Comparative Guides

Welcome to Mondaq Comparative Guides - your comparative global Q&A guide.

Our Comparative Guides provide an overview of some of the key points of law and practice and allow you to compare regulatory environments and laws across multiple jurisdictions.

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4. Results: Answers
Protection of foreign trademarks
Under what circumstances may foreign trademarks not registered in the jurisdiction be enforced (eg, under unfair competition law)?

Answer ... While statutory law in Canada does not specifically provide for protection of foreign trademarks, Canadian courts have allowed foreign companies to bring actions for passing off on the basis that they have some goodwill to protect in Canada, even if they do not do business in the country.

To bring an action on this basis, the company must provide evidence of its reputation in Canada, specifically showing that the mark has become ‘well known’ throughout Canada, primarily by virtue of advertising. Specific damage to the plaintiff and an intent to do business in the jurisdiction are not necessary, but may impact on the remedies available. Bad faith on the part of the defendant is not required, but may influence the outcome.

For more information about this answer please contact: Neil Melliship from Clark Wilson LLP
Does the trademark office permit registration of a mark based on a foreign or international (Madrid) registration?

Answer ... Yes, applicants can request a territorial extension into Canada based on the registration of a trademark on the International Register, pursuant to Article 3ter of the Madrid Protocol.

Responses Provided by Neil Melliship and Jeffrey Vicq, Clark Wilson LLP (The authors wish to acknowledge the valuable assistance of Caroline Camp and David Bowden, both of Clark Wilson LLP)

For more information about this answer please contact: Neil Melliship from Clark Wilson LLP