Today: TRADEMARKS!

- What i s protected?- concept

- Passing off – c o m m o n law protection
- Registered trademarks
- Proc e s s
- Descriptive
- Functional
- Confusion
- Se c ondar y Meani ng
- Expungement
- L o s s o f d i s t i n ct i v en es s
- Non-use
- Infringement
- Confusing u s e
- Concurrent u s e
- B o n a Fide u s e
- Comparative Advertising
- Famous marks
 TRADEMARKS!
Generally: any word, name, symbol, device, slogan,
packaging, sound that distinguishes the s o u rc e of the
g o o d s and/or services of one part from those of another

Generally: the law that governs what words and images a

company can u s e to advertise o r identify its g o o d s and
services to its potential c u s t o m e r s
 TRADEMARKS!
Generally: any word, name, symbol, device, slogan,
packaging, sound that distinguishes the s o u rc e of the
g o o d s and/or services of one part from those of another

Trademarks are not “at large” ownership rights in a word.

They are tied to specific goods and services and are tied to a
particular business.

This is why two companies in different industries can use

identical trademarks.
 TRADEMARKS!
Generally: the law that governs what words and images a
company can u s e to advertise o r identify its g o o d s and
services to its potential c u s t o m e r s

Note: NOT a “business name” – not what you get with a

NUANS search – not the law of signing contracts

I can write about Coke, Pepsi, Nike and Xerox on this slide
without infringing on trademark rights because I am not
u s i n g those words to identify my goods or services.
 TRADEMARKS!
Note on terminology:

“service mark” – in some countries (incl. the U.S.), a service mark

is for a mark associated with services, while a trademark is for a
mark associated with goods

Trademark vs trade mark vs trade-mark

Certification mark – a mark used to represent a certain standard

(set by someone) instead of source

Distinguishing guise - informal – protects three-dimensional shape

of a product or package
 TRADEMARKS!
Ho w does one obtain a trademark?

“USE” traditionally – and still largely does - lie at the heart of

trademark law in Canada

You can also “REGISTER” your trademark rights with the

government
● Implies exclusive right to use a mark (and right to authorize
others to use) in association with certain goods a n d / o r services

● Territorial application

● Protects against consumer confusion

 U n re g i s t e re d t r ade m ar ks
v e r s u s re gi s t e re d t r ade m ar ks

In Canada (and the UK,, US, AUS, NZ), trademarks can either
be registered or unregistered (aka common law trademarks)

Unregistered trademarks can be enforced through the tort of

passing off

Registered trademarks can be enforced by suing for

infringement of a registered trademark
 U n re g i s t e re d t r ade m ar ks
v e r s u s re gi s t e re d t r ade m ar ks

Passing- off
and
I n f r i n g e m e n t of a Registered
Trademark

THESE ARE NOT THE SAME – try not to confuse them

on quizzes, etc.
 U n re g i s t e re d t r a d e m a r k s a n d passing- off

Courts will act to protect a business’s reputation regardless of

whether a trademark is registered
Known as a “passing-off” action
Orkin: p 39 line 3, pp 40-41
Walt Disney

To succeed, a plaintiff must show:

1. A reputation or goodwill [in the mark]
2. Defendant acted in a manner that misrepresented to or
created confusion in the minds of the public
3. Harm, or likely harm (harm to what?)
 U n re g i s t e re d t r a d e m a r k s a n d passing- off

To succeed, a plaintiff must show:

1. A reputation or goodwill [in the mark]
2. Defendant acted in a manner that misrepresented to or
created confusion in the minds of the public
3. Harm, or likely harm

What are the weaknesses of this approach from the point of

view of the established business that wants to protect its
brand?
 U n re g i s t e re d t r a d e m a r k s a n d passing- off

To succeed, a plaintiff must show:

1. A reputation or goodwill [in the mark]
2. Defendant acted in a manner that misrepresented to or
created confusion in the minds of the public
3. Harm, or likely harm

You start to accumulate trademark rights by just starting use,

but (a) you have to prove reputation, and (b) you are
vulnerable to prior users

Uncertainty!
Modern communications and transport?
 Registered Trademarks

A d v a n t a g e s (versus non-registered trademarks):

● Cove r s e n t i re c o u n t r y
● D o n o t h a v e t o p ro v e re p u t a t i o n t o e n f o rc e
● Wa r n s o t h e r s t o stay a w a y ( n o t i c e f u n c t i o n )
● Yo u c a n n o t i n f r i n g e if y o u u s e t h e m a r k t h e w a y it
i s re g i s t e re d
Generally, if there is a clash between applicants, mark goes to
(i) first to use, then (ii) first to file

Priority claims: can “backdate” your application by up to six

months if you have a corresponding foreign application
R e c e n t C h an ges t o Trad emark s Act

Canada has changed its Trademarks Act - effective June 2019

• Primary ch a n g e – n o longer required to file e v i d e n c e of

u s e before th e ma rk is registered
• Adoption of “class system”
• Duration changed from 15 to 10 years
• The Trademarks Office can reject an application based on it being
“non-distinctive”, in addition to the other traditional grounds for
rejection

However, use is still the underlying theory in Canada – in a dispute

between two applicants, the first to use still wins, can expunge marks
for non-use

So, this places an onus on competitors to monitor or cleanse the

Trademarks Register by challenging registrations that are not being
used in Canada (i.e. “Trademark squatters”)
 Re gi s t e re d Trademarks

Application steps:
1. File application
2. TM Office reviews, issues office action or Notice of
Approval (36+ months!)
3. Advertised (Opposition Process)
4. Notice of Allowance
5. TM Issues
(all times approx.)

CIPO is woefully behind!

 Re gi s t e re d Trademarks

As of June 17, 2019, it is required for the applicant to group its

goods and services under these classes (and pay additional fees!)
 Re gi s t e re d Trademarks

As of June 17, 2019, “proposed use” no longer required under

Canadian trademark law!
 Re gi s t e re d Trademarks

What ca n y o u register?
● Words
● Logos (called “designs” in trademark terminology)
● Shapes of wares and packaging (distinguishing guise)
● Sounds
● Colour
● A moving image
● Scent
● Texture
 Re gi s t e re d Trademarks

What can’t y o u register?

Challenges may include (but are not limited to (see
s.12)):
• Name of the goods or service
• Mark is clearly descriptive or deceptively misdescriptive
• Confusion (s6(5)) with a prior mark
• Mark is functional
• Applicant not entitled
•Primarily merely name or surname (without
secondary meaning)
• Secondary meaning
 Re gi s t e re d Trademarks

● A registered m a r k cannot be:

12(1)(c) the n a m e in any language of any of the goods or services in

connection with which it is used or proposed to be used;

•Clearly descriptive or deceptively misdescriptive – prohibited under

section 12(b)

“Trademarks which are in part or in whole composed of words must also be

examined for any clearly descriptive or deceptively misdescriptive meanings,
in English or French, as applied to the character or quality, place of origin,
conditions of, or persons employed in the production of the associated goods
or the performance of the services. The purpose of a paragraph 12(1)(b)
objection to registrability of clearly descriptive words is that no one person
should be able to appropriate such a word and place legitimate competition at
an undue disadvantage in relation to language that is common to all. See
General Motors Corp. v. Bellows (1949), 10 C.P.R. 101, at 112-113. “
(TMEM)
 Registered Trademarks

● But note section 12(3):

A trademark that is not registrable by reason of

paragraph (1)(a) or (b) is registrable if it is distinctive
at the filing date of an application for its registration,
having regard to all the circumstances of the case
including the length of time during which it has been
used.
 Re gi s t e re d Tr ade mar ks - Conf us i on

•The mark cannot be confusing with a previously

registered mark (s.12(1)(d))

6 ( 5 ) In determining whether trade-marks or trade-names are

confusing, the court or the Registrar, as the case may be, shall have
regard to all the surrounding circumstances including
(a)the inherent distinctiveness of the trade-marks or trade-
names and the extent to which they have become known;
(b)the length of time the trade-marks or trade-names have been
in use;
(c) the nature of the goods, services or business;
(d) the nature of the trade; and
(e)the degree of resemblance between the trade-marks or
trade- names in appearance or sound or in the ideas suggested
by them.
 Re gi s t e re d Tr ade mar ks - Conf us i on

Confusion cont’d …

“The test of confusion is one of first impression. Consumers may be

aware of one trademark, but imperfect recollection may cause them to
mistake that mark for another. Examiners must put themselves in the
position of consumers and ask whether a person with imperfect
recollection would be likely to infer that the goods or services
associated with the applicant's trademark and those associated with
another trademark are manufactured, sold, leased or hired by the same
person.” (TMEM)

NOT a listing of differences

 Re gi s t e re d Trademarks

Cannot register something that is functional: as of June 2019, in the

Act:

s. 12(2):
A trademark is not registrable if, in relation to the goods or
services in association with which it is used or proposed to
be used, its features are dictated primarily by a utilitarian
function.
 Re gi s t e re d Trademarks

Other barriers to registration:

Names present difficulties (“primarily merely” under s.12(1)(a): “a

word that is primarily merely the name or the surname of an
individual who is living or has died within the preceding thirty
years”; can be saved by s.12(3))

Prohibited under a specific section of the act (i.e. Canadian flag,

indicators of royalty, etc.)
 Re gi s t e re d Trademarks

Other barriers to registration: N o n - di s ti ncti v e ne s s

As of 2019, the Office can reject an application based solely on the mark
lacking inherent distinctiveness

s.2: distinctive, in relation to a trademark, describes a trademark that actually distinguishes

the goods or services in association with which it is used by its owner from the goods or services
of others or that is adapted so to distinguish them; (distinctive)

D i s t i n c t i v e n e s s is assessed in relation to the goods and services in the

application

TMEM: “There is a spectrum of inherent distinctiveness, ranging from no inherent

distinctiveness to high inherent distinctiveness. Trademarks possess some inherent
distinctiveness when nothing about them refers the consumer to a multitude of sources when
assessed in relation to the associated goods or services. Where a trademark may refer to many
sources, it is considered to have no inherent distinctiveness.”
 Re gi s t e re d Trademarks

Examples of marks lacking inherent distinctives:

• An ordinary representation of grapes and vine leaves for wine
• Cats, dogs or other animals for pet food or veterinary services, lightning
flashes for electrical apparatus, orchard scenes for fruit.
• Colours if already associated with the goods: ORANGE in association
with outerwear; WHITE with paper; RED with toy fire engines,
YELLOW with tennis balls;
• Geographic locations
• One or two letters, or numbers;
• MRS., MR., DR., DAME, SIR
• FRAGILE (for goods); CONTENTS ARE HOT; (i.e. provide generic
info)
• Laudatory words: ULTIMATE, AUTHENTIC, TERRIFIC
• .com; .ca; .uk; .edu;
• Phone numbers
• Limited, Company, Partnership, LLP, GmBH
 Re gi s t e re d Trademarks

Combining non-distinctive marks usually results in a non-

distinctive mark

Non-distinctiveness is a matter of fact, so you can overcome a non-

distinctiveness rejection by filing proof that the relevant consumers
i n Canada treat the mark as a trademark

Evidence: show that people actually use the mark to identify this
company’s products as opposed to other companies’s products

Evidence: can be inferred from success in sales, spend on

advertising, etc.
 Re gi s t e re d Trademarks

Opposition – What if y o u think t h e Office s h o u l d

n o t i s s u e a registration?

Before granting a registration, the Office advertises to

the public that it is planning to grant the registration,
and anyone can oppose during the next two months

Either:
(i) You argue the Office made a mistake, or
(ii)You have new information the Office does not
have (mainly, you were using a similar mark first)
 Re gi s t e re d Trademarks

E x p u n g e m e n t – The Office can (usually if

re q u e s t e d ) e x p u n g e a trademark for lack of u s e )

s.45

• Non-use
• Modified marks

(Both covered in slides below)

 E n f o rc e m e n t

E n f o rc e m e n t a n d Licensing /Ownership

Three types of e n f o rc e m e n t covered

● Passing-off (unregistered trademarks) (last class)
● Infringement of a registered trademark (requires
confusion)
● Dilution (registered trademark, no confusion)
 E n f o rc e m e n t

Bef o re y o u enforce…
You s h o u l d c o n s i d e r w h e t h e r t h e m a r k i s valid:
● Consider all of the s.12 considerations from last class
● Consider whether the mark is non-distinctive
● Consider whether the mark is in use (next slide)
● Consider whether the mark is being used as registered
(s.45)
 E n f o rc e m e n t

USE
In order for a registered trademark to be valid, it must be
being used in Canada (during the previous three years)

● After a mark has been registered for three years, anyone can file a “s.45” request, for
CA$408. CIPO will send a letter demanding that the registrant prove use of the
mark in Canada during the previous three years.
● Only a little use is sufficient.
● If they cannot, the mark is expunged from the register.
● You can file arguments if you think the evidence provided is insufficient.
● You can argue why your non-use should be excused

(“use” will also be important wrt infringement)

 E n f o rc e m e n t

USE
So, what is use?

• 4 (1) A trademark is deemed to be used in association with goods if, at the time of
the transfer of the property in or possession of the goods, in the normal course of
trade, it is marked on the goods themselves or on the packages in which they are
distributed or it is in any other manner so associated with the goods that notice of
the association is then given to the person to whom the property or possession is
transferred.

• (2) 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.

Under s.45, this is what is meant by “use” of a trademark

 Re gi s t e re d Trademarks

Passing- off
● Covered last class

To succeed, a plaintiff must show:

1. A reputation or goodwill [in the mark]
2. Defendant acted in a manner that misrepresented
to or created confusion in the minds of the public
(this will depend on what the goodwill is for, and
where the confusion is supposedly taking place)
3. Harm, or likely harm
 Unfair Com pe t i t i on / Misleadi ng Advertising
( n o t testable)

7. No person shall
(a)make a false or misleading statement tending to discredit the business,
goods or services of a competitor;
(b)direct public a t t e n t i o n t o h i s g o o d s , s e r v i c e s o r b u s i n e s s i n
s u c h a w a y a s t o c a u s e o r b e likely t o c a u s e c o n f u s i o n i n Canada, at
t h e t i m e h e c o m m e n c e d s o t o direct a t t e n t i o n t o t h e m , b e t w e e n h i s
goods, services or business and the goods, services or business of
a n o ther;
(c) pass off other goods or services as and for those ordered or requested; or
(d)make use, in association with goods or services, of any description that is
false in a material respect and likely to mislead the public as to
(i) the character, quality, quantity or composition,
(ii) the geographical origin, or
(iii)the mode of the manufacture, production or
performance of the goods or services.
 Re gi s t e re d Trademarks

In f ri ng e men t of a Registered Trademark

● 2 0 . (1) The right of the owner of a registered trade-
mark to its exclusive use is deemed to be infringed by
any person who is not entitled to its use under this
Act and who
(a)sells, distributes or advertises any goods or services
in association with a confusing trade-mark or trade-name
(b)manufactures, causes to be manufactured, possesses,
imports, exports or attempts to export any goods in association
with a confusing trade-mark or trade-name, for the purpose of
their sale or distribution;
 Re gi s t e re d Trademarks

In f ri ng e men t of a Registered Trademark

6(2) 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 goods or services
associated with those trademarks are manufactured, sold, leased, hired or performed by the
same person, whether or not the goods or services are of the same general class or appear in
the same class of the Nice Classification.

● Caselaw (paraphrased):
A defendant will be liable for infringing the registered trademark if an ordinary
consumer with imperfect memory, who knows about the plaintiff’s trademark as
registered and as used for the goods and services in the registration, and sees the
second mark used on [goods and services of defendant], would infer that the goods
and services come from the same source.
● When assessing, you must take into account at least
the factors listed in s.6(5)
 Re gi s t e re d Trademarks

Infringement of a Registered Trademark

● When assessing, you must take into account at least the factors listed
in s.6(5)

6 ( 5 ) In determining whether trade-marks or trade-names are

confusing, the court or the Registrar, as the case may be, shall have
regard to all the surrounding circumstances including
(a)the inherent distinctiveness of the trade-marks or trade-
names and the extent to which they have become known;
(b)the length of time the trade-marks or trade-names have been
in use;
(c) the nature of the goods, services or business;
(d) the nature of the trade; and
(e)the degree of resemblance between the trade-marks or
trade- names in appearance or sound or in the ideas suggested
by them.
 Re gi s t e re d Trademarks

What about t h e Mattel case, a n d f a m o u s marks?

Generally, no extra protection in Canada just because

your mark is famous – there still has to be confusion for
there to be infringement of a registered trademark

(note – other countries are different – US)

 Re gi s t e re d Trademarks

What if t h e re i s n o confusio n?
Depreciation

2 2 . (1) No person shall use a trade-mark registered by

another person in a manner that is likely to have the
effect of depreciating the value of the goodwill
attaching thereto.

Categories: blurring, tarnishment

We won’t be going into this in detail
 Li ce nsing & A s s i g n m e n t s ( ge ne r a l )

• Licensing is giving someone permission to do something

otherwise not allowed under your intellectual property rights
• Assignment is selling or transferring your IP rights to
someone else
• Warning: a sliding scale: a license of all your interests in an
IP begins to be a transfer

• A CONTRACT – remember from CLAW122:

Intention to create legal relations
Offer & Acceptance
Consideration
Privity
Reading-in terms
Better in writing
 Li ce nsing & A s s i g n m e n t s ( g e n e r a l )

• Generally, you need a grant clause in a license

• i.e. I grant you the following…
• “all rights under the IP”
• Can generally split up your “rights” – consider copyright,
patent – each can be considered a bundle of rights you can
sell
• CR Act s.13(4) The owner of the copyright in any work may assign the right, either
wholly or partially, and either generally or subject to limitations relating to territory,
medium or sector of the market or other limitations relating to the scope of the
assignment, and either for the whole term of the copyright or for any other part
thereof, and may grant any interest in the right by licence, …
• Territory?
• Sublicensable? Assignable?
 Li ce nsing & A s s i g n m e n t s ( g e n e r a l )

• Licenses can be

i.exclusive - exercise a right to the exclusion of all

others including the licensor

ii.sole - licensee is the only licensee appointed (i.e. licensor

can still use)

iii.non-exclusive - other licenses may be appointed

to compete with one another
 Li ce nsing & A s s i g n m e n t s ( ge ne r a l )

• Enforcement clause

Who decides when to sue? Who pays? Cooperation required?

Who gets any monetary proceeds?

Be careful: don’t want to be contractually forced to sue your

customers, for example

(usually a licensing issue, but can appear in assignments…)

 Licensing & A s s i g n m e n t s ( ge ne r a l , CR, Pat)

Copyrights: the assignment must be in writing.

Generally, but especially in patents: c o o p e r a t i o n clauses. The

Assignor agrees to cooperate with the assignee in obtaining
registrations for the intellectual property in all countries, and in
enforcing the intellectual property against third parties
(because the inventor has a uniquely important role in patent
law)
 Lice nsing & A s s i g n m e n t s (Trademar ks)

Trademarks: licenses and assignments are trickier because

trademarks are supposed to indicate source – historically, weren’t
allowed to assign or license trademarks at all!

Canada: strictly speaking only allow licenses since 1993 (before,

registered user system)

Varies from country to country. We will look at Canadian law

 Lice nsing & A s s i g n m e n t s (Trademar ks)

5 0 . (1) For the purposes of this Act, if an entity is licensed by or with the
authority of the owner of a trade-mark to use the trade-mark in a country
and the owner has, under the licence, direct or indirect control of the
character o r quality of th e g o o d s or services, then the use,
advertisement or display of the trade-mark in that country as or in a
trade-mark, trade-name or otherwise by that entity has, and is deemed
always to have had, the same effect as such a use, advertisement or display
of the trade-mark in that country by the owner.

(2) For the purposes of this Act, to the extent that public n o t i ce is given
of the fact that the use of a trade-mark is a licensed use and of the identity
of the owner, it shall be presumed, unless the contrary is proven, that the
use is licensed by the owner of the trade-mark and the character or quality
of the goods or services is under the control of the owner.
 Lice nsing & A s s i g n m e n t s (Trademar ks)

• Difference between approval/control over how mark appears

versus control over the character and quality of the
wares/services

• Beware of the “bald” license

• Use may accrue to user, not owner
• Loss of distinctiveness
• Acquisition of rights by third party user
• Related companies not necessarily “licensed”
• Must actually exercise control
 Certification Marks

s.2:
“certification mark” means a mark that is used for the purpose of
distinguishing or so as to distinguish goods or services that are of a
defined standard with respect to
(a) the character or quality of the goods or services,
(b)the working conditions under which the goods have been
produced or the services performed,
(c)the class of persons by whom the goods have been produced or
the services performed, or
(d)the area within which the goods have been produced or
the services performed,
from goods or services that are not of that defined standard;

Examples: UL; CSA

Official Marks (aka Prohibited Marks)

9 . (1) No person shall adopt in connection with a business, as a trade-mark or

otherwise, any mark consisting of, or so nearly resembling as to be likely to be
mistaken for,
…

(n) any badge, crest, emblem or mark

(i)adopted or used by any of Her Majesty’s Forces as defined
in the National Defence Act,
(ii) of any university, or
(iii)adopted and used by any public authority, in Canada as an
official mark for goods or services,
in respect of which the Registrar has, at the request of Her Majesty or of the
university or public authority, as the case may be, given public notice of its
adoption and use;

• Like a “super-trademark” – not limited to any goods or services or

classes
 Overlap w i t h CR, Patents

It i s c o m m o n for a c o m p a n y to h a v e both trademark and

copyrights in a logo

Copyright infringement does not require trademark “use”

(should there be “fair dealing” in logos? – the Bibendum case (be careful, the
Copyright Act has since been amended to include parody))

Can y o u have a trademark in functional things?

Consider Lego™ versus Mega Blocs™

Lego argued that it had a trademark in the appearance of the Lego blocks –
i.e. the upraised studs – went to Supreme Court of Canada
 PRACTICAL CONSIDERATIONS

• What makes a “strong” mark?

• s.12 restrictions
• Searching
• International considerations: (1) suitability, (2) registration abroad, (3)
squatting
• Domain names
• Modification of trademarks, combining trademarks
• Genericization
• Preventing dilution – monitoring of Trade-Marks Journal, marketplace
monitoring – co-existence agreements, transfer and license back
• Counterfeit and Grey Market Goods
• When to apply? Proposed use, existing use, use of treaties
• Licensing
• Enforcement Options (briefly)
 A “Strong” Mark?

• What makes a “strong” mark?

Legal protection as a trademark as opposed to
effectiveness in sales?

Recall s.12 limitations – no protection for

descriptive or generic words, no protection for
surnames (absent secondary meaning), no
protection
 H o w t o c h o o s e a mark?

• How to choose a mark?

SEARCHING
Best done before you choose a mark
Two questions:
(1) can you register the mark, and
(2) can you use the mark (without
being sued…)

(3) Involves searching the

Trademarks Register in country
X
(4) Involves knowing what confusing marks are actually being used in country
X, as well as any statutory prohibitions
 How to choose a mark?

• How to choose a mark?

SEARCHNG
Various depths of search: knock-out search costs around $400, a professional
search costs around $1200, for one proposed mark, in Canada
Costs add up if you add jurisdictions
“Europe” is especially costly

Still, a risk/reward judgment call

i.e. avoid famous marks?

What is the WWF?

Risk a TM owner will sue even

without a likelihood of success?
 Inter national Consi de r at i ons

• International considerations: (1) suitability, (2)

registration abroad (3) squatting (4) marking
(1) Suitability

• Does your trademark mean something when sounded or written in a

foreign language?

• “finger lickin’ good” = “eat your fingers off”?

• “come alive with Pepsi” = “bring your ancestors back from the grave”
• “Coca-Cola” when sounded – “bite the wax tadpole”?
 Inter national Consi de r at i ons

• International considerations: (1) suitability, (2)

registration abroad (3) squatting (4) marking
(1) Suitability

• Does your trademark mean something when sounded or written in a

foreign language?
 Inter national Consi de r at i ons

• International considerations: (1) suitability, (2)

registration abroad (3) squatting (4) marking
(2) Registration abroad

• High level – need to apply in each country you want protection. Broad
coverage gets expensive! Need to prioritize.
• Check filing basis: whether you need use first, whether you can apply based
on registration in home country
• Priority: 6 months
• Europe: CTM – 28 countries, but does not override national trademark law
• The Madrid System – a WIPO system – apply in home country, can then
register mark in other treaty countries, BUT (1) if the home registration is
invalidated, all the registrations tied to it fail, and (2) is there really
anysignificant cost savings?
 International Considerations

• International considerations: (1) suitability, (2)

registration abroad (3) squatting (4) marking
(3) Squatting

• A person in country X sees that a mark is becoming valuable in the US or

Europe, and so registers the trademark, a translation of the trademark, or
starts a similar business in country X using the mark
• When US/EU company wants to enter country X, the person has stronger
trademark rights!
• Recently China, but in the past South Africa, Canada
• An inherent weakness in the international trademark system?
• What if a local business has honestly adopted the name? (TSN?)
 Domain Names

• www.trademark.com – should a trademark owner have

a prima facie right to the registration of that domain
name?
• If not – is it an “instrument of fraud”?

• Answer: no
• Can have it transferred in some circumstances
• UDRP dispute resolution process
 International Considerations

• International considerations: (1) suitability, (2)

registration abroad (3) squatting (4) marking
(3) Marking
• Every country is different regarding marking: i.e. what do ™, ® , SM, etc.
mean?
• Are you required to use them?
• Is there a penalty if you use them incorrectly or misuse them

• If an enclosure, brochure, poster etc. printed in the US says “X is a

registered trademark of SmallCo, and is used with permission of SmallCo.”,
is SmallCo doing an illegal act by distributing the material in a country
where X is not a registered trademark?

• One solution: customize your materials in every country ($$$!)

• Another solution – do not mark (which causes problems…)
 Modifying your Trademark

• Modification of trademarks, c o m b i n i n g trademarks

• To keep your trademark registrations valid, have to use them consistently

in the form registered
• Use of a variant can count as use of a mark (in Canada) if not radically
different (other countries?) (careful of “evolution”)
• E.g. – are these the “same” marks?

• Similar issue applies to combined marks

 Genericization

• Genericization
To keep your trademark rights, you need distinctive, not generic use

Examples of trademarks that have become generic:

• Escalator
• Zipper
• Videotape

Challenges: use by owner, use by third parties

Onus on owner to “police” the market, but can’t sue successfully –
only ask to stop use
Pre ve nti ng Los s of Di s t i n c t i v e n e s s / D i l u t i o n

• Pre ve nti ng Los s of Di s t i n c t i v e n e s s /

dilution
• Your trademark rights rest upon the mark being distinctive of your
goods / services
• If you permit others to use a similar trademark for similar goods /
services, you run the risk that a Court will rule that the mark is no
longer distinctive of your goods

• Bottom line: there is an onus on trademark owners to police the use

of their mark (i.e. you may be “forced” to sue)

• (thus, the rise of the bully trademark owner…)

 Preventing Dilution

• Pre ve nti ng dilution

What can you do?
• monitor the Trade-Marks Journal and oppose potentially confusing marks

• (note – there are may alternatives to “sue them!” – e.g. can enter into co-
existence agreement, etc.)

• monitor the marketplace

• for some industries, more easily said than done – but generally, you know
your marketplace!
 Counterfeit a n d Grey Market G o o d s

• Counterfeit a n d Grey Market Goods

• “Counterfeit” goods are fakes

• “Grey market goods” are legitimate goods of the trademark owner that are
legally sold in a first country, but then exported without the approval of the
trademark owner into a second country for sale

• Don’t confuse them! Very different legal implications

 Counterfeiting

● A big issue
● Hard to estimate – its secret

● IACC (warning: lobbyists):

 costs US business $2 00 to $250 annually

 5-7% of international trade is in counterfeit goods

 Loss of 750,000 US jobs

Threat to global health and safety

 Counterfeiting

● Response:
Counterfeiting
 Counterfeiting

Rebecca Tushnet, 43(B)log

 Counterfeiting

● Response: rise of Border Control Measures

● Idea: stop counterfeits at the border, before they get
into the national stream of commerce
● Who has them? Lots of countries – question is
their effectiveness / how strongly they are enforced
● EU and US – they are strong, they do matter
 Grey Market G o o d s

• Grey market goods are legitimate goods – much harder (legally) to stop
them at the border
• Exhaustion of rights (applies more to patents and copyrights)
• Contractual remedies are often ineffective
• Where is the violation of trademark law?
 Grey Market G o o d s

• Grey market goods are legitimate goods, purchased in country #1 and then
exported to country # 2 against the will of the trademark owner – much
harder (legally) to stop them at the border
• Where is the violation of trademark law?
• Exhaustion of rights (applies more to patents and copyrights)
• Contractual remedies are often ineffective
• One answer: the goods are actually different goods – i.e. is Canadian Heinz
ketchup different from US Heinz ketchup? In that case, courts may stop
the incoming grey goods
• Similar answer: the importer is misleading consumers as to the quality or
services associated with the grey goods (warranties) (not trademark law
per se…) – sometimes done by regulation
• Another answer: the identical trademarks are owned by different
companies in the two countries
 E n f o rc e m e n t I s s u e s

• Unauthorized, but is it “use”?

• film/TV
• “gripe” sites, criticism, freedom of expression
• google AdWords
• domain names
• online; colloquial, media use
• Social media & user generated content
 E n f o rc e m e n t I s s u e s

• Think about your mark as a “brand”

• The brand is bigger than the mark, but the mark is a key
to the brand
• Brands need reputation and control (so do trademarks!)

• Think about: online issues, social media, loss of control,

protects, parodies, satires, viral exposure; ambush marketing
battles

• Public relations issues

 E n f o rc e m e n t I s s u e s

• Enforcement options

• Opposition proceedings
• Litigation (infringement, passing off, etc.)
• Domain name proceedings – CDRP, UDRP
• Non-use expungement
• Expungement proceedings
 E n f o rc e m e n t I s s u e s

• Enforcement options

• Opposition proceedings
• Stop objectionable trademark registrations
• Generally, can also be a trigger to settle broader co-
existence or other issues

• But – realize that non-registration of itself does not

prevent a competitor from continuing to use a mark!
 E n f o rc e m e n t I s s u e s

• Enforcement options

• Litigation (infringement, passing off, etc.)

• Generally, based on confusion
• Expensive to go all the way through a trial
• But – most cases never get to trial – especially in US,
often stop at the preliminary injunction stage
• Often – goal is injunction, not damages

• $$$:
• Damages
• Accounting of profits
• Statutory damages
• Exemplary / punitive damages
 E n f o rc e m e n t I s s u e s

• Expungement proceedings:

• Under certain circumstances, a trademark registration can

be expunged (removed) from the register
• Big one: non-use – if a mark has not been used in Canada for
three years, can be expunged
• Inexpensive – just write a letter to CIPO and pay a fee - $400
• Trademark owner then has to provide proof of use within the
last three years
• If the owner provides “proof”, you can argue about it – that
can be expensive
 E n f o rc e m e n t I s s u e s

• Expungement proceedings:

• Also, can ask court to expunge as descriptive, non-

distinctive, etc.

• 57. (1) The Federal Court has exclusive original jurisdiction,

on the application of the Registrar or of any person
interested, to order that any entry in the register be struck
out or amended on the ground that at the date of the
application the entry as it appears on the register does not
accurately express or define the existing rights of the person
appearing to be the registered owner of the mark.