Ip master Guide

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  individual’s name/personality is associated with the products/services they select, manufacture or perform
  
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  trademark protection over names, signatures or other identifications associated with them for use in relation to goods or services – Not in general
  
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    Celebrities cannot stop children or pets being named after them, or adults from changing theirs
    
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    Name or other identification is not attached to a particular product, business, service, fame attached to names creates no trademark; it is not distinctive, it doesn’t have secondary meaning
    

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  Public figures’ commercial use of their name, image, likeness or other aspects of their identity
  
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  Canadian courts recognize property interest in personality through the common law rule of misappropriation of personality
  
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    Krouse v. Chrysler Canada, 1973
    
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    Athans v. Canadian Adventure Camp
    
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    Gould Estate v. Stoddard Publishing Co,1996
    

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  Privacy, a personal tort designed to protect an individual's interest in dignity and peace of mind; right to be left alone; not to be represented in public without consent: Newfoundland, Quebec, Saskatchewan, BC , Manitoba
  
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  Cover aspects of individual’s personality, such as person’s name, image, caricature, voice or other identifying features
  

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  3(2) Unauthorized Use of Name or Portrait – narrower – use of voice not included
  
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  “…used for advertising…promoting sale …trading in…property or services
  

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  “Passing –off” in 1842 in Perry v. Truefitt (1842)
  
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    Tort of deceit protects the personal right of a business owner not to be injured by fraudulent competition
    
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  Primary purpose currently?
  
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    In a passing off action, the law protects a trader’s property in his/her goodwill
    
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      Entitled to passing off claims
      
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  Secondary interest
  
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    Consumer protection – preventing them from being misled.
    
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      Consumer has no cause of action
      

Court must first establish whether they Ray Plastics product has good will, must be proved.

Goodwill must stem from a certain source – do consumers associate the trademark or getup with a distinctive source which is different than what is copying it.

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  Mere appearance is not sufficient
  
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  “Goodwill Arises from the fact that the trade-mark or get-up is associated in the mind of the purchasing public with the plaintiff's goods, or with one trade source or provenance, whether or not the public can identify that source of provenance. “
  

Consumers have the perception of goodwill in their mind if there is a particular mark or if there is a particular look towards the product.

When it is not known who created it but there is a specific guise, get up or distinguishing element to the product, secondary meaning may come into play.

More all encompassing, normally stemming from the mark.
The whole visible external appearance of goods in That particular mark can be a product’s get-up, i.e, the product’s appearance or its packaging—shape, size or colour— a word or combination of words, a design, the getup of a product, or some other distinguishing feature
How do you prove goodwill?

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  Strength of the association between its mark and its company as trade source.
  
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    The length of time the goods or services have been in the market
    
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    The degree of distinctiveness of the mark/get-up/distinguishing guide
    
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      Whatever aspect of the product is associated with secondary meaning
      
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    Similarity in a feature that is essential to the proper functioning of the product doesn’t affect distinctiveness
    
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      Kirkbi ag vs ritvik (lego case) – no distinction between bricks, essential design
      
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      Snow-trooper colouring (yellow/black) are distinctive, plastic handle does not
      
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    Volume of publicity and sales
    
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      Snowtrooper was very popular, appreciable amount of advertising.
      
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    Conduct of the defendant: Does it matter if the defendants intentionally copied or not?
    
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      Bypass the need to develop your own reputation. Essentially confirming they have a reputation. (Confirmed they wanted exact same colour combo)
      

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  A particularly distinctive product come to be associated by consumers with a particular trade source.
  
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  Secondary meaning in a descriptive name
  
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    In use of names or marks that are purely descriptive
    
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      Has such descriptive name acquired secondary meaning?
      

Rule: you could not restrain a man from telling the simple truth; and that this was all the defendants

Exception: if it is used in its secondary sense, it will nonetheless be a falsehood that in its primary sense it may be true.

Must look through the eyes of the consumer to see if they would be confused or deceived. Would the consumer be misled into thinking the source they received the item from was from someone else.

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  Even though the legal rationale is designed to protect manufacturers, the legal test looks through the eyes of the consumer
  

Public identified the source as coming from the UK.

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  Court: Tray’s were not so distinguishing that they were associated with a particular source.
  
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  Distinctiveness in the eyes of the consumer must lead the consumer to believe the product is from a particular source. (Oxford Pendaflex Canada Ltd v Korr Marketing Ltd et Al)
  
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  [it is]not enough simply to say that the former are very like the latter. It must be established that consumers have, by reason of the appearance of the goods of the plaintiff, come to regard them as having some one trade source or provenance, whether manufacturing or marketing, though it matters not that they have no idea at all of the identity of that trade source or provenance
  

Only Local Goodwill for the most part

If you claim you have goodwill outside of your locality, must be proven by facts

Foreign goodwill?

You can have goodwill in a country that you don’t operate in

Orkin Co Inc v Pestco Co - Likelihood of confusion with consequential injury to the plaintiff.

Court: Enough marketing exposure to let Canadians know who Orkin is, Many Canadians used their service.

Where there is confusion as to source, or where there is likelihood of confusion, there is generally going to be goodwill.

Internet advertising: Goodwill may be established throughout the world, regardless of whether they operate or where their homebase is.

Extended form is recognised and applied in a number of cases

A plaintiff is entitled to bring an action in passing off when the alleged misrepresentation relates, not to the goods or services of a particular trader, but to a kind or quality of goods produced by a group of traders.

Here, they aren’t trying to take advantage of a particular brand of company, but the companies together form a unison. Trying to pass off their collective goodwill.

Can bring action to protect their collective reputation. It extends past representing their product as someone elses, also extends to a product having the quality of others (not the pure form of passing off, but allowable)
Loss of Reputation

Trademark has disintegrated, boiled down to simply the quality of the product, not at all related to the original source.

1. Genericity: mark/word acquires meaning purely based on qualities that do not necessarily relate to specific characteristics from the plaintiff as a source

Institut National:

Does Canadian Champaign simply refers to wine of sparkling or bubbly variety (a class or genus of products), or that high quality wine from France?

Litigating distinctiveness does help somewhat to prove genericity hasn’t occurred, hasn’t fallen out of use.
“Champagne” – has become diluted but not completely generic. “Quasi-generic”. Reputation is not completely lost. Some places have appropriated, others have not.
Companies invest a lot of money, marketing etc in order to make sure their marks do not become generic. Failure to do so might allow consumers to associate certain products with a generic products.
2. Distinctive name or mark is no longer used

Ad-Lib Club Limited – Can they prevent others from using their mark even though they stopped operating?
Where someone stops carrying on a business, they keep, for a period of time, the goodwill attached to that business. As long as that goodwill remains, the person should be able to enforce his rights in respect to any name attached to that goodwill.

Temporary closure of a business does not remove all vested interest in accumulated goodwill. Person may intend to reopen business (Even if they don’t, still some goodwill)

Goodwill may also exist in a non-commercial context. Passing off is broader.
Misrepresentation

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  Defendant misrepresented his or her wares or services as those of the plaintiff
  
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    Does not need to be actual confusion, a possibility of confusion will suffice, can still grant an injunction.
    
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    products having a similar get-up, the use of similar labelling, use of the same trade name, counterfeiting, imitation of packaging (form of misrepresentation is irrelevant)
    
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  The misrepresentation must be in a manner that was likely to cause consumer confusion.
  
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    If public not misled as to source of product, may not suffice
    

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  Need to prove misrepresentation leading to actual or potential confusion
  
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  Misrepresentation may take a variety of forms
  
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  May be willful, negligent or careless (Kirkbi)
  
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    Intention of consumers is the only thing that is important. Even if owner is taking action, legal action is designed with consumer POV in mind
    

The “average” or “ordinary” consumer for the wares or services at issue (Ciba-Geigy)

Not particularly wary or inquisitive. The more generic the item, the more ordinary the consumer will be.

If the good is particularly rare or expensive, the average consumer might be more likely to shop around and make comparisons.

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  The further down the chain, the more likelihood for confusion, but confusion can occur at any part in the chain
  
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    Pharmacist may be confused by certain guise of pill
    

Plaintiff: Claimed that pharmacist would not be influenced by drug shape, wanted end user to be the ultimate test person.

Court: Can consider anyone in the chain – if pharmacist/hospitals became the user, they have a higher intelligence level regarding pills, unlikely they will be misled by the simple shield design.
Grey Marketing

Consumers Distributing v. Seiko Time Can. Ltd.

Grey marketing: importing and selling in Canada goods that are legally manufactured in another country

Confusion is possible, but can be easily remedied. As long as CP posts a notice that it is not authorized or granted from parent company, there will be no confusion.

French Champagne consumers might be more savvy

Labeling is clear to show difference, which section they are in, and price differential.

Two products existed separately with both rising in price over years. No confusion.

Regulator took many steps to make sure there was no confusion for “hurried consumer”

Classic passing off:

A alleges B infringed her right by passing off B’s product as if it was A’s product

B infringes the rights of A, if B represents goods which are not A’s goods or (not A’s goods of a particular class or quality) to be A’s goods or (A’s goods of that particular class or quality)

Former employer of “custom build” took photo album of the conservatories from his former work. Used as an example of what new company could do.

B alleges that A is misrepresenting B’s goods as those of A

Secondary Meaning reverse passing off.

If you post a link to a different story but the story is still held under your website. Passing off if the content is from another source but is read inside the original linking source.

Union copied exact same style of website as BCAA, copied their meta tags as well before changing it.

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  The Union website included fundamental design elements copied from the 1997 BCAA website design, including: the shape, structure, colour scheme and lay-out of the website; the placement of the CAA Logo (although inverted in the Union website design); the appearance, placement and juxtaposition of the words “BCAA ON-RAMP…; and the format, lay-out and colour scheme of the materials that appeared within the frames of the website
  
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    First copy of website was almost exactly the same, second and third were sufficiently different.
    
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    Use of BCAA and AAA as domain names and meta tags used on unions website was also in contention.
    
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  Would an ordinary browser think that they had ended up on a BCAA sanctioned website?
  
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    Test: A casual or hurried observer who had seen the BCAA site might well be confused
    
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      Not the average visitor.
      

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  Meta tags and domain names
  
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    registered trademarks as domain name Vs other words or phrases that contain those trademarks/or closely similar to them
    
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    registered trademarks as meta-tags vs other words or phrases that contain those trademarks/closely similar
    
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    Initial interest confusion vs source confusion
    
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    US: initial interest confusion: consumers initially interested in a plaintiff’s website to use a defendant’s website - Does not apply in Canada
    
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    Canada: Source confusion
    

Lack of “Common field of activity”; Charter-based argument regarding freedom of expression in meta-tags. There are other ways to pursue your goals without using their trademarks.

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  Would a hurried browser of the site confuse the source as being to the original?
  

Lack of a “common field of activity”; Charter based argument

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  In injunction, the P need only show a likelihood of damage
  
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  Damage, proof of actual damage required
  
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    loss of trade
    
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    loss of goodwill and reputation
    
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    dilution of goodwill
    

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  Using own name in the conduct of business
  
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    Must be surname
    
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    Used honestly
    
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    Without the intent to trade on the goodwill or reputation of another business
    
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    Could be required to use name in a manner that is not confusing with an already existing business
    
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  Use of own Registered trademark
  

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  Trade-marks: a mark used by a person for the purpose of distinguishing that person’s goods or services from those of others in the marketplace
  
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    Trademark Act – Mostly defined by statute
    
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    Serves as a shortcut for consumers in the market.
    
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  Registered and unregistered trademarks
  
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    Regardless of registered or not, use will allow for protection
    
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  “Use” key
  
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    Very loaded concept. Use allows for protection under the act
    
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  Types of marks
  
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    Ordinary (Normal goods), certification, collective, official, distinguishing guise
    

Much stricter legal standard, harder to get damages.

1) Must be a legally recognized mark

2) Must be use or proposed use

3) Purpose must be distinguished, not impacting the trade of others

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  Types of marks covered under the trademark Act
  
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    Ordinary, certification, collective, official
    

Ordinary Marks: Walmart, McDonalds, FedEx, etc

Use of words in different forms and depictions. May also be just a depiction (VW, DQ Mercedes Benz symbol).

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  words or combination of words.
  
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  depictions in a special form—such as drawings.
  
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  “distinguishing guises”: the way goods are shaped, wrapped , packaged, or colored.
  
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    limitations under s. 13. (1).
    
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      Cannot be primarily functional features
      
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      distinctive through use
      

Held: On the a balance of probabilities no sufficient evidence that the shield-shape distinguished the applicant’s tablets from other shield-shaped tablets on the market

Just because it is distinctive doesn’t mean it is a distinguishing guise.
If it is not an essential feature, the shape must be able to distinguish the item. In Glaxo they claimed the shield shape was distinctive when many other pills used the shield shape.
When a guise meets industrial function, cannot claim a monopoly over a utilitarian part of the device. Functional feature might have industrial design or patent protection but not in trademarks.

Guise must be distinctive enough – must have been used long enough before they are distinctive

Subject matters of patents or design protection

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  How about sounds, smells, colours?
  
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    Justification for trademarks?
    
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    Discrimination against the blind?
    
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      Could be public policy reasons for/against giving these.
      

Owned by an organization that is separate from the one that provides the goods. Owner of certification marks certifies extrinsic goods. If you comply with the standards as created by the certification mark owner may allow you to get the certification mark.

Is it public or governmental entity that is granting it? It may be an official mark…
Collective Marks

Apply to organizations who are collectives of the individual members. Owned by the producers themselves. Champagne is a geographical mark in France. Can be based on material composition (coffee, chocolate, etc). Owner is responsible for ensuring compliance with the standard they set themselves.

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  Special marks and symbols adopted by various public bodies and authorities
  
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    Who is a public body? Governmental? NGO’s who pursue public interest goals?
    
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  Prohibited from use by others in connection with a business as trademark
  
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  Three types of official marks
  
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    Marks automatically protected
    
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    Foreign Official marks
    
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    Marks Protected after Public Notice