Canadian Trade-mark Law/Infringement
Once a mark has been registered, the owner or licensee of a registration can sue any other user of the mark for trade-mark infringement. The determination of infringement is found in sections 19, 20, and 22(1) of the Trade-mark Act. Unregistered marks can be actionable under the tort of passing off codified in section 7.
Section 19 provides rights to owners of a mark against other users. The Act states:
- 19. Subject to sections 21, 32 and 67, 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.
This section gives the owner the exclusive right to sue anyone who uses the identical mark for the sale of identical wares or services. Thus, three criteria must be met:
- the mark must be properly "registered" under section 18 of the Act.
- the mark must have been "used" by the infringer under section 4 of the Act.
- the mark must have been used for the sale of identical wares or services.
Section 20 expands the rights in section 19 to include confusing marks. The Act states:
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 not entitled to its use under this Act who sells, distributes or advertises wares or services in association with a confusing trade-mark or trade-name, 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.
(2) No registration of a trade-mark prevents a person from making any use of any of the indications mentioned in subsection 11.18(3) in association with a wine or any of the indications mentioned in subsection 11.18(4) in association with a spirit.
Section 22(1) expands the rights in section 19 to include use of a mark that is not in relation to the sale of similar wares or services. The Act states:
- 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.
This means that owners of a mark who have their goodwill indirectly harmed by another party can sue them for infringement.
The leading case on infringement is Clairol International Corp. v. Thomas Supply & Equipment Ltd. (1968 Exchequer. Court). Clairol