Canada: A Masterpiece Preserved: The Supreme Court of Canada Rules on Trade-Mark Rights Acquired Through Use

Last Updated: June 3 2011
Article by Jean-Philippe Mikus

In a lengthy unanimous decision the Supreme Court of Canada ended today (May 27, 2011) an important chapter in a four year long struggle to control the use of the MASTERPIECE trade-mark in the flourishing retirement home industry. The Court reversed earlier decisions and concluded that the registration of the MASTERPIECE LIVING trade-mark obtained by Ontario based Alavida Lifestyle Inc. should be cancelled on the basis of prior use of the MASTERPIECE mark by a rival Alberta corporation, Masterpiece inc.

Masterpiece was placed in a difficult situation because it had never applied for registration of the prized MASTERPIECE trade-mark. This Alberta corporation only became aware of the steps taken by its Ontario rival Alavida after this rival had secured a certificate of registration for the trade-mark MASTERPIECE LIVING, which gave it (on paper at least) exclusive rights in this trade-mark across Canada.

Alavida had argued successfully before the Federal Court and the Federal Court of Appeal that there could not be any likelihood of confusion because, amongst other reasons, at the time the application for registration was filed Masterpiece's use was limited to Alberta and its own activities were limited to Ontario. Alavida's MASTERPIECE LIVING registration was therefore, Alavida argued, insulated from any claim based on prior use because of the absence of overlap in the activities.

The Supreme Court specifically states in its decision that a person can object to the issuance of a national trade-mark registration based on prior use of a confusing mark in Canada even though there is no overlap in the geographical regions in which each party have used their respective marks. The Registrar of Trade-Marks must assume for purposes of determining a likelihood of confusion that the two marks could potentially be used in the same region. This is a reflection of the fact that a certificate of registration grants rights in all regions of Canada irrespective of whether the use made by its owner is local, regional or national.

The Supreme Court then assessed the likelihood of confusion based on the traditional factors set out in the Trade-Marks Act and came to the conclusion that there would be a likelihood of confusion. In the course of this analysis, the Court makes several points that may have an influence on future cases.

The Court was concerned that the trial judge had not analyzed each of the variants of the MASTERPIECE trade-mark used by the first user Masterpiece and gave undue weight to the actual manner in which Alavida had used the trade-mark in the marketplace (by taking into account for example designs, logos or other matter associated to the trade-mark). The Court reasoned that an application for a trade-mark consisting of words only can be used in a wide variety of manners (with associated logos for example) and it was inappropriate to focus on the current stylized appearance as this could change. The comparison had to be made between the trade-mark as applied for (only the words) and each of the marks previously used by Masterpiece, which included the slogan "Masterpiece the Art of Living".

The Court also indicated that generally the factor that will have the greatest importance to determine whether there is a likelihood of confusion is the resemblance of the marks at issue. It also confirms that a word that is particularly striking or unique in the trade-mark should be given more weight than other words, whether or not it is the first word of a trade-mark formed by many words.

The Court also dealt with the fact that choosing a retirement home was an important and expensive choice that may be the subject of careful consideration. This type of factor is often cited to support a conclusion that although there are similarities between the marks, consumers will have a greater opportunity of becoming aware of differences in the marks because more time is spent or more attention is given in the course of the purchasing process.

One of the aims of the Trade-Marks Act according to the Court is to avoid that consumers be led astray as to sources of goods or services they did not know of or would not have considered. Consumers should not be deprived of the protection of the Act if they act with caution and wariness by making more in depth verification and therefore the Court reasons that consideration must be given to the first impression. The value of the goods and services is still relevant, but only in the context of assessing this first impression.

Both sides had experts provide evidence at trial that came to markedly different conclusions. This led the Supreme Court of Canada to issue words of caution with regards to expert evidence in trade-mark matters. The Court even goes so far as to state that in this instance the contradictory and acrimonious nature of the evidence may have distracted the trial judge in his analysis of whether or not consumers were likely to be confused.

In the case of products or services targeting the general public the trial judge should, according to the Supreme Court, be able to rely on his or her own common sense and does not need to rely on expert evidence.

Survey evidence on consumer perception is subject to cautionary words that are less vigorous, as the Supreme Court acknowledges this is information that is not readily perceptible by the Court. However, the Court underlines the difficulty of properly simulating the imperfect recollection of the consumer in the context of a survey, particularly when the mark at issue is not well implanted in the marketplace.

The Supreme Court suggests that the judge presiding a trial should perhaps consider letting the parties know early on whether he or she believes that expert or survey evidence will be useful in order to avoid unnecessary expense.

In the end the Supreme Court found that there was a likelihood of confusion without relying on expert evidence presented at trial to support this conclusion.

This Supreme Court decision is quite important to Masterpiece. If it had failed to successfully contest its rival's registration this could potentially have enabled its Ontario rival to claim to have the right to enter the Alberta market with the MASTERPIECE LIVING trade-mark, thus disrupting its marketing and advertising plans. Moreover, Alavida could also potentially have been bolder and have attempted to prevent Masterpiece from pursuing its own use of the MASTERPIECE trade-mark in Alberta, with potentially devastating consequences.

The Supreme Court carefully avoided ruling on whether Masterpiece would be entitled to a national registration for the MASTERPIECE trade-mark. It essentially left this matter for further proceedings before the Registrar of Trade-Marks. Masterpiece may face challenges in this process since it is possible that its rival Alavida will object to this registration by raising its own use of the trade-mark in the province of Ontario.  This Supreme Court ruling may not spell the end of the ongoing disputes between the parties. Indeed, Masterpiece still has an action pending before the Federal Court of Canada against Alavida to try to put an end to its use that had been put on hold pending the Supreme Court of Canada's decision.

This case again highlights the importance of taking steps to register trade-marks early on in the life of a business. For many businesses, it can be helpful to avoid drawn out legal battles. In this case Alavida had allegedly conducted a trade-mark search prior to choosing the MASTERPIECE LIVING trade-mark but because Masterpiece had taken no steps to register its mark with the Canadian Intellectual Property Office at that time its trade-mark was not identified in these searches.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on

Click to Login as an existing user or Register so you can print this article.

In association with
Related Video
Up-coming Events Search
Font Size:
Mondaq on Twitter
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
Email Address
Company Name
Confirm Password
Mondaq Topics -- Select your Interests
 Law Performance
 Law Practice
 Media & IT
 Real Estate
 Wealth Mgt
Asia Pacific
European Union
Latin America
Middle East
United States
Worldwide Updates
Mondaq Ltd requires you to register and provide information that personally identifies you, including what sort of information you are interested in, for three primary purposes:
  • To allow you to personalize the Mondaq websites you are visiting.
  • To enable features such as password reminder, newsletter alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our information providers who provide information free for your use.
  • Mondaq (and its affiliate sites) do not sell or provide your details to third parties other than information providers. The reason we provide our information providers with this information is so that they can measure the response their articles are receiving and provide you with information about their products and services.
    If you do not want us to provide your name and email address you may opt out by clicking here
    If you do not wish to receive any future announcements of products and services offered by Mondaq you may opt out by clicking here

    Terms & Conditions and Privacy Statement (the Website) is owned and managed by Mondaq Ltd and as a user you are granted a non-exclusive, revocable license to access the Website under its terms and conditions of use. Your use of the Website constitutes your agreement to the following terms and conditions of use. Mondaq Ltd may terminate your use of the Website if you are in breach of these terms and conditions or if Mondaq Ltd decides to terminate your license of use for whatever reason.

    Use of

    You may use the Website but are required to register as a user if you wish to read the full text of the content and articles available (the Content). You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these terms & conditions or with the prior written consent of Mondaq Ltd. You may not use electronic or other means to extract details or information about’s content, users or contributors in order to offer them any services or products which compete directly or indirectly with Mondaq Ltd’s services and products.


    Mondaq Ltd and/or its respective suppliers make no representations about the suitability of the information contained in the documents and related graphics published on this server for any purpose. All such documents and related graphics are provided "as is" without warranty of any kind. Mondaq Ltd and/or its respective suppliers hereby disclaim all warranties and conditions with regard to this information, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. In no event shall Mondaq Ltd and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use or performance of information available from this server.

    The documents and related graphics published on this server could include technical inaccuracies or typographical errors. Changes are periodically added to the information herein. Mondaq Ltd and/or its respective suppliers may make improvements and/or changes in the product(s) and/or the program(s) described herein at any time.


    Mondaq Ltd requires you to register and provide information that personally identifies you, including what sort of information you are interested in, for three primary purposes:

    • To allow you to personalize the Mondaq websites you are visiting.
    • To enable features such as password reminder, newsletter alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
    • To produce demographic feedback for our information providers who provide information free for your use.

    Mondaq (and its affiliate sites) do not sell or provide your details to third parties other than information providers. The reason we provide our information providers with this information is so that they can measure the response their articles are receiving and provide you with information about their products and services.

    Information Collection and Use

    We require site users to register with Mondaq (and its affiliate sites) to view the free information on the site. We also collect information from our users at several different points on the websites: this is so that we can customise the sites according to individual usage, provide 'session-aware' functionality, and ensure that content is acquired and developed appropriately. This gives us an overall picture of our user profiles, which in turn shows to our Editorial Contributors the type of person they are reaching by posting articles on Mondaq (and its affiliate sites) – meaning more free content for registered users.

    We are only able to provide the material on the Mondaq (and its affiliate sites) site free to site visitors because we can pass on information about the pages that users are viewing and the personal information users provide to us (e.g. email addresses) to reputable contributing firms such as law firms who author those pages. We do not sell or rent information to anyone else other than the authors of those pages, who may change from time to time. Should you wish us not to disclose your details to any of these parties, please tick the box above or tick the box marked "Opt out of Registration Information Disclosure" on the Your Profile page. We and our author organisations may only contact you via email or other means if you allow us to do so. Users can opt out of contact when they register on the site, or send an email to with “no disclosure” in the subject heading

    Mondaq News Alerts

    In order to receive Mondaq News Alerts, users have to complete a separate registration form. This is a personalised service where users choose regions and topics of interest and we send it only to those users who have requested it. Users can stop receiving these Alerts by going to the Mondaq News Alerts page and deselecting all interest areas. In the same way users can amend their personal preferences to add or remove subject areas.


    A cookie is a small text file written to a user’s hard drive that contains an identifying user number. The cookies do not contain any personal information about users. We use the cookie so users do not have to log in every time they use the service and the cookie will automatically expire if you do not visit the Mondaq website (or its affiliate sites) for 12 months. We also use the cookie to personalise a user's experience of the site (for example to show information specific to a user's region). As the Mondaq sites are fully personalised and cookies are essential to its core technology the site will function unpredictably with browsers that do not support cookies - or where cookies are disabled (in these circumstances we advise you to attempt to locate the information you require elsewhere on the web). However if you are concerned about the presence of a Mondaq cookie on your machine you can also choose to expire the cookie immediately (remove it) by selecting the 'Log Off' menu option as the last thing you do when you use the site.

    Some of our business partners may use cookies on our site (for example, advertisers). However, we have no access to or control over these cookies and we are not aware of any at present that do so.

    Log Files

    We use IP addresses to analyse trends, administer the site, track movement, and gather broad demographic information for aggregate use. IP addresses are not linked to personally identifiable information.


    This web site contains links to other sites. Please be aware that Mondaq (or its affiliate sites) are not responsible for the privacy practices of such other sites. We encourage our users to be aware when they leave our site and to read the privacy statements of these third party sites. This privacy statement applies solely to information collected by this Web site.

    Surveys & Contests

    From time-to-time our site requests information from users via surveys or contests. Participation in these surveys or contests is completely voluntary and the user therefore has a choice whether or not to disclose any information requested. Information requested may include contact information (such as name and delivery address), and demographic information (such as postcode, age level). Contact information will be used to notify the winners and award prizes. Survey information will be used for purposes of monitoring or improving the functionality of the site.


    If a user elects to use our referral service for informing a friend about our site, we ask them for the friend’s name and email address. Mondaq stores this information and may contact the friend to invite them to register with Mondaq, but they will not be contacted more than once. The friend may contact Mondaq to request the removal of this information from our database.


    From time to time Mondaq may send you emails promoting Mondaq services including new services. You may opt out of receiving such emails by clicking below.

    *** If you do not wish to receive any future announcements of services offered by Mondaq you may opt out by clicking here .


    This website takes every reasonable precaution to protect our users’ information. When users submit sensitive information via the website, your information is protected using firewalls and other security technology. If you have any questions about the security at our website, you can send an email to

    Correcting/Updating Personal Information

    If a user’s personally identifiable information changes (such as postcode), or if a user no longer desires our service, we will endeavour to provide a way to correct, update or remove that user’s personal data provided to us. This can usually be done at the “Your Profile” page or by sending an email to

    Notification of Changes

    If we decide to change our Terms & Conditions or Privacy Policy, we will post those changes on our site so our users are always aware of what information we collect, how we use it, and under what circumstances, if any, we disclose it. If at any point we decide to use personally identifiable information in a manner different from that stated at the time it was collected, we will notify users by way of an email. Users will have a choice as to whether or not we use their information in this different manner. We will use information in accordance with the privacy policy under which the information was collected.

    How to contact Mondaq

    You can contact us with comments or queries at

    If for some reason you believe Mondaq Ltd. has not adhered to these principles, please notify us by e-mail at and we will use commercially reasonable efforts to determine and correct the problem promptly.

    By clicking Register you state you have read and agree to our Terms and Conditions