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Canadian trade-mark law provides protection to marks statutorily under the Canadian Trade-mark Act and also at common law. Trade-mark law provides protection for distinctive marks, certification marks, distinguishing guises, and proposed marks against those who appropriate the goodwill of the mark or create confusion between different vendors' wares (i.e., goods) and services or both. A mark can be protected either as a registered trade-mark under the Act or can alternately be protected by a common law action in passing off.

[edit] Passing off

Most of the law of passing off has been inherited from the UK case law. For a successful action in passing off the claimant must first show that the owner of the wares had goodwill or reputation within an identifiable market area. Second, the claimant must show that the other party's use of the mark constitutes misrepresentation of their wares as those of the claimants. Third, the claimant must show that the misrepresentation could potentially or actually did cause harm.

[edit] Registerable marks

A mark must be registerable in order to be fully protected under the Act. Generally, all visual marks can be registered with the exception of marks that possess certain characteristics prohibited by the Act. Among the prohibited characteristics include:

• a mark cannot be registerable if it is "primarily merely" a family name.
• a mark that can produce confusion with another vendor's mark
• a mark that is "clearly descriptive" or "deceptively misdescriptive" of the associated wares or services.
• one of an enumerated prohibited marks such as government, royal, or international marks.

[edit] Infringement

A mark that has been validly registered gives the exclusive right to the owner to use the mark throughout Canada, and to sue another party who uses a mark that interferes with the owner's right. Under section 20 of the Act, the owner must have a) registered the mark, b) used the mark, and c) used it for the sale of identical wares or services.

[edit] Case Law

• Mattel, Inc. v. 3894207 Canada Inc., [2006] 1 S.C.R. 772, 2006 SCC 22, the BARBIE case.
• Kirkbi AG v. Ritvik Holdings Inc., [2005] 3 S.C.R. 302 , 2005 SCC 65, the Lego case.

[edit] See also

• Trademark symbol

[edit] External links

Wikibooks has a book on the topic of Canadian law:Trade-mark law

• Trade-mark Act ( R.S., 1985, c. T-13 )
• Guide to Trade-marks from Canadian Intellectual Property Office
• Canadian Trademark Law FAQ
• Canadian Trademark Blog

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