Canadian trademark law provides protection to marks by statute under the Trademarks Act and also at common law. Trademark law provides protection for distinctive marks, certification marks, distinguishing guises, and proposed marks against those who appropriate the goodwill of the mark or create confusion between different vendors' goods or services. A mark can be protected either as a registered trademark under the Act or can alternately be protected by a common law action in passing off.
Overview
The scope of Canadian trademarks law
A trademark is only protected to the extent that it is used by a person to distinguish a product or service from another. Trademarks do not give exclusive rights to a symbol, for instance, but only for the symbol in relation to a particular use in order to distinguish the product from others.
Trademarks help potential customers to identify the source of products and thus have a significant impact on trade, especially when product identity is marketed as an extension of the customers' personal identity.
Although any name or symbol could be protected under trademark law, there are issues concerning the limits of that protection. For instance, enforcing protection of a mark and its perception is questionable where there is no actual confusion for consumers. Likewise, protecting a mark against all criticism or allusions, as if it were an actual person, is controversial since trying to protect marks at all costs could be harmful to free speech and free trade.
Statutory definition of trademarks in Canadian law
The Act gives the following definition for the scope of trademarks:
Certification marks are used in classifying the nature of a good or service (e.g., a Fair Trade Certified logo).
A distinguishing guise can only be registered if it "is not likely unreasonably to limit the development of any art or industry". In Kirkbi AG v. Ritvik Holdings Inc., the Supreme Court of Canada declared:
Kirkbi clarifies that the mere purpose of a product, however unique, cannot be subject of a trademark. Such utilitarian features fall more properly within the realm of patent law. The distinct look and feel of a product, however, can attract trademark protection. In Ciba-Geigy, the Supreme Court of Canada held that trademark infringement had occurred when the size, shape, and colour of Metoprolol tablets (used to treat hypertension) were mimicked by two competitors with comparable products.
Canada, unlike the US, does not have a provision governing notice by a trademark owner of the existence of a trademark, other than in the case of a licensee being allowed by an owner to use one. The use of symbols such as ™ or ® is therefore optional but advised, accompanied by a full written notice.
The purpose of trademarks law
Trademark law appears to be divided in two types of purposes:
To protect the public so that it may be confident that, in purchasing a product bearing a particular trademark which it favorably knows, it will get the product which it asks for and wants to get. Where the owner of a trademark has spent energy, time, and money in presenting to the public the product, he is protected in his investment from its misappropriation by pirates and cheats.
The Supreme Court of Canada has emasized that the tort of passing off was intended to protect the property right that plaintiffs had in the goodwill of their business. However, the protection of the public is a priority, and the Supreme Court has also said that trademark law was in fact "consumer protection legislation".
Where a company has adopted a business name that is the same or very similar to that of a competitor, a key consideration is the potential for customers to become confused. Even where a Plaintiff has only used its brand name for a limited period of time and has little in the way of good will, a similarly-named competitor may confuse customers and cause the Plaintiff to lose control of its own reputation, thus justifying damages under the Trademarks Act.
Courts, when interpreting the Act, try to achieve a balance between the rights of the owner and those of others. This means taking into account the public interest in free trade and expression.
Trademarks and intellectual property
According to the Supreme Court of the United States, trademarks are very different from patents and copyrights to the extent that they require "no fancy or imagination, no genius, no laborious thought". The Supreme Court of Canada calls them "something of an anomaly". Unlike other branches of intellectual property law, protection of trademarks does not necessarily arise from any act of creativity.