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In Alice in Wonderland, the queen wants to know who stole her
tarts. In this article, we will ask who tried to steal the
trademark THE QUEEN OF TARTS. This is a case that illustrates two
major trade-mark principles, the importance of performing an
availability search before doing business and the importance of
registering a trade-mark as quickly as possible after having chosen
one.
Our story begins when Ms. Stephanie Ann Pick, a shrewd queen,
filed an application to register the trademark THE QUEEN OF TARTS
in connection with "[b]aked goods, namely tarts, cookies,
cakes, cupcakes, loaves, hand-decorated gingerbread men and holiday
cookies, quiches and savoury tarts; wholesale and retail store
services specializing in baked goods" based on usage dating
back to 1999. The registration certificate was issued in March of
2005.
She could very well have done business under a trade-name
without having registered a trade-mark. Many believe that applying
to register a trade-mark is useless if a trade-mark is used
locally, but as we will see nothing could be further from the
truth. Fortunately for Ms. Pick, she registered her trade-mark and
thus secured her exclusive rights over that trade-mark throughout
Canada, even if it isn't used throughout the country.
Ms. Pick was not the only person to have set her sights on the
trade-mark THE QUEEN OF TARTS. A Ms. Linda Kearney ran a stand in a
produce market in downtown Edmonton and another establishment in
Edmonton under the trade-name Queen of Tarts. Ms. Pick was informed
that a stand and store were operating under the trade-name in
November of 2010, so she decided to file suit against Ms. Kearney.
Ms. Kearney, however, failed to file a defence within, or even
after, the prescribed timeframe. She never gave any
justification for her use of the business name.
The court examined Ms. Pick's rights. The registration of
the trade-mark THE QUEEN OF TARTS gave her the exclusive right to
use her trade-mark throughout Canada in respect of the wares and
services covered by that registration. The fact that Ms. Kearney
sold, distributed or advertised baked goods created confusion with
Ms. Pick's trademark.
The judge concluded that Ms. Pick's exclusive right to use
the trade-mark THE QUEEN OF TARTS with respect to the wares and
services covered by the trade-mark had been infringed. In fact,
section 6(2) of the Trade-marks Act provides that a
trade-mark can cause confusion with another trade-mark and section
20 provides that the right of the owner of a trade-mark can be
infringed by a person not entitled to its use.
A consumer could be led to believe that the wares associated
with Queen of Tarts came from the same source as THE QUEEN OF
TARTS. The trade-mark and trade-name are virtually identical, and
the wares offered are the same or substantially the same. THE QUEEN
OF TARTS acquired a reputation over its ten years of use that, in
the eyes of the public, is associated with the wares and services
of Ms. Pick.
The court concluded that the trade-name could be confused with
the trade-mark. It also noted that Ms. Kearney had
performed preliminary availability searches before she began doing
business, but chose to ignore the search results and therefore
deliberately committed an act that reflected her indifference or
could be construed as passing off.
Availability searches are therefore important, even for local
businesses. This type of search can be used to inventory businesses
or trade-marks that already exist. It is never too early to do the
right thing and change names, but it can be too late. Owners of an
existing trade-mark can avail themselves of prior rights, even if
they do not use their trade-mark locally.
When Ms. Kearney used her trade-name, she drew the public's
attention to her own wares and services in breach of the passing
off provisions of the Trade-marks Act. Once proof of
passing off has been established, the court can award damages for
loss of goodwill without actual damages needing to be proved. The
judge awarded Ms. Pick $10,000 in compensation for missed
sales and harm to her reputation.
This story reminds us that the greatest benefit of registering a
trade-mark is that the trade-mark owners can then avail themselves
of their rights throughout Canada, even if they use that trade-mark
in a specific region. This undeniable advantage is of no little
consequence to owners. Registering a trade-mark is a crucial
step.
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.
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