Don't miss Strange & Unusual Trademarks.

trademark (like Duhaime Law) is a word, name, logo or slogan used by a person selling goods or services to distinguish and identify their goods or services from those of another.

Circa 2007, trade-marks are now ubiquitous.

Trademarks may, but need not be, registered with the government. Most jurisdictions have a trademarks office for this purpose.

The registration of a trademark provides prima facie evidence of ownership; a legal presumption that the registrant owns the exclusive right to use the trademark..

A riskier way to own and prove ownership of a trademark is to rely on first actual and ongoing use of a trade-mark (aka a common law trade-mark) but since much of the law revolves around the practicality of evidence, registration of a trademark is essential.

Duhaime Law trademarkTrade-marks are designated by the ™ symbol which is notice that ownership rights are asserted over the mark. It is not a necessary mark but helpful.

Once registered, the trade-mark converts to the ® symbol, as in Affordable Justice®.

Common law jurisdictions have not been passive in the development of trademark law. Indeed, now specifically provided for in the Canadian statute, the common law action of passing off is specifically designed to seek damages from a person who has stolen the intellectual property of another including a trademark which is covertly designed to suggest association with an existing successful trademark.

A trademark is a form of intellectual property and as such, a creature of statute.

There is no common law definition of trademark but one is set out in the statute which creates this particular intellectual property right (sometimes, it is preferable to have the common law establish a working definition of a legal concept because judges are thereby able to mould and massage a definition to changing times or vocabulary. Not so with statutory rights which begin and end with their statutory definitions.)

As intellectual property, the rights to use a certain trade-mark can be sold or licensed.

Canada’s Trade-Mark Act is chapter T-13, RSC 1985.

Canada spells the word with a hyphen.

Other jurisdictions, such as England, Australia and Japan, spell it as two words; the United States spells it as one word.

The Act defines a trademark as a mark that is used, or is proposed to be used, by a person for the purpose of distinguishing wares or services manufactured, sold, leased, hired or performed by him from those manufactured, sold, leased, hired or performed by others.

A trade-mark must be distinctive.

Once used or registered, a trade-mark becomes the exclusive property of the owner and cannot be used by other persons without the consent of the owner failing which, "infringement" legal action to stop the unauthorized use  (injunctive relief), and for damages, is available to the trademark owner.

The Canadian legislation contains a "lose it or lose it" provision, at §45 which requires evidence of use if the use of a trade-mark is challenged. In the result, the registration might be struck and the mark available to be taken by others.

The Trade-Mark Act also encompasses the corollary concepts of a certification mark but that concept is not covered in this article.

To register a trademark, application is sent to the Canadian intellectual property office including the word(s) proposed, or drawing if applicable. Registration is attested by certificate issued by the trade-mark registrar and last 15 years, fully renewable.

Once registered, the owner can replace the ™ (or MC in French) with a ®. Neither are mandatory but you cannot use ® if your trade-mark is not registered.

Other persons can object to the registration of the trademark on a number of grounds.

Those include:

  • The proposed trademark suggests an association with government (such as use of the Canadian flag), public or educational agency or royalty.  You can have a crown in a trade-mark as long as it does not resemble that of the royal family (Simms & Co. v Commissioner of Patents 1938 ExCR 326);
  • If the proposed mark is otherwise obscene, immoral or scandalous. In the USA, the word "Bubby Trap" was refused in reference to a brassiere (Runsdorf 171 USPQ 443). Registration of the word "Hallelujah" was refused because it might offfend people's religioius sensibilities (Re Hallelujah 1976 RPC 605);
  • The proposal is primarily merely the name or the surname of an individual who is living or has died within the preceding thirty years;
  • Whether depicted, written or sounded, either clearly descriptive or deceptively misdescriptive of the character or quality of the wares or services in association with which it is used or proposed to be used or of the conditions of or the persons employed in their production or of their place of origin (eg. "Simply Pure Water"); or
  • The proposal is confusing with a previously registered trade-mark.

In 1942, in what may have been Canada's most famous trademark case, Pepsi-Cola and Coca-Cola squared off. Coca-Cola’s "mark consists of the words Coca and Cola joined by a hyphen and written, not in block letters, but in a script form with flourishes". Later, Pepsi-Cola "began to sell in Canada a non-alcoholic beverage called Pepsi-Cola, under a mark consisting of tile words Pepsi and Cola joined by a hyphen and written in a script form with flourishes". Coca-Cola alleged confusion and started a passing off action.

The kiss of death to Coca-Cola's application that Pepsi-Cola's trademark was confusing, was delivered in the following statement of the England’s Privy Council (then hearing appeals from Canada's Supreme Court: Coca-Cola of Canada Ltd. v. Pepsi-Cola Co. of Canada Ltd. 1942 2 DLR 657)).

The then-final appellate court of Canada, said that one does not decide whether there was confusion between the two marks by "placing them side by side, but by asking itself whether, having due regard to relevant surrounding circumstances, the defendant's mark as used is similar (as defined by the Act) to the plaintiff's registered mark as it would be remembered by persons possessed of an average memory with its usual imperfections".

Further:

"It is difficult, indeed impossible, to imagine that the mark Pepsi-Cola as used by the defendant, in which the distinctive feature is, for the same reason the first word "Pepsi" and not "Cola", would lead anyone to confuse it with the registered mark of the plaintiff.

"If it be viewed as a design mark the same result follows

"The only resemblance lies in the fact that both contain the word" Cola", and neither is written in block letters, but in script with flourishes.

"But the letters and flourishes in fact differ very considerably, notwithstanding the tendency of words written in script with flourishes to bear a general resemblance to each other.

"There is no need to specify the differences in detail; it is sufficient to say that in their Lordships' opinion, the mark used by the defendant, viewed as a pattern or picture, would not lead a person with an average recollection of the plaintiff's registered mark to confuse it with the pattern or picture represented by that mark."

The advent of the Internet has raised a host of difficult issues caused mostly by the interests of many different jurisdictions which in many regards, the Internet ignores. For example, Canadian trademark law allows for a trademark to be used by more than one person if the products or services are so do similar as to preempt any confusion by the public.

On the Internet, there are no duplicate domain names. Duhaime.org will always lead to the same webpage.

Further, many people (cyber-squatters) have reserved domain names that they never intend to use themselves, purely for commercial reasons hoping to sell the domain names to persons - individual or corporate - who may have a legitimate use for them, essentially taking financial advantage of another's trademark.

Worse, some individuals will stealth a domain name and take it away if it is left to expire by so much as a brief period of time and then hold it for ransom to its rightful owner. The cost, expense and uncertainty of international domain name dispute resolution makes it very difficult for anyone but the most wealthy litigant to challenge.

And then, of course, the law has its own variety of creative thinkers. With patents having a finite existence, why not, with a few Latin phrases, that tend to perpetuate a patent by converting the underlying concept into a trademark? In some cases, it can be done. When you're sipping espresso at 6 a.m. in a Los Angeles Starbucks, as a young attorney, inspiration will arrive to spin intellectual bridges.

The USA has a blanket protection for "famous trademarks". Notoriety, in Canada, does not in and of itself a trade-mark make, although it will be an important element of evidence in the event of an infringement action.

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