Understanding Infringement

 This month we are dealing with a new topic-infringement. There are two sections in the Trade-marks Act dealing with this topic.

First, section 19 of the Act states that, subject to some limited exceptions, the registration of a trademark in respect of any goods or services, unless shown to be invalid, gives to the owner the exclusive right to the use throughout Canada of the trademark in respect of those goods or services. A breach of the section occurs when the infringer uses a trademark which is identical to the registered mark in association with goods or services which are identical to those for which the mark is registered. 

Second, section 20 of the Act states that the right of the owner of a registered trademark to its exclusive use is deemed to be infringed by any person who is not entitled to its use under the Act and who

(a) sells, distributes or advertises any goods or services in association with a confusing trademark or tradename;

(b) manufactures, causes to be manufactured, possesses, imports, exports or attempts to export any goods in association with a confusing trademark or tradename, for the purpose of their sale or distribution; 

(c) sells,offers for sale or distributes any label or packaging, in any form, bearing a trademark or tradename, if

(i) the person knows or ought to know that the label or packaging is intended to be associated with goods or services that are not those of the owner of the registered trademark, and

(ii) the sale, distribution or advertisement of the goods or services in association with the label or packaging would be a sale, distribution or advertisement in association with a confusing trademark or tradename; or

(d) manufactures, causes to be manufactured, possesses, imports, exports or attempts to export any label or packaging, in any form, bearing a trademark or tradename, for the purpose of its sale or distribution or for the purpose of the sale, distribution or advertisement of goods or services in association with it, if

(i) the person knows or ought to know that the label or packaging is intended to be associated with goods or services that are not those of the owner of the registered trademark, and

(ii) the sale, distribution or advertisement of the goods or services in association with the label or packaging would be a sale, distribution or advertisement in association with a confusing trademark or tradename. 

There is an exception for bona fide use. The registration of a trademark does not prevent a person from making, in a manner that is not likely to have the effect of depreciating the value of the goodwill attaching to the trademark,

(a) any bona fide use of his or her personal name as a trade-name; or

(b) any bona fide use, other than as a trademark, of the geographical name of his or her place of business or of any accurate description of the character or quality of his or her goods or services. 

There is also an exception for the use of a utilitarian feature embodied in a trademark. The registration of a trademark does not prevent a person from using any utilitarian feature embodied in the trademark. 

Finally, an additional exception states that the registration of a trademark does not prevent a person from making any use of any of the specified common names for spirits and agricultural products listed in the Act.

More details concerning infringement will follow.

If you have questions, please contact me at mckeown@gsnh.com.

John McKeown

Goldman Sloan Nash & Haber LLP

480 University Avenue, Suite 1600

Toronto, Ontario M5G 1V2

Direct Line: (416) 597-3371Fax: (416) 597-3370

Email: mckeown@gsnh.com

These comments are general in nature and not intended to provide legal advice as individual situations will differ and should be discussed with a lawyer.