Trade-mark Practice in Canada: A Practical Guide

Trade-mark Practice in Canada: A Practical Guide

Theresa M. Corneau (ed.)

Smashwords Edition

2011

Borden Ladner Gervais LLP

Canada

Trade-mark Practice in Canada: A Practical Guide

Copyright © 2011 Borden Ladner Gervais LLP

All rights reserved. Although this is a free book, it remains the copyrighted property of the authors, and may not be reproduced, stored in a retrieval system, copied, or transmitted in any form without prior written permission of the authors. If you found this book to be useful, please encourage others to download a copy.

Published in 2011 by Borden Ladner Gervais LLP

ISBN 978-0-9730750-7-6

The information in this publication is of a general nature, and should not be regarded as legal, accounting, or other professional advice. Intellectual Property law is complex and developing rapidly, and must be considered in the circumstances of each individual transaction, case, or issue. If legal or other expert advice or assistance is required, the services of a competent professional should be sought.

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About the Cover

Charis Tsevis

The Maple Leaf Design was created by Charis Tsevis, who is based in Athens, Greece. He serves global clients and he frequently contributes to prominent publications with articles on design theory, aesthetics, and cyberculture. His work has been awarded at Epica, NPSA, and Ed-Awards in the United States and Europe. Charis Tsevis has studied design and advertising in Athens and Milan and he now teaches Typography and Editorial Design at AKTO College.

CONTENTS

Preface

Acknowledgment

Authors

Chapter 1: General Trade-mark Practice in Canada

Chapter 2: Procedural Requirements

Chapter 3: Specific Requirements for Canada

Chapter 4: Special Trade-mark Applications in Canada

Chapter 5: Opposition Proceedings

Chapter 6: Summary Cancellation Proceedings

Chapter 7: Trade-mark Infringement and Passing Off

Chapter 8: Due Diligence Process

Chapter 9: Domain Names

PREFACE

Borden Ladner Gervais LLP has for many years acted as Canadian counsel to several national and multinational companies and worked with colleagues in numerous foreign law firms to provide advice on trade-mark law and practice in this country. We have frequently been requested by clients to respond to inquiries concerning the trade-mark application process and practice in Canada and primarily the differences between the Canadian and US practice.

Chapters 1 through 3 summarize general trade-mark practice in Canada, including the procedural and specific requirements for filing trade-mark applications. Chapter 3 highlights some of the unique aspects of these requirements and the relevant case law related to prohibited marks, including official marks and geographical indications of origin. The chapter also discusses French language requirements and exceptions, as well as sanctions and recourses under the Charter of the French Language. Chapter 4 focuses on special trade-marks in Canada, including certification marks, distinguishing guises, and related issues. Chapters 5 through 7 focus on adversarial and/or contentious proceedings such as oppositions, cancellation, passing off, and infringement, and discuss the relevant case law. Finally, chapters 8 and 9 provide an overview of issues related to due diligence and domain names.

We hope this new publication provides guidance and serves to highlight the nuances of the Canadian trade-mark application process and related practice.

We intend to publish subsequent editions of Trade-mark Practice in Canada: A Practical Guide, and we would appreciate receiving suggestions about possible additions or changes for revised editions.

April 2011

Tracy Corneau

Borden Ladner Gervais LLP, Ottawa

Telephone: 613-787-3564

Email: tcorneau@blg.com

ACKNOWLEDGMENT

I gratefully acknowledge the contributions of my colleagues to this book. Their significant undertaking to commit the time necessary to research, write, and review chapters is deeply appreciated.

AUTHORS

Geneviève Bergeron

Geneviève Bergeron is a partner in the Montreal office. Her practice focuses on all aspects of intellectual property and information technology. She has an extensive practice in trade-mark law that includes search opinions, clearances, preparation, and prosecution of trade-mark applications, oppositions and cancellation proceedings, property rights transfers, and negotiation of trade-mark licence agreements. She has expertise in the drafting of distribution agreements and subcontracting agreements involving all aspects of IP and IT law for clients in all types of business. She also provides advice in website-rel ated matters such as the drafting of appropriate disclaimers, terms and conditions, online agreements, copyright and trade-mark use, and privacy policy as well as with respect to the application of the Charter of the French Language in the IP and IT sectors. Geneviève is a member of the Canadian Bar Association, INTA, IPIC, and IT.Can.

Theresa M. Corneau

Theresa M. Corneau is a partner in the Ottawa office. She has extensive experience in all areas of Canadian and international trade-mark practice including searches, preparation and prosecution of trade-mark applications, opposition proceedings, trade-mark licensing, and property rights transfers. Her practice also involves the drafting and filing of copyright matters, the drafting of licence agreements, and the preparation and presentation of in-house trade-mark seminars to clients. She has been featured in numerous IP publications and has spent several years as a lecturer, speaker, and tutorial instructor for McGill University and IPIC. She has been a committee member on various trade-mark topics for IPIC, INTA, ECTA, and AIPPI.

Bradley J. Freedman

Bradley J. Freedman is a partner and the Technology Law Practice Leader in the Vancouver Office. He is a member and former director of the Information Technology Law Association of Canada (IT.Can), and a member of the Canadian Bar Association, the American Bar Association, and the International Technology Law Association. His practice focuses on technology, intellectual property, the Internet, electronic commerce, and related matters. He is ranked as a leading trade-mark professional in the World Trademark Review for 2011 and is included in the 2011 edition of The Best Lawyers in Canada and the 2010 Canadian Legal Lexpert Directory. Bradley is a domain name dispute arbitrator for the World Intellectual Property Organization and the B.C. International Commercial Arbitration Centre.

Anne Lau

Anne Lau is an associate in the Vancouver office. Anne has experience in all areas of Canadian trade-mark practice including searching, preparation and prosecution of trade-mark applications, opposition proceedings, licensing, and property rights transfers. She also has experience managing international trade-mark portfolios and international filings. Anne is a member of the Law Society of British Columbia, the Patent and Trademark Association of British Columbia, and the Intellectual Property Institute of Canada.

Kathleen Lemieux

Kathleen Lemieux is a partner in the Ottawa office and is fully bilingual, practising in both English and French. Kathleen assists clients with the development, administration, and protection of intellectual property rights, including, in particular, trade-marks and copyrights. She has a wide range of experience in advising clients in trade-mark opposition and cancellation proceedings, and in assisting with litigation involving intellectual property rights. Kathleen also provides advice on transactions involving intellectual property, such as licensing agreements. She is the editor of the BLG IP newsletter and is involved in various committees for IPIC, INTA, CBA, and AIPLA. She is also a member of the Canadian Bar Association and the County of Carleton Law Association.

LuAnne Morrow

LuAnne Morrow is a lawyer and trade-mark agent in the Calgary office. She practises IP law particularly in the areas of trade-marks and copyright, entertainment, and advertising/sponsorship law for clients in a wide variety of industries. Her other practice areas include patent licensing, software licensing and development, and Internet and computer law. She was selected by her peers for inclusion in the 2010 and 2011 editions of The Best Lawyers in Canada for intellectual property law. LuAnne has been a member of the Alberta Bar Association since 2002 and is a member Canadian Bar Association and INTA. She is an associate member of the Intellectual Property Institute of Canada, and Past Chair of the Canadian Bar Association—Intellectual Property and Technology Southern Alberta Subsection.

Hafeez Rupani

Hafeez Rupani is an associate in the Ottawa office. His practice focuses on the resolution of trade-mark, copyright, domain name, and related commercial disputes before all levels of court. Hafeez has represented clients in trade-mark infringement, passing off, and expungement proceedings before the Federal Court; trade-mark opposition and cancellation proceedings before the Trade-marks Opposition Board; tariff proceedings before the Copyright Board of Canada; and subsequent judicial review proceedings before the Federal Court of Appeal. He assists clients in the acquisition, licensing, and enforcement of intellectual property rights in Canada and around the world, and in advising clients on the application of intellectual property rights in employment and online contexts, including social media. He is a member of the Canadian Bar Association, Ontario Bar Association, IPIC, INTA, Advocates Society, and CCLA.

Kathryn E. Szymczyk

Kathryn E. Szymczyk is an associate in the Ottawa office and is conversant in Russian. Her practice focuses on all aspects of trade-mark law including prosecution, opposition, licensing, and enforcement. Kathryn also handles the prosecution of industrial designs and provides advice on domain name and trade-mark issues on the Internet. She was the Head of the Russian Representative Office of a Canadian firm from 2000 to 2003 and then a director overseeing a number of offices for an Eastern European IP firm in the Balkans from 2005 to 2008. She is familiar with the European Community trade-mark system and has extensive experience dealing with international registrations made through the Madrid System. Kathryn was recognized as highly recommended in intellectual property law in Russia by Global Counsel 3000 and ranked as a leading trade-mark professional in the World Trademark Review for 2011. She is a member of the Canadian Bar Association, IPIC, CCLA, the North American Anti-Counterfeiting Subcommittee of INTA, and the Vice Chair of the MARQUES Brands and Marketing Committee.

Jessica Yeung

Jessica Yeung is a trade-mark agent in the Vancouver office and is fluent in English, Cantonese, and Mandarin. Jessica has experience in all areas of Canadian trade-mark practice including searches, preparation and prosecution of trade-mark applications, opposition proceedings, trade-mark licensing, and renewals. She is a member of the Patent and Trademark Association of British Columbia.

CHAPTER 1

GENERAL TRADE-MARK PRACTICE IN CANADA

In Canada, the law related to trade-marks and unfair competition, including passing off, is covered by both federal statute and provincial common law. The current federal statute, the Trade-marks Act,[1] which has codified much of the common law with respect to trade-marks, creates a regulatory system that encompasses registered as well as unregistered trade-marks.[2] A foundational purpose of the Act and the common law is to create a regulatory system that ensures that commercial considerations and the rights acquired by way of trade-mark use and registration are protected, while contemporaneously safeguarding the public from any confusion, misrepresentations, or deceit with respect to the origin and quality of goods and services.

Trade-mark protection and enforcement is practised by way of both regulatory and non-regulatory proceedings. Regulatory proceedings consist of quasi-administrative/quasi-judicial trade-mark opposition and cancellation proceedings, which generally serve to prevent the registration of a trade-mark and expunge the registrations of unused trade-marks, respectively. Non-regulatory proceedings are court proceedings that, in general, deal with trade-mark infringement, depreciation of goodwill, and the expungement of trade-mark registrations and with common law rights, including those associated with unfair competition and passing off.

The Supreme Court of Canada in Mattel Inc. v. 3894207 Canada Inc.[3] distilled the purpose and basis of trade-marks and trade-mark law to the following:

Trade-marks are something of an anomaly in intellectual property law. Unlike the patent owner or the copyright owner, the owner of a trade-mark is not required to provide the public with some novel benefit in exchange for the monopoly. Here, the trade-mark [BARBIE] is not even an invented word like Kodak or Kleenex. The appellant has merely appropriated a common child's diminutive for Barbara. By contrast, a patentee must invent something new and useful. To obtain copyright, a person must add some expressive work to the human repertoire. In each case, the public through Parliament has decided it is worth encouraging such inventions and fostering new expression in exchange for a statutory monopoly (i.e. preventing anyone else from practising the invention or exploiting the copyrighted expression without permission). The trade-mark owner, by contrast, may simply have used a common name as its mark to differentiate its wares from those of its competitors. Its claim to monopoly rests not on conferring a benefit on the public in the sense of patents or copyrights but on serving an important public interest in assuring consumers that they are buying from the source from whom they think they are buying and receiving the quality which they associate with that particular trade-mark. Trade-marks thus operate as a kind of shortcut to get consumers to where they want to go, and in that way perform a key function in a market economy. Trade-mark law rests on principles of fair dealing. It is sometimes said to hold the balance between free competition and fair competition.

Fairness, of course, requires consideration of the interest of the public and other merchants and the benefits of open competition as well as the interest of the trade-mark owner in protecting its investment in the mark. Care must be taken not to create a zone of exclusivity and protection that overshoots the purpose of trade-mark law.

A. THE TRADE-MARKS ACT: OVERVIEW

The Act was enacted in 1954 and arose from the dissatisfaction with its preceding legislation — namely, the Unfair Competition Act of 1932 and Canada's first Dominion Act dealing with trade-marks, the Trade-mark and Design Act of 1868. The Trade-mark and Design Act as well as the Unfair Competition Act were considered too narrow in scope, difficult to interpret, and contradictory.

1. What Is a Trade-mark?

Under section 2 of the Act, a trade-mark is defined as follows:

trade-mark means

(a) 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,

(b) a certification mark,

(c) a distinguishing guise, or

(d) a proposed trade mark.

While the term is not defined in the Act, a mark must be something that can be represented visually and, in association with wares at least, use of a verbal description is not use of a trade-mark within the meaning of the Act.[4] As a result, sounds, scents, and holograms, for example, will not currently meet the definition of a trade-mark in Canada.

2. Types of Trade-marks

In Canada, the Act enumerates four definitions of a trade-mark. These definitions permit the registration of the following trade-mark types.

a. Word Marks

A word mark is represented in block letter format and generally affords the owner