Trade-Mark Infringement

Three Types of Infringement s.19 – Use of the same mark in respect of the same wares s.19 – Use of the same mark in respect of the same wares Rarely litigated Rarely litigated s.20 – Use of a confusing mark s.20 – Use of a confusing mark Most common Most common s.22 – Depreciation of goodwill s.22 – Depreciation of goodwill Equivalent to what is known as “dilution” in Us. law Equivalent to what is known as “dilution” in Us. law Scope unclear – very limited caselaw Scope unclear – very limited caselaw Controversial Controversial

Depreciation of Goodwill 22 (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 22 (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 Controversial and rarely (but not never) used Controversial and rarely (but not never) used Important especially for famous marks Important especially for famous marks Where confusion is difficult to show because wares are not similar Where confusion is difficult to show because wares are not similar

Section 19 Same Mark, Same Wares Marks are registered in respect of specified wares Marks are registered in respect of specified wares Same mark, same wares = s.19 infringement Same mark, same wares = s.19 infringement NO need to show confusion NO need to show confusion Same mark, different wares is NOT caught by s.19 Same mark, different wares is NOT caught by s.19 Similar mark, same wares is NOT caught by s.19 Similar mark, same wares is NOT caught by s.19

Section 19 s the registration of a trade-mark in respect of any wares or services, unless shown to be invalid, gives to the owner of the trade-mark the exclusive right to the use throughout Canada of the trade-mark in respect of those wares or services. s the registration of a trade-mark in respect of any wares or services, unless shown to be invalid, gives to the owner of the trade-mark the exclusive right to the use throughout Canada of the trade-mark in respect of those wares or services.

s.19 “Use” “Use” in s.19 has been judicially interpreted to mean “use as a mark” ie for the purpose of distinguishing the wares. “Use” in s.19 has been judicially interpreted to mean “use as a mark” ie for the purpose of distinguishing the wares. Use of the mark by a competitor in comparative advertising does not infringe s.19 Use of the mark by a competitor in comparative advertising does not infringe s.19

Confusing use 20 (1) The right of the owner of a registered trade-mark to its exclusive use shall be deemed to be infringed by a person...who sells, distributes or advertises wares or services in association with a confusing trade-mark or trade- name (1) The right of the owner of a registered trade-mark to its exclusive use shall be deemed to be infringed by a person...who sells, distributes or advertises wares or services in association with a confusing trade-mark or trade- name... May be same mark, different wares May be same mark, different wares Different mark, same wares Different mark, same wares Different mark, different wares Different mark, different wares

s.19 & 20 The section headings to ss.19 & 20 respectively are The section headings to ss.19 & 20 respectively are Rights conferred by registration – s. 19 Rights conferred by registration – s. 19 Infringement – s. 20(1) Infringement – s. 20(1) This suggests that s.19 defines the right and s.20 defines infringement This suggests that s.19 defines the right and s.20 defines infringement However, the sections are generally understood to define two different heads of infringement However, the sections are generally understood to define two different heads of infringement

Bona Fide Use of Personal Name s.20(1)... but no registration of a trade-mark prevents a person from making s.20(1)... but no registration of a trade-mark prevents a person from making (a) any bona fide use of his personal name as a trade-name, or (a) any bona fide use of his personal name as a trade-name, or (b) any bona fide use, other than as a trade-mark, (b) any bona fide use, other than as a trade-mark, (i) of the geographical name of his place of business, or (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, (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 trade- mark in such a manner as is not likely to have the effect of depreciating the value of the goodwill attaching to the trade- mark This part of s.20 is generally understood to apply to protect any use, whether the infringement is claimed under s.19 or s.20 This part of s.20 is generally understood to apply to protect any use, whether the infringement is claimed under s.19 or s.20

Bona Fide Use of Personal Name This part of s.20 is generally understood to apply to protect any use, whether the infringement is claimed under s.19 or s.20 This part of s.20 is generally understood to apply to protect any use, whether the infringement is claimed under s.19 or s.20

Personal Name Note that you can use your personal name as a trade-name even if it is confusing Note that you can use your personal name as a trade-name even if it is confusing Eg Brick’s Fine Furniture (owned by the Bricks) and Brick Furniture Warehouse Eg Brick’s Fine Furniture (owned by the Bricks) and Brick Furniture Warehouse However, it is probably the case that you cannot use your personal name as a trade mark if that would be confusing However, it is probably the case that you cannot use your personal name as a trade mark if that would be confusing Eg A person named Heintzman can sell pianos under the name “Heintzman Piano Company”, but cannot sell “Heintzman pianos” Eg A person named Heintzman can sell pianos under the name “Heintzman Piano Company”, but cannot sell “Heintzman pianos”

Confusing Use: s.20

Confusion 20 (1) The right of the owner of a registered trade-mark [is] infringed by a person...who sells...wares...in association with a confusing trade-mark or trade-name (1) The right of the owner of a registered trade-mark [is] infringed by a person...who sells...wares...in association with a confusing trade-mark or trade-name...

Confusion “Confusion” defined by s.6 “Confusion” defined by s.6 "confusing", when applied as an adjective to a trade- mark or trade-name, means a trade-mark or trade- name the use of which would cause confusion in the manner and circumstances described in section 6; "confusing", when applied as an adjective to a trade- mark or trade-name, means a trade-mark or trade- name the use of which would cause confusion in the manner and circumstances described in section 6;

Confusion as to the Source 6(2) 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,... 6(2) 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,... Only confusion as to the source of the goods constitutes infringement Only confusion as to the source of the goods constitutes infringement Recall: Goal of trade-marks is to inform consumers as to the source of the goods Recall: Goal of trade-marks is to inform consumers as to the source of the goods Only a use which interferes with this function constitutes infringement Only a use which interferes with this function constitutes infringement

Confusion as to the Source 6(2) 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...are manufactured, [or] sold...by the same person... 6(2) 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...are manufactured, [or] sold...by the same person...

Confusion as to the Source Only confusion as to the source of the goods constitutes infringement Only confusion as to the source of the goods constitutes infringement Recall: Goal of trade-marks is to inform consumers as to the source of the goods Recall: Goal of trade-marks is to inform consumers as to the source of the goods Only a use which interferes with this function constitutes infringement Only a use which interferes with this function constitutes infringement

Actual Confusion 6(2) 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...are manufactured, [or] sold...by the same person... 6(2) 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...are manufactured, [or] sold...by the same person... The question is a hypothetical The question is a hypothetical No requirement that the marks actually be used in the same area / no actual confusion required No requirement that the marks actually be used in the same area / no actual confusion required Why not? Why not?

Confusion as to the Source 6(2) 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...are manufactured, [or] sold...by the same person... 6(2) 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...are manufactured, [or] sold...by the same person...

Actual Confusion Though is it not necessary to show actual confusion, actual confusion or lack thereof is not irrelevant Though is it not necessary to show actual confusion, actual confusion or lack thereof is not irrelevant Evidence of actual confusion is strong evidence of likelihood of confusion Evidence of actual confusion is strong evidence of likelihood of confusion Absence of evidence of actual confusion may be evidence of absence of likelihood of confusion Absence of evidence of actual confusion may be evidence of absence of likelihood of confusion When the marks have been used in the same market for some time When the marks have been used in the same market for some time Eg Pepsi-Cola v Coca-Cola Eg Pepsi-Cola v Coca-Cola

“Have Regard” to Factors 6(5) In determining whether trade-marks...are confusing, the court... shall have regard to all the surrounding circumstances including.. 6(5) In determining whether trade-marks...are confusing, the court... shall have regard to all the surrounding circumstances including.. The list which follows is not exhaustive The list which follows is not exhaustive The ultimate question is likelihood of confusion The ultimate question is likelihood of confusion

“Have Regard” to Factors The court must “have regard” to the listed factors, but The court must “have regard” to the listed factors, but There is no need to show that all of these conditions are ‘satisfied’ There is no need to show that all of these conditions are ‘satisfied’ The factors are not necessarily of equal weight The factors are not necessarily of equal weight The weight given to each will depend on the circumstances The weight given to each will depend on the circumstances

Factors Including Including (a) the inherent distinctiveness of the trade-marks or trade-names and the extent to which they have become known; (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; (b) the length of time the trade-marks or trade- names have been in use; (c) the nature of the wares, services or business; (c) the nature of the wares, services or business; (d) the nature of the trade; and (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 (e) the degree of resemblance between the trade- marks or trade-names in appearance or sound or in the ideas suggested by them

Strength (a) the inherent distinctiveness of the trade- marks or trade-names and the extent to which they have become known; (a) the inherent distinctiveness of the trade- marks or trade-names and the extent to which they have become known; The “strength” of the mark The “strength” of the mark A mark may be strong because A mark may be strong because It is inherently very distinctive: eg fanciful marks – Exxon It is inherently very distinctive: eg fanciful marks – Exxon It has become very famous through use, eg Vogue It has become very famous through use, eg Vogue A stronger mark has a broader field in which it is protected A stronger mark has a broader field in which it is protected Confusion might be found in respect of Confusion might be found in respect of A broader range of wares A broader range of wares )Use of a less similar mark )Use of a less similar mark

Strength A stronger mark has a broader field in which it is protected A stronger mark has a broader field in which it is protected Confusion might be found in respect of Confusion might be found in respect of A broader range of wares A broader range of wares Use of a less similar mark Use of a less similar mark

Taxonomy (1) generic – the name of the wares: shredded wheat (1) generic – the name of the wares: shredded wheat (2) descriptive – descriptive of the wares: Canadian beer (2) descriptive – descriptive of the wares: Canadian beer (3) suggestive – Alpine beer (3) suggestive – Alpine beer arbitrary (a real word applied out of context) arbitrary (a real word applied out of context) (4) fanciful (not a real word – eg Exxon) (4) fanciful (not a real word – eg Exxon)

Field (c) the nature of the wares, services or business; (c) the nature of the wares, services or business; The more similar the wares, the greater the likelihood of confusion The more similar the wares, the greater the likelihood of confusion Though it is not necessary that the mark be registered in respect of the defendant’s wares for confusion to arise Though it is not necessary that the mark be registered in respect of the defendant’s wares for confusion to arise The same mark in completely different fields may not be confusing The same mark in completely different fields may not be confusing Dodge Dart and Dart plastic coffee cup lids Dodge Dart and Dart plastic coffee cup lids

Nature of the Trade (d) the nature of the trade; and (d) the nature of the trade; and The circumstances in which the wares are sold The circumstances in which the wares are sold Are the wares sold together, in the same shop? Are the wares sold together, in the same shop? Who are the purchasers? Who are the purchasers? Are they professional buyers? Are they professional buyers? Are they purchased hastily, or after close inspection? Are they purchased hastily, or after close inspection?

Resemblance (e) the degree of resemblance between the trade- marks or trade-names in appearance or sound or in the ideas suggested by them (e) the degree of resemblance between the trade- marks or trade-names in appearance or sound or in the ideas suggested by them The more similar, the greater the likelihood of confusion The more similar, the greater the likelihood of confusion The similarity may be appearance or sound The similarity may be appearance or sound

Length of Use (b) the length of time the trade-marks or trade- names have been in use; (b) the length of time the trade-marks or trade- names have been in use; May be relevant in different ways May be relevant in different ways A mark which is long established may be stronger A mark which is long established may be stronger See United Artists See United Artists But if two marks have been used together for a long period, it may become necessary to show actual confusion But if two marks have been used together for a long period, it may become necessary to show actual confusion See Pepsi-Cola See Pepsi-Cola

Mr Submarine At this point the learned judge considered and appears to have taken into account that there was no similarity in the style of lettering used and the colouring of the signs of the parties and that the appearances of the two marks as actually used on signs, boxes, etc, is quite different. At this point the learned judge considered and appears to have taken into account that there was no similarity in the style of lettering used and the colouring of the signs of the parties and that the appearances of the two marks as actually used on signs, boxes, etc, is quite different.

Mr Submarine These in my opinion would be very relevant considerations if the proceeding were a passing- off action at common law. They are irrelevant in a proceeding for infringement of a registered trade mark and should have been given no weight in determining whether the trade marks and trade names in issue are confusing with the appellant's registered mark. These in my opinion would be very relevant considerations if the proceeding were a passing- off action at common law. They are irrelevant in a proceeding for infringement of a registered trade mark and should have been given no weight in determining whether the trade marks and trade names in issue are confusing with the appellant's registered mark.

Mr Submarine Why are these factors irrelevant? Why are these factors irrelevant? REGISTRATION NUMBER: REGISTRATION NUMBER: TMA TMA TRADE-MARK: TRADE-MARK: MR. SUBMARINE MR. SUBMARINE DISCLAIMER TEXT: DISCLAIMER TEXT: The right to the exclusive use of the word SUBMARINE is disclaimed apart from the trade-mark. The right to the exclusive use of the word SUBMARINE is disclaimed apart from the trade-mark.

Mr Submarine Note: JB Submarine (TMA489039) and Captain Submarine (TMA195908) are both registered marks Note: JB Submarine (TMA489039) and Captain Submarine (TMA195908) are both registered marks Are these confusing with “Mr. Submarine”? Are these confusing with “Mr. Submarine”?

Nominative Use

Despite the wording of s.19, that section only prohibits the use of the mark “as a mark”, that is, in identifying the source of the wares Despite the wording of s.19, that section only prohibits the use of the mark “as a mark”, that is, in identifying the source of the wares Yeast-Vite, adopted in Clairol v Thomas Supply Yeast-Vite, adopted in Clairol v Thomas Supply Nominative use of the mark is not actionable under s.19 Nominative use of the mark is not actionable under s.19 The situation with respect to s.22 is not clear The situation with respect to s.22 is not clear

New Kids Why are the New Kids objecting to the use of their name in the polls? Why are the New Kids objecting to the use of their name in the polls?