Canada: Non For Profit Entities And Trade-Names

Last Updated: December 3 2013
Article by John McKeown

A recent decision of the Federal Court clarifies that non-profit entities have rights arising from the use of their trade names.

The Application

Carbon Trust filed a trade mark application for the mark set out below

for use in association with certification of companies, persons, processes, products and systems with the purpose of monitoring and improving quality and measuring standards as to energy consumption, energy efficiency, carbon dioxide emissions, greenhouse gas emissions or other environmental standards.

The Opposition

Pacific Carbon Trust is a Crown Corporation in British Columbia that was set up as part of the province's Climate Action Plan. It opposed the application on a number of grounds, including the ground that the applicant was not entitled to register the mark because at the date of filing, the mark was confusing with the opponent's trade-names Pacific Carbon Trust and Pacific Carbon Trust Inc. which had been previously used by the opponent in Canada.

The Board concluded that the Carbon Trust mark was confusing with the Pacific Carbon Trust's trade-name, which the Board found had been used in Canada prior to the filing date for the application for the Carbon Trust mark, and had not been abandoned.

The Board identified the test for confusion as being one "of first impression and imperfect recollection". The Board noted that the use of a trade mark may cause confusion with another trade mark or trade name if "the use of both in the same area would be likely to lead to the inference that the wares or services associated with them are manufactured, sold, leased, hired or performed by the same person, whether or not the wares or services are of the same general class":

In analyzing the question of confusion, the Board considered the five factors set out in the subsection 6(5) of the Act.

Regarding the inherent distinctiveness of the trade mark and trade name, the Board found that the Carbon Trust footprint design possessed "only a very limited degree of inherent distinctiveness" given that it could be interpreted as referring to either a carbon or an environmental footprint. Similarly, the Board found that the Pacific Carbon Trust trade name had little inherent distinctiveness since it evoked its geographical location ("Pacific") and its carbon offset activities.

With respect to the extent to which the trade mark and trade name had become known within Canada, the Board noted that there was no evidence that the Carbon Trust had used the Carbon Trust mark in Canada. In contrast, the Board was satisfied that the Pacific Carbon Trust had established some reputation for the trade name Pacific Carbon Trust but that any such reputation would be restricted to BC.

As concerned the length of time each trade-mark or trade-name had been in use (section 6(5)(b)), the Board noted that the Carbon Trust mark had never been used in Canada, whereas the Pacific Carbon Trust trade-name had been used in Canada since 2008.

With respect to the nature of the parties' services/business and trade the Board was satisfied that the parties' services could overlap, as they were highly related.

The Board rejected the Carbon Trust's argument that because its services are expensive, its consumers are sophisticated and would not be confused by the marks. The Board agreed with the Pacific Carbon Trust that the price of the wares was irrelevant when assessing confusion. Rather, the test for confusion is one of first impression, and subsequent steps that may be taken by consumers in an attempt to remedy any first instance confusion were therefore irrelevant.

The Board concluded that in light of the nature of the parties' services and the ideas suggested by their respective trade mark or trade name, consumers may infer an association between them, resulting in confusion.

The Appeal

The Carbon Trust appealed from this decision to the Federal Court on a number of grounds.

First, they argued that Pacific Carbon Trust could not own a trade-name within the meaning of section 2 of the Act because it does not carry on a "business" since its object was not to make a profit. In this regard they relied on section 2 of the Trade-marks Act which defines a "trade-name" as "the name under which any business is carried on, whether or not it is the name of a corporation, a partnership or an individual".

The judge did not accept this argument and referred to the fact that recent Board decisions have adopted a broader definition of "business" as one which "could encompass any purposeful activity which might well ... be charitable or educational in purpose".

The second argument was that the Board had misapplied the test for confusion.  The judge refused to accept this argument as well. The judge said that taking all of the surrounding circumstances into account, including the factors enumerated in subsection 6(5) of the Trade-marks Act, she came to the same conclusion as the Board. As a result of the overlap in the type of services offered by each of the parties and the ideas suggested by their respective trade mark or trade name, the judge concluded that consumers "may infer an association" between the two entities, which would cause confusion.

Although the Carbon Trust was correct to state that the cost of wares or services can be relevant, this does not change the fact that the test is still one of "first impression". The possibility of subsequent research by an attentive consumer of expensive wares or services was recently addressed by the Supreme Court of Canada. A consumer shopping for expensive goods or services is "likely to be somewhat more alert and aware of the trade-mark associated with the wares or services they are examining and its similarity or difference with that of the prior trade-mark" but the test remains one of "first impression and imperfect recollection" as explained by the Supreme Court .


This case clarifies that not-for-profit entities do have rights arising from the use of their trade names. It also provides a reminder that the test for confusion under the Act is one of "first impression and imperfect recollection".

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.

John McKeown
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
Check to state you have read and
agree to our Terms and Conditions

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.

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 by clicking here .

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.


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.