Answer ... Use of a trademark in connection with specific goods and services in a specific geographic region of Canada provides the owner with rights to prevent third parties from using the same or confusingly similar marks in connection with the same or similar goods and services in that same region. Specifically, owners of unregistered trademarks can bring actions for passing off under common law or the codified version of this action in the Trademarks Act. Passing off requires the owner to prove three elements:
- the existence of goodwill or reputation based on use of the mark by the plaintiff;
- a likelihood that the public will be deceived due to a misrepresentation by the defendant; and
- actual or potential damage to the plaintiff.
Moreover, owners of unregistered marks or marks that have been ‘made known’ in Canada can oppose registration of a confusingly similar mark by a later user on the basis of their prior unregistered rights.
Answer ... Registrations expand upon the rights available to owners of unregistered marks. Some important distinctions are below:
- Registered mark owners are entitled to exclusive use across all of Canada, not just the area in which they can prove use and reputation;
- Registrations provide constructive notice of trademark rights to third parties;
- Registrations provide prima facie evidence of trademark ownership rights;
- Registrations provide an absolute defence, subject to their validity, against certain actions for infringement or passing off, or violations of French translation requirements in Quebec (unless a French version of the mark is also registered); and
- Registered mark owners have a right of action to remedy any infringement against a person that uses an identical or confusingly similar mark in connection with similar goods or services, as well as a right of action to remedy any use of a registered trademark in a manner likely to depreciate the value of the goodwill attaching thereto.
Answer ... There is no separate register.