Below is an excerpt from John
McKeown's April 2015 Mailer where he discusses protecting
An action for passing-off can be brought concerning
inappropriate product advertising. The essence of a passing-off
action is a misrepresentation and resultant confusion in the minds
of the public which causes or is likely to cause damage to the
plaintiff. The foundation of such an action is the existence of a
property right in the goodwill and reputation associated with a
trade name or business.
The Elements Required to be Shown
Three elements must be shown in order to succeed. First, the
plaintiff must establish the existence of goodwill in a particular
trading indicia, whether a trade mark, trade name or other
distinguishing feature, which indicates to the relevant public that
the goods or services offered for sale in association with that
indicia originate from, or are associated with, the plaintiff. In
this way plaintiff's trade dress is recognized by the public as
distinctive of the plaintiff's goods and services.
Second, the plaintiff must demonstrate a misrepresentation by
the defendant to the public (whether or not intentional) leading or
likely to lead the public to believe that the goods or services
offered by the defendant are the goods and services of the
Third, the plaintiff must demonstrate that it has suffered or
that it will likely suffer damage by reason of the erroneous belief
engendered by the defendant's misrepresentation that the source
of the defendant's goods or services is the same as the source
as those offered by the plaintiff.
Changing Commercial Realities
The role played by the tort of passing-off in the common law has
expanded to take into account the changing commercial realities in
the present day community. A number of cases have found that where
a defendant has promoted its product or business in such a way as
to create the false impression that its product or business is in
some way approved, authorized or endorsed by the plaintiff or that
there is some business connection between the defendant and
plaintiff, this will constitute passing-off.
Monitoring and Protecting Copyrights on the Internet in
I have been asked to speak at a webinar sponsored by the
Knowledge Group to deal with the topic noted above. The webcast is
scheduled to take place on May 12, 2015 but it is quite possible
that it may be rescheduled. Additional information will follow.
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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