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.
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)