Subject to the right to descriptive use under section 20 of the Trademarks Act and other more limited restrictions, the registration of a trademark in respect of goods or services, unless shown to be invalid, gives to the owner the exclusive right to the use throughout Canada of such trademark in respect of those goods or services. In the absence of a specific claim for colour in a registration the right to use the mark extends to any colour of presentation.
The other more limited restrictions relate to the concurrent right to use a trademark under section 21, restrictions imposed under section 32 relating to marks registered under subsection 12(2) and the special provisions of section 67 relating to trademarks registered or pending in Newfoundland before April 1, 1949.
A copy of the record of the registration of a trademark certified by the Registrar is evidence of the facts set out in the registration and that the person shown as the owner is the registered owner of the trademark.
A valid registration is required to bring an action for infringement under the Act. However, an action for passing off may be brought absent registration, but in such an action the plaintiff must prove title and distinctiveness.
Comment
The matters set out above are a relatively straight forward, but many people seem to lose sight of the fact that a claim for colour in a registration can be limiting. If colour is important concurrent registrations are prudent.
If you have questions, please contact me at mckeown@gsnh.com.
Goldman Sloan Nash & Haber LLP
480 University Avenue, Suite 1600
Toronto, Ontario M5G 1V2
Direct Line: (416) 597-3371
Fax: (416) 597-3370
These comments are of a general nature and not intended to provide legal advice as individual situations will differ and should be discussed with a lawyer.