Trade-marks Act

1. Trade-marks Act

2. Comparison • Registration • Registration is a pre-requisite to protection under the Trade-marks Act • No registration required for passing off

3. Comparison • Reputation/use • It is not necessary to establish reputation under the Act • It is necessary to show use or intended use to obtain registration

4. Comparison • Confusion • Essentially the same in both passing off and under the Act

5. Comparison • Damage as an element • Damage is not an element of the infringement action under the Act • Although it is still necessary to show damages to obtain the remedy

6. Comparison • Geographic scope • Reputation may be geographically localized under passing off • Eg Another sports store named “Radical Edge” could not open in F’ton, but it could in Vancouver • Trade-mark is effective nation-wide under the Act • Local use may support registration

7. Comparison • Trade-mark Act has section prohibiting “depreciation of goodwill” (s.22 which has no common law counter-part)

8. Overview of the Act

9. What is a trade-mark? • What is a trade-mark? • a mark that is used by a person for the purpose of distinguishing or so as to distinguish wares or services manufactured, sold, leased, hired or performed by him from those manufactured, sold, leased, hired or performed by others, • “so as to” – in fact • “for the purpose of” – intent

10. What is a trade-mark? • Also • “distinguishing guise” – as above but shape or mode of packaging instead of “mark” • Like “get-up” in passing off

11. Distinctiveness • "distinctive", in relation to a trade-mark, means a trade-mark that actually distinguishes the wares or services in association with which it is used by its owner from the wares or services of others or is adapted so to distinguish them;

12. Distinctiveness • Note that distinctiveness is not part of the definition of the mark • A mark which is intended to distinguish is a mark even though it does not distinguish in fact; eg “Shredded Wheat’ • Lack of distinctiveness in fact • Is not a ground for refusal of registration by the Registrar – why not? • Is a ground for invalidity or opposition

13. Prohibited Marks • Some marks are protected without registration • “Official marks”: s.9 • National flags, Red Cross • Geographical indications for wines & spirits • S. 11.14, 11.15 • But generic descriptions eg “Champagne” are neither protected nor registrable

14. Registration Required • Protection under the Act is not automatic • A mark must be registered under the Act in order to receive protection under the Act

15. Registration Process • Application is made • Registrar examines mark and may reject on certain grounds • Registrar advertises mark and gives interested third parties an opportunity to object • Normally parties with a confusing registered or unregistered mark

16. Invalidity • The validity of a mark may be challenged even after registration

17. Invalidity • 18 (1) The registration of a trade-mark is invalid if • (a) the trade-mark was not registrableat the date of registration, • (b) the trade-mark is not distinctive at the time proceedings bringing the validity of the registration into question are commenced, or • (c) the trade-mark has been abandoned, • and subject to section 17, it is invalid if the applicant for registration was not the person entitled to secure the registration • Note the difference in the relevant dates

18. Effect of Registration • S16(1) [An applicant who has satisfied use requirements] in association with wares or services is entitled . . . to secure its registration in respect of those wares or services, • A trade-mark is registered in respect of specific wares and services only • that he. . . has used in Canada or made known in Canada in association with wares or services • The mark must have been used in association with those wares or serves

19. Words and Designs • A trade-mark may consist of words alone or words in conjunction with a design • “Molson Export” TMA516835 • “Brewed alcoholic beverages namely, beer” • “Export” application 0545048 by Molson refused • “Export” and design TMA159081 • Disclaimer: “The right to the exclusive use of all the reading matter except the word MOLSON'S is disclaimed apart from the trade mark”

20. Effect of Registration • The right to prohibit use of the same mark on the same wares: s19 • No requirement to show confusion • Not commonly litigated • The right to prohibit use of a confusing mark or name: s20 • Commonly litigated • Need not be the same mark or the same wares

21. Effect of Registration • The right to prohibit uses which might “depreciate the goodwill” of the mark: s22 • Controversial and rarely used

22. Term • Trade-mark registration is effective for 15 years, renewable indefinitely on payment of the prescribed fee: s.46

23. Formalities • ® • US law only – no damages without actual notice of registration unless this symbol is displayed • Applies only to marks registered in the US • ™ and SM • No direct legal implications • Indicates that the word is a mark