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«Report Q195 in the name of the Canadian Group by Rose-Marie PERRY, Q.C. and Steve GARLAND Limitations of the Trademark Protection Questions Note: the ...»

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Canada

Canada

Kanada

Report Q195

in the name of the Canadian Group

by Rose-Marie PERRY, Q.C. and Steve GARLAND

Limitations of the Trademark Protection

Questions

Note: the following topics are not to be covered in the Group answers:

– Exhaustion

– Limitations on trademark rights by competition law

– Limitations on trademark rights by the right to freedom of expression

– Comparative advertising

– Acquiescence.

I) Analysis of current law and case law

The Groups are invited to answer the following questions under their national laws:

1) Are there statutory limitations of trademark rights in your trademark law? If so, which ones? If not, have similar concepts been developed in case law? (Please only briefly list the limitations here; more detailed explanations will be required below).

Section 11.16 of the Trade-marks Act provides that a protected geographical indication does not prevent a person from using in the course of trade that person’s name or the name of the person’s predecessor except where the name is used such a manner as to mislead.

Section 11.18(3) and (4) in respect of wines or spirits provides that a protected geographical indication does not prevent the adoption, use or registration as a trade-mark or otherwise in connection with a business of certain identified “generic” geographic names.

Section 20(1) of the Trade-marks Act which deals with infringement provides that 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 the wares or services, in as such manner as is not likely to have the effect of depreciating the value of the goodwill attaching to the trade-mark.

Pursuant to section 20(2), no registration of a trade-mark prevents a person from making any use of any of the “generic” geographic indications identified in under Section 11.18 (3) and 11.18 (4) in association with wine or with spirits.

Pursuant to section 21 of the Canadian Trade-marks Act, a Court may under certain circumstances and under terms it deems just, permit a third party to use a trade-mark that is considered to be confusing with a registered mark, if the Court concludes that such contemporaneous use is not contrary to the public interest.

In the case of a certification mark which is descriptive of the place of origin of the wares or services, and not confusing with any registered trade-mark, the certification mark may be registered by the administrative authority of the country, state, province or municipality, including or forming part of the area indicated by the mark but the owner of the mark registered under this section shall permit the use of the mark in association with any wares or services produced or performed in the area of which the mark is descriptive (Section 25).

2) If descriptive use defences are recognised under your trademark law, what is descriptive use and what types of descriptive use defences are recognised? (Please only briefly list the types of descriptive use defences here; more detailed explanations will be required below) Section 20 of the Trade-marks Act deals with infringement but provides that 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 geographic name of his place of business or ii) of any accurate description of the character or quality of his wares or services in such manner as is not likely to have the effect of depreciating the value of the goodwill attaching to the trade-mark.

Moreover, no registration of a trade-mark prevents a person from making any use of any indication of a geographic indication of origin under Section 11.18(3) that deals with wines or any geographic indication in Subsection 11.18(4) in association with spirits.

3) Is use of one’s own name permissible under your trademark law? If so, under which circumstances? Specifically, may anyone use his or her name as a trademark?

Section 12(1)(a) of the Canadian Trade-marks Act provides that a word that is primarily merely the name or the surname of an individual who is living or has died within the preceding thirty years is not registrable. In order to determine the primary meaning of the word, examiners must determine what in their opinions would be the response of the general public of Canada to that word. If the name or surname significance is greater than the other significance of the word, an objection pursuant to section 12(1)(a) is made to the application.

On the other hand, if the other significance of the word predominates in the mind of the hypothetical Canadian, no objection will be made. For example, ELDERS was found to be registrable because it was not primarily a surname; it had another dictionary meaning.

Even if a mark is considered to be primarily, merely a name or surname, it may still be registrable if it has been so used in Canada by the applicant or his predecessor in title as to have become distinctive as of the date of filing of the application in Canada (Section 12(2)).





As noted above, pursuant to section 20(1), a person is entitled to make a bona fide use of their personal name as a trade name.

4) Is a company entitled to make use of the “own name” defence? Specifically, is the “own name” defence only available to a company whose name includes a surname (e.g. William Smith Limited)?

Section 20(1) of the Trade-marks Act provides that the right of an owner of a registered trademark to its exclusive use will be infringed by a person not entitled to its use who sells, distributes or advertises wares or services in association with a confusing trade-mark or trade

name but no registration of a trade-mark prevents a person from making:

any bona fide use of his personal name as a trade name or any bona fide use, other than a) as a trade-mark

i) of the geographical name of his place of business or ii) any accurate description of the character or quality of the wares or services.

A trade name is defined in the Trade-marks Act as meaning “the name under which any business is carried on, whether or not it is the name of a corporation, or partnership or an individual.

Section 20(1) of the Trade-marks Act provides an exception to what would otherwise constitute an infringement of a registered trade-mark, stipulating that no registration of a trade-mark prevents a person from making any bona fide use of his/her personal name as a trade name, or any bona fide use other than as a trade-mark in such a manner that would not likely have the effect of depreciating the value of the goodwill attaching to the trade-mark.

However, in the Exchequer Court decision in Kayser-Roth v. Fascination Lingerie (1971) 3 C.P.R. 2nd 27, the court held that a corporation is not entitled to this defence and that the section applies only to an “individual person or self”. Subsequent attempts to invoke this defence on behalf of corporations have failed.

How are conflicts between the company’s use of its “own name” and confusingly similar trademarks resolved?

Canada is comprised of a federal government and 13 provincial and territorial governments.

In Canada, companies may be incorporated either federally or provincially under a company name. In some jurisdictions, a company may be required to register a business name (trade name) under which it operates that is different from the company name. In many cases, the provincial jurisdiction will require an extra territorial company operating within its jurisdiction to register its company or business name with the provincial company or business name registrar, for example, a company incorporated under the laws of British Columbia will be required to register its name with the Ontario Registrar of Company/Business Names if the company is conducting business within the province of Ontario.

Federally, a company name is registered under the Canadian Business Corporations Act.

Under Section 12(1) of the Canadian Business Corporations Act, a corporation cannot be incorporated or continued if its name is identical to an existing registered company name.

It is to be noted that registration of a corporate name or trade name under federal or provincial legislation (as discussed above) does not constitute a defence under the Trademarks Act or common law in respect of an action for trade-mark infringement, depreciation of goodwill, or passing off.

Under Section 16(1) of the Trade-marks Act, a party cannot register a trade-mark if it is confusing with a trade name that has been previously used in Canada. A trade-mark will be considered to be confusing with a trade name if the use of both the trade-mark and trade name in the same area would likely lead to the inference that the wares or services associated with the business carried on under the trade-mark and those associated with the business carried on under the trade name are manufactured, sold, leased, hired or performed by the same person whether or not the wares or services are of the same general class. (Section 16(3) of the Trade-marks Act).

Conversely, section 20 prevents a third party from using a trade name that is confusing with a registered mark.

A trade name may also be registered as a trade-mark if it is used as a trade-mark as defined in the Act, that is, it is used for the purpose of distinguishing or so as to distinguish wares or services manufactured, sold, leased, hired or performed by the company from those of others.

Pursuant to section 7(b) and section 7(c) of the Trade-marks Act, the owner of a trade name, unregistered trade-mark or registered trade-mark may bring an action to prevent another person from passing off or directing public attention to its wares or services in such a way that it is likely to cause confusion between the wares and services of the two parties, for example, by using a confusing trade-mark or trade name.

The law with respect to the incorporation of provincial companies varies from province to province but the protection afforded in each province is generally the same and, therefore, the Province of Ontario can be used as being representative of the other provinces. In Ontario, a company name is registered pursuant to the Ontario Business Corporations Act (OBCA). Pursuant to Section 9 of the OBCA, no company can use a name that is deceptively similar to that used by any other company association, sole proprietorship, trust, partnership or individual. Business names (including extra territorial company/business names) are required to be registered in accordance with the Ontario Business Names Act. The company name and the business name will not be accepted for registration if they are identical to an existing company or business name. The owner of a provincial business name has the same protection available to it under the Trade-marks Act as a federal business name referred to above.

5) Is the use of indications concerning the characteristics of the goods or services, including the kind, quality, value, geographical origin or time of production of goods permissible under your trademark law? If so, under which circumstances?

A mark that is, when depicted, written or sounded, merely descriptive or deceptively misdescriptive in English or French of the character or quality of the wares or services in association with which it is proposed to be used or the conditions of or the persons employed in their production or of their place of origin is not registrable. However, such marks can be registered by Canadians on proof of secondary meaning pursuant to section 12(2) of the Trade-marks Act. When invoking section 12(2), it is necessary to file evidence to show that the mark is recognized and distinctive of the applicant for registration. In the case of a foreign applicant that is a member of the Convention, it is entitled to claim the benefits of section 14 of the Trade-marks Act which provides that notwithstanding that the mark is descriptive in Canada and if the applicant has caused that trade-mark to be registered in the country of the

Union, then the trade-mark is registrable in Canada if it is:

a) not confusing with the registered trade-mark;

b) and it is not without distinctive character in Canada having regard to all the circumstances of the case including the length of time during which it has been used in any country;

c) it is not contrary to morality or public order of such a nature as to deceive the public;

d) it is not a trade-mark of which the adoption is prohibited in Canada.

6) Is the use of another’s mark to indicate product compatibility permissible under your trademark law? If so, under what circumstances? Is only the use of another’s word mark in ordinary script or neutral letters permissible or also the use of another’s logo or special script format of the mark?

Section 22 of the Trade-marks Act provides that 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. For a plaintiff to be successful in an action pursuant to section 22 of the Trade-marks Act for damages for depreciating the goodwill of the registered trademark, the defendant must have used the plaintiff’s registered trade-mark in association with wares or services. In the case of Clairol International Corp. and Clairol Inc. of Canada v.

Revlon Supply & Equipment Co. Ltd. (1968) 55 C.P.R. 176, the court found that the defendant’s use of the competitor’s registered trade-mark for hair products on the defendant’s package constituted use of the mark and therefore contravened Section 22 of the Trade-marks Act whereas, the comparative use of the competitor’s trade-mark in a brochure was not considered use of the registered mark and therefore did not constitute a breach of section 22.



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