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Trademarks (class #12)

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Mauricio Guaragna

on 23 February 2011

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Transcript of Trademarks (class #12)

trademarks (class #12) I.Introduction

a) the 2 majour objectives
b) what does a trade-mark protect?
c) well-known or famous trade-marks
d) genericization
e) rights granted
f) registration
g) constitutional ground for trade-mark protection Trademark protection has two major objectives......

... avoiding consumer confusion about the source and quality of a product.

... preventing the misappropriation of commercial goodwill, which has come to be seen as part of the commercial value of a business or product. A mark must be distinctive


so one may distinguish the proprietor’s goods or services from those of third parties dealing with the same class of goods or services. f) REGISTRATION In general, the mark must be registered with the relevant national authority.

A search process takes place to ensure that it is not confused with another mark.

b) What does a trademark protect? A trademark protects the use of distinctive signs that identify a product or service or the producer
of a product. Trademarks can be obtained for… SWATCH symbols COLOURS SHAPES LETTERS NAMES Some countries allow a mark to be acquired through use, so that a business
that has established its brand over a period of time does not lose in court because
it failed to register its mark. e) RIGHTS GRANTED Trademark protection gives the rights-holder the exclusive right to use the mark.

The rights-holder can also authorise the use of the mark by a third party.

The rights-holder may demand payment for authorisation. In the event of any unauthorised use, the rights-holder has the right... to enforce action, either through the civil or criminal law to stop such acts to gain restitution for damages Some marks become so well-known that they become distinctive in and of themselves beyond the territories where they have been developed or registered and, in some instances, without regard to the product to which they are affixed. An example of this is the Nike logo, which was originally associated with sports clothing, but now can be found on everything from mugs and plates to stationery. Some marks become so closely attached to the product that they become synonymous with the category of product regardless of the source of the product. the name xerox became associated with the very act of making a copy rather than the particular kind of copying machine made by the Xerox Corporation. when reaching some level of generality, a mark may lose its distinctiveness and therefore its protection. d) GENERICIZATION (trademark dilution) Canadian Trade-marks Act

1st.: to protect the public by indicating the source of goods and services in order that purchasers can identify the level of quality they seek

2nd.: to protect the trademark owner against commercial missapropriation of the mark and/ or goodwill asociated with the mark Constitutional Ground

TMs are of Federal Jurisdiction

The Constitutional Ground For TMs is found in the general federal power under s. 91 (2) of the Constitutional Act, 1867 Once registered, a mark is entitled to remain registered so long as it continues to be used and renewal fees are regularly paid II. Purpose and Theory of Protecing Trade-marks protect consumers give the right to sue for infringement grant n exclusive right to use the mark in association with the designated goods or services Purpose Pink Panther Mark Case the Federal Court of Appeal discussed the purpose and policy of trademark law passing off the protection of trademark as property is based in the common law of passing off The tort of Passing off helped to assure that a person was representing his or her goods as not the goods of someone else.

A necessary element of the tort of passing off was always an attempt to deceive.

When this attempt to deceive caused confusion and damage, it was actionable.
today, even though the common law remedies are still available, trade-marks are protected statutorily the act of Passing of has been codified in paragraph 7(c) of the Act the Act offers a wider ambit of protection than the old common law the scheme of the Act allows for registration of trade-marks in relation to the marketing of wares or services s. 30: the registrant of the mark must specify the wares or services in relation to which he or she is registering the mark s.40: demands that the registration can only be effected when the mark itself has actualy been used a person may propose a mark for registration, but, until it has been used, the TM cannot be registered the trademark must be associated in the minds of the public with the good produced by the trade-mark owner this association is key to understanding the rights protected under the ACT and whether the trade-mark is disticnt section 2 TM Act (definition of distinctive)

“distinctive”, in relation to a trade-mark, means a trade-mark that actually distinguishes the wares or services in association with which it is used by its owner from the wares or services of others or is adapted so to distinguish them the Act makes clear:

1) that what is being protected is not the exclusive right to any mark

2) but, the exclusive right to use it


to use in association with with certain products and services If a the consumer cannot rely on the mark to diferentiate products or services, then protection is not provided In Western Clock Co. v. Waris Watch Co (1931), Audette J. said:

"Distinctiveness is of the very essence and is the cardinal requirement of a trade-mark, which is used to distinguish the goods of a trader from the goods of all other traders. Section 19 and 20 of the Act spell out the rights confered by a trade-mark 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. Infringement
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 since a TM is meant to distinguish wares or services of different traders, a TM cannot be considered in isoltion, but only in connection with those wares or services 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, whether or not the wares or services are of the same general class. in summary, TMs have a dual function:
1) allow manufacturers to disntinguish goods or services from those of a competitor
2) help to alleviate consumer confusion as to the source of those goods or services. I. General Introduction of the Subject
II. Purpose and Theory of Trade-marks Protection
Xerox has used "trademark awareness" advertisements to prevent the brand from becoming a generic noun or verb, including such statements as ...

"You can't make a Xerox." Videotape Aspirin in the US Lanolin Pilates Background

In 1998, the Canadian Federal Court of Appeal[1] allowed the trade-mark PINK PANTHER to be registered in association with beauty products

There was an the objection of United Artists Corporation, the owner of the famous PINK PANTHER mark, registered in association with motion pictures

The Court held that the difference between the parties' services was such that there was no likelihood of confusion between the two marks

In other words, a patron of the PINK PANTHER beauty parlour would be unlikely to think that the hairdressing services she received were provided by United Artists Corporation. The Pink Panther cases teaches us ... 1. -Ultimate job of the court in TM cases is to balance the right of a TM owner to exclusive use of mark with right of others to compete freely in the marketplace. II. The right being protected by the TM Act is the exclusive right to use the mark in association with certain products or services. III. -What constitutes infringement is in S. 20 (use of marks which are confusingly similar to registered TMs) Confusion analysis → S. 6(5) TMA TM rights are national

Must be separately protected in each country of interest

Registration is national, not provincial. Today's class (outline) ... But how to qualify for TM protection? c) well known or famous trademarks has a 2 fold purpose the Scheme of the Trade-marks Act confusion disntintctiveness rights Key Concepts

law of passing off
scheme of the act
confusion
distintctiveness
rights Passing off Prosser, The Law of Torts (1971), as cited in Consumers Distributing Co. v. Seiko Time Canada Ltd. [1984] 1 SCR 583 defined passing off as: "(The ) making of some false representation to the public, or to third persons, likely to induce them to believe that the goods or services of another are those of the plaintiff. This may be done, for example, by counterfeiting or imitating the plaintiff's trade mark or trade name, his wrappers, labels or containers, his vehicles, the badges or uniforms of his employees, or the appearance of his place of business. "The test laid down in such cases has been whether the resemblance is so great as to deceive the ordinary customer acting with the caution usually exercised in such transactions, so that he may mistake one for the other." "In an action for passing off, it would have been necessary for the appellant to show that the respondent restauranteur intentionally or negligently misled consumers into believing its restaurant services originated with the appellant and that the appellant thereby suffered damage." Canada's Supreme Court opined, in Mattel USA v 3894207 Canada Inc [2006] 1 SCR 772, that: In Reckitt & Colman Products Limited v. Borden Inc. & Ors (at 1990 RPC 341), The law of passing off can be summarised in one short general proposition - no man may pass off his goods as those of another.

More specifically, it may be expressed in terms of the elements which the plaintiff in such an action has to prove in order to succeed.

These are three in number. 1) he must establish a goodwill or reputation attached to the goods or services which he supplies in the mind of the purchasing II) he must demonstrate a misrepresentation by the defendant to the public (whether or not intentional) leading or likely to lead the public to believe that goods or services offered by him are the goods or services of the plaintiff. III) he must demonstrate that he suffers or ... that he is likely to suffer, damage by reason of the erroneous belief engendered by the defendant's misrepresentation that the source of the defendant's goods or services is the same as the source of those offered by the plaintiff. s. 7 of the Canadian Trade-Mark Act 7. No person shall

(a) make a false or misleading statement tending to discredit the business, wares or services of a competitor;

(b) direct public attention to his wares, services or business in such a way as to cause or be likely to cause confusion in Canada, at the time he commenced so to direct attention to them, between his wares, services or business and the wares, services or business of another;

(c) pass off other wares or services as and for those ordered or requested;

(d) make use, in association with wares or services, of any description that is false in a material respect and likely to mislead the public as to

(i) the character, quality, quantity or composition,

(ii) the geographical origin, or

(iii) the mode of the manufacture, production or performance of the wares or services; or

(e) do any other act or adopt any other business practice contrary to honest industrial or commercial usage in Canada. -Confusion analysis → S. 6(5) TMA enumerates the factors (5) In determining whether trade-marks or trade-names are confusing, the court or the Registrar, as the case may be, shall have regard to all the surrounding circumstances 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. Confusion is perhaps the most important concept
It defines the scope of the rights of a TM owner
The criteria of s. 6 (5) can be simplified into 5 basic concepts
strengh,
lenght of use
type of merchandise and service
nature of commerce and resemblence
Of particular relevance to the criteria outlined in s-s. 6(5) of the statute is the principle that they need not be interpreted as having equal weight. Thanks,
Mauricio Guarana
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