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Trade-Mark Infringement

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

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Trade-Mark Infringement

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  1. Trade-Mark Infringement

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

  3. 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 • Controversial and rarely (but not never) used • Important especially for famous marks • Where confusion is difficult to show because wares are not similar

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

  5. Section 19 • s.19. . . 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.

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

  7. 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 . . . • May be same mark, different wares • Different mark, same wares • Different mark, different wares

  8. s.19 & 20 • The section headings to ss.19 & 20 respectively are • Rights conferred by registration – s. 19 • Infringement – s. 20(1) • 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

  9. Bona Fide Use of Personal Name • 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 • (b) any bona fide use, other than as a trade-mark, • (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, • 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

  10. 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

  11. Personal Name • Note that you can use your personal name as a trade-name even if it is confusing • EgBrick’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 • EgA person named Heintzman can sell pianos under the name “Heintzman Piano Company”, but cannot sell “Heintzman pianos”

  12. Confusing Use: s.20

  13. 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 . . .

  14. Confusion • “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;

  15. 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,. . . • 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 • Only a use which interferes with this function constitutes infringement

  16. 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 . . .aremanufactured, [or] sold. . .by the same person. . .

  17. Confusion as to the Source • 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 • Only a use which interferes with this function constitutes infringement

  18. 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. . . • The question is a hypothetical • No requirement that the marks actually be used in the same area / no actual confusion required • Why not?

  19. 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 . . .aremanufactured, [or] sold. . .by the same person. . .

  20. Actual Confusion • 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 • 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 • EgPepsi-Cola v Coca-Cola

  21. “Have Regard” to Factors • 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 ultimate question is likelihood of confusion

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

  23. Factors • 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 wares, 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

  24. Strength • (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 • A mark may be strong because • It is inherently very distinctive: egfanciful marks – Exxon • It has become very famous through use, egVogue • A stronger mark has a broader field in which it is protected • Confusion might be found in respect of • A broader range of wares • )Use of a less similar mark

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

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

  27. Field • (c) the nature of the wares, services or business; • 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 • The same mark in completely different fields may not be confusing • Dodge Dart and Dart plastic coffee cup lids

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

  29. Resemblance • (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 similarity may be appearance or sound

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

  31. MrSubmarine • 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.

  32. MrSubmarine • 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.

  33. MrSubmarine • Why are these factors irrelevant? • REGISTRATION NUMBER: • TMA187539 • TRADE-MARK: • MR. SUBMARINE • DISCLAIMER TEXT: • The right to the exclusive use of the word SUBMARINE is disclaimed apart from the trade-mark.

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

  35. Nominative Use

  36. 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 • Yeast-Vite, adopted in Clairol v Thomas Supply • Nominative use of the mark is not actionable under s.19 • The situation with respect to s.22 is not clear

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

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