A number of defences relate to the nature of the defendant's
Use of a Registered Trade mark
If the alleged passing off relates to the defendant's use of
a registered trade mark in association with the wares or services
of the registration, the existence of the registration will be a
defence to a claim for passing off. This is because the defendant
has the exclusive statutory right to use the mark in association
with the wares or services for which it is registered. If the
plaintiff has a claim that it is entitled to the mark in priority
to the registrant consideration should be given to bringing
proceedings to expunge the registration.
Use of an Individual's Own Name
An individual defendant has a right to use his or her own name
and the fact that confusion may occur does not constitute passing
off by itself. However, if confusion occurs, which is brought to
the attention of that defendant, the defendant is under an
obligation to take reasonable care to qualify the representation
implied in his or her conduct in order to avoid confusion.
Plaintiff's Own Goods
It is not passing off to use the plaintiff's name or mark in
connection with wares that are the plaintiff's original wares.
But a trader cannot represent that wares, which are the
plaintiff's wares, are of a particular class or quality if they
are not. For example, it is actionable to offer wares of inferior
or deteriorated quality as the plaintiff's original goods or
the plaintiff's wares in an materially altered form as the
original. The fact that notice of the difference is given to
consumers at the time of sale may avoid a finding of passing
Like trade marks any combination of elements which are primarily
designed to perform a function cannot be protected through a claim
for passing off. The fact that the party seeking protection
obtained a patent relating to the article in question is evidence
of functionality. For example, the manufacturer of LEGO brand toy
building blocks, after the patents relating to its product expired,
was not able to protect the elements that make up its product
through an action for passing off.
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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A recent Saskatchewan Court of Queen's Bench decision allowed a court-appointed receiver to sell and transfer intellectual property rights free and clear of encumbrances, finding that a license to use improvements of an invention was a contractual interest and not a property interest.
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