1. Trade-marks

2. Trade-marks A trade-mark is any mark which identifies the source of the wares A trade-mark is any mark which identifies the source of the wares Trademark in the US Trademark in the US Trade mark in the UK Trade mark in the UK

3. Trade-marks Trade-marks are protected by Trade-marks are protected by The common law of passing off The common law of passing off Passing off was once known as unfair competition Passing off was once known as unfair competition And still is in the US And still is in the US The Trade-marks Act The Trade-marks Act The Act applies only to marks which are registered The Act applies only to marks which are registered Unfair Competition Act was predecessor of Trade-Marks Act Unfair Competition Act was predecessor of Trade-Marks Act Hence trade-marks may be registered or unregistered Hence trade-marks may be registered or unregistered

4. Passing Off & Trade-marks Passing off and the Trade-marks Act offer very similar protection Passing off and the Trade-marks Act offer very similar protection It is very common to allege both passing off and an infringement of the TMA in the same action It is very common to allege both passing off and an infringement of the TMA in the same action Differences are procedural Differences are procedural Territorial extent Territorial extent PO is limited to region in which the mark is actually known PO is limited to region in which the mark is actually known TMA protection it national on registration TMA protection it national on registration Establishing of reputation Establishing of reputation PO requires reputation be established by evidence PO requires reputation be established by evidence TMA requires only use as prerequisite to registration TMA requires only use as prerequisite to registration

5. Principles Trade-marks law protects an association between a mark and the source of the wares Trade-marks law protects an association between a mark and the source of the wares Contrast trade-marks with patent and copyright in which the wares themselves are protected Contrast trade-marks with patent and copyright in which the wares themselves are protected The operation of the market relies extensively on brands The goodwill associated with them is considered to be a most valuable form of property However, despite its connection with a product, a mark must not be confused with the product – it is something else, a symbol of a connection between a source of a product and the product itself. The operation of the market relies extensively on brands The goodwill associated with them is considered to be a most valuable form of property However, despite its connection with a product, a mark must not be confused with the product – it is something else, a symbol of a connection between a source of a product and the product itself. Kirkbi v Rivtik SCC Kirkbi v Rivtik SCC

6. Principles Corollary Corollary Functionality is not protected by trade-marks law Functionality is not protected by trade-marks law To achieve protection for functional aspects of a work, copyright or patent protection must be sought To achieve protection for functional aspects of a work, copyright or patent protection must be sought

7. Principles Why is it important to protect the association between the mark and the wares? Why is it important to protect the association between the mark and the wares? In many cases the quality of the wares cannot be determined by direct inspection at the time of the purchase In many cases the quality of the wares cannot be determined by direct inspection at the time of the purchase Only experience – and hindsight – tells the quality of the goods Only experience – and hindsight – tells the quality of the goods Reputation is the basis of the sale Reputation is the basis of the sale

8. Principles A good reputation sets up a virtuous circle A good reputation sets up a virtuous circle Consumers buy the manufacturers goods because of the reputation Consumers buy the manufacturers goods because of the reputation The manufacturer keeps up its reputation because this leads consumers to purchase The manufacturer keeps up its reputation because this leads consumers to purchase Note that it is expensive to produce high quality wares Note that it is expensive to produce high quality wares A good reputation allows a provider to charge commensurately more for their wares A good reputation allows a provider to charge commensurately more for their wares

9. Principles Once the reputation is established a forger can exploit the mark by selling inferior quality goods at the same price as is commanded by the owners higher quality goods Once the reputation is established a forger can exploit the mark by selling inferior quality goods at the same price as is commanded by the owners higher quality goods The forger could choose to offer high quality goods The forger could choose to offer high quality goods But it wont But it wont The forger can make extraordinary profits by offering inferior goods at the same price The forger can make extraordinary profits by offering inferior goods at the same price

10. Elements Trade-marks law protects reputation by protecting the link between the source and the wares Trade-marks law protects reputation by protecting the link between the source and the wares The mark may be a manufacturers mark The mark may be a manufacturers mark A distributors mark A distributors mark A retailers mark A retailers mark A service mark A service mark This allows the reputation of the source to develop through consumers experience with wares associated with the mark This allows the reputation of the source to develop through consumers experience with wares associated with the mark

11. Elements Because trade-marks law is aimed at protecting reputation the key element is confusion in the mind of the consumers as to the source of the wares Because trade-marks law is aimed at protecting reputation the key element is confusion in the mind of the consumers as to the source of the wares The mark must be The mark must be Confusingly similar, and Confusingly similar, and Confusing as to the source of the wares Confusing as to the source of the wares Using the mark to refer to the source of the wares is not confusing Using the mark to refer to the source of the wares is not confusing Eg I own a Honda Eg I own a Honda

12. Source Theory This is encapsulated in the traditional source theory This is encapsulated in the traditional source theory The function of a trademark is to impart information as to the source or sponsorship of the product. The function of a trademark is to impart information as to the source or sponsorship of the product. Singer Mfg Co v Loog (1880) 18 ChD 395 Singer Mfg Co v Loog (1880) 18 ChD 395

13. Source Theory In other words, what the registered mark does nowadays is to ensure that the wares or services are the wares and services of a particular person and no one else, that is, the source of the goods is guaranteed. In other words, what the registered mark does nowadays is to ensure that the wares or services are the wares and services of a particular person and no one else, that is, the source of the goods is guaranteed. United Artists Corp v Pink Panther Beauty Corp 80 CPR (3d) 247 (FCA) at 256 United Artists Corp v Pink Panther Beauty Corp 80 CPR (3d) 247 (FCA) at 256 [T]he traditionally accepted premise that the only legally relevant function of a trademark is to impart information as to the source or sponsorship of the product. [T]he traditionally accepted premise that the only legally relevant function of a trademark is to impart information as to the source or sponsorship of the product. Smith v Chanel, Inc, 402 F2d 562 (9th Cir 1968) at 566: Smith v Chanel, Inc, 402 F2d 562 (9th Cir 1968) at 566:

14. Source Theory Contrast source theory with Contrast source theory with Guarantee theory Guarantee theory The function of the mark is to guarantee the quality of the goods The function of the mark is to guarantee the quality of the goods Property theory Property theory Ownership of the mark Ownership of the mark Dilution theory Dilution theory

15. Ciba-Geigy v Apotex Gontier J suggests that the passing-off action is intended to protect a form of ownership Gontier J suggests that the passing-off action is intended to protect a form of ownership the passing off injures the right of property in the plaintiff, that right of property being his right to the goodwill of his business the passing off injures the right of property in the plaintiff, that right of property being his right to the goodwill of his business The suggestion that trade-marks are a form of property is dangerous, as it suggests that the owner can control any use of the trade-mark, even those which do not cause any confusion The suggestion that trade-marks are a form of property is dangerous, as it suggests that the owner can control any use of the trade-mark, even those which do not cause any confusion Eg Whats in Jeremys wallet Eg Whats in Jeremys wallet

16. Ciba-Geigy v Apotex The suggestion that trade-marks law protects the property of the owner stems from the fact that the owner of the mark, not the consumer, brings the action The suggestion that trade-marks law protects the property of the owner stems from the fact that the owner of the mark, not the consumer, brings the action [i]t should never be overlooked that unfair competition cases are affected with a public interest. A dealer's good will is protected, not merely for his profit, but in order that the purchasing public may not be enticed into buying A's product when it wants B's product. [i]t should never be overlooked that unfair competition cases are affected with a public interest. A dealer's good will is protected, not merely for his profit, but in order that the purchasing public may not be enticed into buying A's product when it wants B's product. Ciba-Geigy Ciba-Geigy But if the law is really about protecting the consumer, why is the T-M owner given the right of action? But if the law is really about protecting the consumer, why is the T-M owner given the right of action?

17. Ciba-Geigy v Apotex The interests of the owner and the consumer are aligned when a forger uses a confusing mark The interests of the owner and the consumer are aligned when a forger uses a confusing mark Since the owner has more at stake than any individual consumer, the owner brings the action Since the owner has more at stake than any individual consumer, the owner brings the action But the interests of the owner and the consumer are not aligned in the case of non-confusing uses But the interests of the owner and the consumer are not aligned in the case of non-confusing uses This is when it is necessary to determine who the law is really intended to protect This is when it is necessary to determine who the law is really intended to protect

18. Dilution and Passing Off Trade-mark dilution has been recognized in the US Trade-mark dilution has been recognized in the US Arises when defendant blurs or tarnishes a mark Arises when defendant blurs or tarnishes a mark

19. Dilution Blurring applies to famous marks Blurring applies to famous marks Kodak bicycles would blur the distinctiveness of Kodak film, even without confusion Kodak bicycles would blur the distinctiveness of Kodak film, even without confusion An extension of traditional source theory An extension of traditional source theory

20. Dilution Tarnishment Tarnishment Derogatory use of a mark Derogatory use of a mark Enjoy Cocaine Enjoy Cocaine Dallas Cowboys Cheerleaders, Inc v Pussycat Cinema, Ltd, 604 F2d 200 (2d Cir 1979) Dallas Cowboys Cheerleaders, Inc v Pussycat Cinema, Ltd, 604 F2d 200 (2d Cir 1979) Plaintiff's distinctive uniform diluted by defendant's use of a similar uniform in an X-rated movie Plaintiff's distinctive uniform diluted by defendant's use of a similar uniform in an X-rated movie Pillsbury Co v Milky Way Prods, Inc, 215 USPQ 124 (ND Ga 1981) Pillsbury Co v Milky Way Prods, Inc, 215 USPQ 124 (ND Ga 1981) Plaintiff's trade characters "Poppin" Fresh" and "Poppie Fresh" diluted by depiction of them engaged in sexual acts Plaintiff's trade characters "Poppin" Fresh" and "Poppie Fresh" diluted by depiction of them engaged in sexual acts MTD v John Deere MTD v John Deere John Deere lawn tractor being chased by MTD tractor John Deere lawn tractor being chased by MTD tractor Nothing runs like a Deere Nothing runs like a Deere Much closer to property right in the mark itself Much closer to property right in the mark itself

21. Google AdWords Use in Commerce? Use in Commerce? In Canada sells, distributes or advertises wares or services in association … In Canada sells, distributes or advertises wares or services in association … Yes Yes Google France v Louis Vuitton, A-G ECJ Sept 2009 Google France v Louis Vuitton, A-G ECJ Sept 2009 Rescuecom Corp. v. Google, Inc., (2009, 2 nd Cir.) Rescuecom Corp. v. Google, Inc., (2009, 2 nd Cir.) Confusing Use? Confusing Use? No – Google France No – Google France Maybe - Rescuecom Maybe - Rescuecom

22. Passing Off – Elements Despite some waffling, the traditional elements of passing off remain: Despite some waffling, the traditional elements of passing off remain: (1) A reputation (1) A reputation An association in the mind of the public between the mark and the source An association in the mind of the public between the mark and the source (2) A misrepresentation leading or likely to lead to confusion in the mind of the public (2) A misrepresentation leading or likely to lead to confusion in the mind of the public (3) Damage to the plaintiff (3) Damage to the plaintiff

23. Passing Off – Intent Intent to confuse is not an element Intent to confuse is not an element For this reason it is sometimes said that the right is proprietary For this reason it is sometimes said that the right is proprietary This does not mean that the owner owns the mark in the sense that they can prohibit any use whatsoever of the mark This does not mean that the owner owns the mark in the sense that they can prohibit any use whatsoever of the mark Confusion remains a requirement Confusion remains a requirement

24. Passing Off – Elements Intent to confuse is not an element Intent to confuse is not an element For this reason it is sometimes said that the right is proprietary For this reason it is sometimes said that the right is proprietary This does not mean that the owner owns the mark in the sense that they can prohibit any use whatsoever of the mark This does not mean that the owner owns the mark in the sense that they can prohibit any use whatsoever of the mark

25. Trade-marks & Passing Off Differences between registered and unregistered marks relate to reputation Differences between registered and unregistered marks relate to reputation Not necessary to prove a reputation Not necessary to prove a reputation Registration is permitted upon use Registration is permitted upon use Nationwide protection Nationwide protection Passing off protects only in the geographical areas in which a reputation has been gained Passing off protects only in the geographical areas in which a reputation has been gained