Trade-Mark Infringement. Three Types of Infringement s.19 – Use of the same mark in respect of the same wares s.19 – Use of the same mark in respect of

Trade-Mark Infringement

Three Types of Infringement

s.19 – Use of the same mark in respect of the same wares Rarely litigated

s.20 – Use of a confusing mark Most common

s.22 – Depreciation of goodwill Equivalent to what is known as

“dilution” in Us. law Scope unclear – very limited caselaw Controversial

Depreciation of Goodwill

22 (1) No person shall use a trade-mark registered by another person in a manner that is likely to have the effect of depreciating the value of the goodwill attaching thereto Controversial and rarely (but not never)

used Important especially for famous marks

Where confusion is difficult to show because wares are not similar

Section 19Same Mark, Same Wares

Marks are registered in respect of specified wares

Same mark, same wares = s.19 infringement

NO need to show confusion Same mark, different wares is NOT

caught by s.19 Similar mark, same wares is NOT

caught by s.19

Section 19

s.19. . . the registration of a trade-mark in respect of any wares or services, unless shown to be invalid, gives to the owner of the trade-mark the exclusive right to the use throughout Canada of the trade-mark in respect of those wares or services.

s.19 “Use”

“Use” in s.19 has been judicially interpreted to mean “use as a mark” ie for the purpose of distinguishing the wares.

Use of the mark by a competitor in comparative advertising does not infringe s.19

Confusing use

20 (1) The right of the owner of a registered trade-mark to its exclusive use shall be deemed to be infringed by a person . . .who sells, distributes or advertises wares or services in association with a confusing trade-mark or trade- name . . . May be same mark, different wares Different mark, same wares Different mark, different wares

s.19 & 20

The section headings to ss.19 & 20 respectively are Rights conferred by registration – s. 19 Infringement – s. 20(1)

This suggests that s.19 defines the right and s.20 defines infringement

However, the sections are generally understood to define two different heads of infringement

Bona Fide Use of Personal Name

s.20(1). . . but no registration of a trade-mark prevents a person from making (a) any bona fide use of his personal name as a

trade-name, or (b) any bona fide use, other than as a trade-

mark, (i) of the geographical name of his place of

business, or (ii) of any accurate description of the

character or quality of his wares or services,

in such a manner as is not likely to have the effect of depreciating the value of the goodwill attaching to the trade- mark This part of s.20 is generally

understood to apply to protect any use, whether the infringement is claimed under s.19 or s.20

Bona Fide Use of Personal Name

This part of s.20 is generally understood to apply to protect any use, whether the infringement is claimed under s.19 or s.20

Personal Name

Note that you can use your personal name as a trade-name even if it is confusing Eg Brick’s Fine Furniture (owned by the

Bricks) and Brick Furniture Warehouse However, it is probably the case that

you cannot use your personal name as a trade mark if that would be confusing Eg A person named Heintzman can sell

pianos under the name “Heintzman Piano Company”, but cannot sell “Heintzman pianos”

Confusing Use: s.20

Confusion

20 (1) The right of the owner of a registered trade-mark [is] infringed by a person . . .who sells . . .wares . . .in association with a confusing trade-mark or trade-name . . .

Confusion

“Confusion” defined by s.6 "confusing", when applied as an

adjective to a trade-mark or trade-name, means a trade-mark or trade-name the use of which would cause confusion in the manner and circumstances described in section 6;

Confusion as to the Source

6(2) The use of a trade-mark causes confusion with another trade-mark if the use of both trade-marks in the same area would be likely to lead to the inference that the wares or services associated with those trade-marks are manufactured, sold, leased, hired or performed by the same person,. . .

Only confusion as to the source of the goods constitutes infringement Recall: Goal of trade-marks is to inform

consumers as to the source of the goods Only a use which interferes with this

function constitutes infringement


6(2) The use of a trade-mark causes confusion with another trade-mark if the use of both trade-marks in the same area would be likely to lead to the inference that the wares . . .are manufactured, [or] sold. . .by the same person. . .


Only confusion as to the source of the goods constitutes infringement Recall: Goal of trade-marks is to inform

consumers as to the source of the goods Only a use which interferes with this

function constitutes infringement

Actual Confusion


The question is a hypothetical No requirement that the marks

actually be used in the same area / no actual confusion required

Why not?



Actual Confusion

Though is it not necessary to show actual confusion, actual confusion or lack thereof is not irrelevant

Evidence of actual confusion is strong evidence of likelihood of confusion

Absence of evidence of actual confusion may be evidence of absence of likelihood of confusion When the marks have been used in the

same market for some time Eg Pepsi-Cola v Coca-Cola

“Have Regard” to Factors

6(5) In determining whether trade-marks. . .are confusing, the court . . . shall have regard to all the surrounding circumstances including. .

The list which follows is not exhaustive The ultimate question is likelihood of

confusion

“Have Regard” to Factors

The court must “have regard” to the listed factors, but

There is no need to show that all of these conditions are ‘satisfied’

The factors are not necessarily of equal weight The weight given to each will depend on

the circumstances

Factors

Including (a) the inherent distinctiveness of the

trade-marks or trade-names and the extent to which they have become known;

(b) the length of time the trade-marks or trade-names have been in use;

(c) the nature of the wares, services or business;

(d) the nature of the trade; and (e) the degree of resemblance between

the trade-marks or trade-names in appearance or sound or in the ideas suggested by them

Strength

(a) the inherent distinctiveness of the trade-marks or trade-names and the extent to which they have become known;

The “strength” of the mark A mark may be strong because

It is inherently very distinctive: eg fanciful marks – Exxon

It has become very famous through use, eg Vogue

A stronger mark has a broader field in which it is protected Confusion might be found in respect of

A broader range of wares )Use of a less similar mark

Strength

A stronger mark has a broader field in which it is protected Confusion might be found in

respect of A broader range of wares Use of a less similar mark

Taxonomy

(1) generic – the name of the wares: shredded wheat

(2) descriptive – descriptive of the wares: Canadian beer

(3) suggestive – Alpine beer arbitrary (a real word applied out of

context) (4) fanciful (not a real word – eg

Exxon)

Field

(c) the nature of the wares, services or business;

The more similar the wares, the greater the likelihood of confusion Though it is not necessary that the

mark be registered in respect of the defendant’s wares for confusion to arise

The same mark in completely different fields may not be confusing Dodge Dart and Dart plastic coffee cup

lids

Nature of the Trade

(d) the nature of the trade; and The circumstances in which the

wares are sold Are the wares sold together, in the

same shop? Who are the purchasers?

Are they professional buyers? Are they purchased hastily, or

after close inspection?

Resemblance

(e) the degree of resemblance between the trade-marks or trade-names in appearance or sound or in the ideas suggested by them

The more similar, the greater the likelihood of confusion

The similarity may be appearance or sound

Length of Use

(b) the length of time the trade-marks or trade-names have been in use;

May be relevant in different ways A mark which is long established

may be stronger See United Artists

But if two marks have been used together for a long period, it may become necessary to show actual confusion See Pepsi-Cola

Mr Submarine

At this point the learned judge considered and appears to have taken into account that there was no similarity in the style of lettering used and the colouring of the signs of the parties and that the appearances of the two marks as actually used on signs, boxes, etc, is quite different.

Mr Submarine

These in my opinion would be very relevant considerations if the proceeding were a passing-off action at common law. They are irrelevant in a proceeding for infringement of a registered trade mark and should have been given no weight in determining whether the trade marks and trade names in issue are confusing with the appellant's registered mark.

Mr Submarine

Why are these factors irrelevant? REGISTRATION NUMBER: TMA187539 TRADE-MARK: MR. SUBMARINE DISCLAIMER TEXT: The right to the exclusive use of the

word SUBMARINE is disclaimed apart from the trade-mark.

Mr Submarine

Note: JB Submarine (TMA489039) and Captain Submarine (TMA195908) are both registered marks

Are these confusing with “Mr. Submarine”?

Nominative Use

Nominative Use

Despite the wording of s.19, that section only prohibits the use of the mark “as a mark”, that is, in identifying the source of the wares Yeast-Vite, adopted in Clairol v Thomas

Supply Nominative use of the mark is not

actionable under s.19 The situation with respect to s.22 is

not clear

New Kids

Why are the New Kids objecting to the use of their name in the polls?

Documents

Trade-Mark Infringement. Three Types of Infringement s.19 – Use of the same mark in respect of the same wares s.19 – Use of the same mark in respect of