trade-mark rights against Ritvik through an unregistered trade-mark in the distinctive orthogonal pattern of raised studs distributed on the top of each toy-building brick, and claimed relief under s. 7(b) of

2322-429: The proposed registration. Section 38 of the Act requires opponents to provide detailed specifications of the grounds for opposition, such that the applicant has a fair opportunity to rebut the allegations and meet their onus of satisfying the registrar that registration is warranted. Subsection 38(2) provides an opponent with seven grounds on which to base a statement of opposition, which can generally be categorized under

2376-419: The protection of the public is a priority, and the Supreme Court has also said that trademark law was in fact "consumer protection legislation". Where a company has adopted a business name that is the same or very similar to that of a competitor, a key consideration is the potential for customers to become confused. Even where a Plaintiff has only used its brand name for a limited period of time and has little in

2430-410: The questions of confusion and the elements of the tort of passing off, but did find that the doctrine of functionality applied to trade-marks, whether registered or not. In dissent, Pelletier JA , held: In a unanimous judgment, the appeal was dismissed. In his reasons, LeBel J held that: It was not until the case was at the Supreme Court that Ritvik challenged the constitutionality of s. 7(b) of

2484-536: The recognition of a right of prior use in favor of the exhibitor as against possible rights acquired by third parties. According to Articles 4bis and 6 (for patents and trademarks respectively), for foreigners, the application for a patent or the registration of a trademark shall be determined by the member state in accordance with their national law and not by the decision of the country of origin or any other countries. Patent applications and trademark registrations are independent among contracting countries. After

2538-477: The temporary period of protection, the priority date of the application may be counted "from the date of introduction of the goods into the exhibition" rather than from the date of filing of the application , if the temporary protection referred to in Article 11(1) has been implemented in such a manner in national law. There are, however, other means for the Countries of the Union to implement in their national law

2592-585: The temporary protection provided for in Article 11 of the Paris Convention: It is also possible, for example, in the case of exhibited patentable inventions, to make provision for temporary protection by other means, namely, by prescribing that, during a certain period, such exhibition will not destroy the novelty of the invention and that the person who exhibits the invention will also be protected against usurpation of his invention by third parties. Still another possibility of protection consists in

2646-402: The term "property" is still misleading since trademark law does not grant 'owners' the right to exclude others from using it. The primary means of protecting registered trademarks is through an action under the Trademarks Act . For unregistered trademarks, the common law tort of passing off is the primary means by which producers can obtain remedies against a competitor. Section 7(b) and 7(c) of

2700-411: The text and the legislative history of the act to determine that there was no intention to give unregistered marks more protection than registered marks. Though the Court disposed of the case in ruling there was no cause of action under trade-mark law, it nonetheless considered the common law tort of passing off. It found that three elements were required to establish the tort: In this case, K's claim

2754-497: The trust function (by creating a "lemons" problem). On the other hand, when one or both the functions are frustrated, the rule is considered to be normatively weak. For instance, the rule regarding comparative advertising in Canada appears to be inconsistent with both functions to the extent that prohibiting a company to use a competitor's name in order to convey correct information to consumers makes communication less efficient and more costly (linguistic function), and makes it hard for

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2808-426: The two functions are closely related. Trademarks can indicate complex attributes that consumers can't verify by themselves, just like a name helps identify a person, but also their attributes. When the two functions are preserved, a normatively robust rule is created. An example of this is the tort of passing off: passing off usually frustrates both the linguistic function (by increasing search costs for consumers), and

2862-457: The way of good will, a similarly-named competitor may confuse customers and cause the Plaintiff to lose control of its own reputation, thus justifying damages under the Trademarks Act . Courts, when interpreting the Act , try to achieve a balance between the rights of the owner and those of others. This means taking into account the public interest in free trade and expression. According to

2916-449: Was bound to fail because it would not have met the first condition of the action. The alleged distinctiveness of the product consisted precisely of the process and techniques which were now common to the trade. While deception had been proven, the SCC noted that the trial judge had interpreted it too narrowly. Misrepresentation may be wilful and may thus mean the same thing as deceit. But now

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