As mentioned in a previous article, owners of unregistered trademarks can sue for “passing off”. However, owners of registered trademarks, in addition to being able to sue for “passing off”, can bring actions in “infringement” and “depreciation of goodwill” as well. In this article, infringement actions are discussed. An action in trademark infringement can be brought pursuant to sections 19 and 20 of the Trade-marks Act. A section 19 infringement action allows a registered owner of a trademark to prevent the unauthorized use of an identical trademark with respect to identical goods and services. In contrast, a section 20 infringement action allows a registered owner of a trademark to prevent others from using trademarks or trade names that are confusing with the registered trademark. In determining what constitutes confusion, the surrounding circumstances are considered, including, but not limited to, the following:
- the inherent distinctiveness of the trademarks or trade names and the extent to which they have become known;
- the length of time the trademarks or trade names have been in use;
- the nature of the goods, services or business;
- the nature of the trade; and
- the degree of resemblance between the trademarks or trade names in appearance or sound or in the ideas suggested by them.
That being said, there are some limited statutory defences to an infringement action, notably, the bona fide use of a personal name as a trade name, or the bona fide use, other than as a trademark, of the geographic name of a place of business or of any accurate description of the character or quality of the goods or services.
Other Trademark Cases of Interest
This article is intended to be an overview of the law and is for informational purposes only. Readers are cautioned that this article does not constitute legal or professional advice and should not be relied on as such. Rather, readers should obtain specific legal advice in relation to the issues they are facing.
This article was written by a lawyer formerly with Lindsay Kenney LLP.