Trademarks are valuable business assets. A trademark is a source identifier for a business and a badge of quality for its goods and services. It distinguishes your business, goods and services from the business, goods and services of others in the marketplace.
Under Canadian law, trademark infringement and passing off are two different claims a trademark owner may assert to enforce its trademarks. Both claims protect against confusion as to source in the minds of consumers.
Whether you have a registered trademark or an unregistered trademark will determine if you can bring a claim for trademark infringement.
Trademark Infringement
Trademark infringement is only available for registered trademarks.
A registered trademark is a trademark that has been examined and registered with the Canadian Intellectual Property Office (CIPO).
A registered trademark provides its owner with enforceable exclusive rights in that trademark throughout Canada in association with the goods/services specified in the registration. The Canada-wide protection is the main advantage of a registered trademark over an unregistered trademark.
In a trademark infringement lawsuit, the Court is concerned whether the defendant has used the registered trademark. The plaintiff must establish that the infringer is using a mark that is the same or confusingly similar to the registered trademark in relation to the goods/services specified in the trademark registration.
The plaintiff can rely on the registration as proof of ownership of the trademark, and the Court will presume that the registered trademark is valid, unless proven otherwise.
Passing off
If the trademark owner has an unregistered trademark, then the owner islimited to enforcing the owner's trademark by way of a claim for passing off.
An unregistered trademark, as the name suggests, is not registered with CIPO. Unregistered trademark rights are acquired by generating a reputation/goodwill in the mark through using it in the Canadian marketplace.
In a passing off claim, the Court is concerned with protecting the goodwill of a distinctive trademark.
In a passing off action, the enforcement of is limited to the geographic scope of the goodwill in the unregistered trademark. For instance, if the goodwill in the unregistered trademark only extends to the GTA, then the owner can enforce trademark rights within this area, but not beyond.
A plaintiff must prove the following three (3) elements in a passing off claim:
- the existence of goodwill in the unregistered trademark;
- a deception of the public due to a misrepresentation in such a way as to cause or be likely to cause confusion as to source; and
- actual or potential damages suffered by the plaintiff.
Often, the plaintiff must prepare and file voluminous evidence to establish sufficient goodwill in the unregistered trademark. This is not required for a trademark infringement claim. Accordingly, passing off claims tend to be more involved and expensive than infringement claims.
Conclusion
Given the numerous advantages that comes with trademark registration, businesses should consider registering their key trademarks. Enhanced enforcement starts with registration.
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.
