Introduction Development -
The tort of passing off, which represents the common law of trademarks, is troubled by some inefficiencies.
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The legislation is not a replacement for common law rights, but exists as an alternative regime.
Definition of Trademark -
Act defines trademark as:
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a mark that is used by a person for the purpose of distinguishing or so as to distinguish wares or services manufactured, sold, leased, hired or performed by him from those manufactured, sold, leased, hired or performed by others,
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a certification mark,
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a distinguishing guise, or
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a proposed trade-mark
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Visual perceptibility seems to be key as in ICBC v. Registrar of Trade Marks
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In obiter, stated that a mark is not defined in the act, but that in common parlance however a mark is a device, stamp, label, brand, inscription, a written character or the like.
Playboy Enterprises Inc. v. Germain -
Stated that a mark must be something that can be represented visually … that can be seen.
Central Concepts -
The regime of registered trademarks is built o the law of unregistered trademarks, or passing off, and shares certain notions with it: use, confusion, and distinctiveness.
Use -
s. 4 is a crucial part of the Act and is set out for reference.
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4(1) Trademark is deemed to be used in association with wares if it is marked on the wares themselves, or the package in which they’re sold.
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4(2) Deemed to be used in association with services if it is use or displayed in the performance or advertising of those services.
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4(3) A mark that is marked in Canada on wares or on the packages in which they are contained is, when the wares are exported from Canada, deemed to be used in Canada in association with those wares.
Confusion -
In passing off, the concept of confusion governs liability.
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Misrepresentation that is likely to cause confusion of a relevant sort must be proved.
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Confusing is defined in s. 2 when the term, as applied, is a use that “would cause confusion in the manner and circumstances described in s. 6”.
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s. 6 says that if the use of a mark causes confusion with another in the same area, or would be likely to, even if they aren’t of the same class.
Distinctiveness -
The very essence of trademarks, registered or not, for acquisition and maintenance of rights.
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May be earned though the use in the marketplace, or it could be inherent.
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A trademark that does not distinguish, or is not adapted to distinguish, or is not used for the purpose of distinguishing, or has lost its distinctiveness is not a trademark.
Assignment and Licensing of Trademarks -
At common law, ownership of a mark could not be transferred apart from the goodwill with which it was associated.
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Trademarks themselves were not regarded as property.
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In the 1952-53 revision of the act, s. 48 was introduced to change that.
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Whether registered or not, is transferable either with or without the goodwill of the business.
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System was eased with 1993 revision, s. 50.
Unfair Competition and Prohibited Marks -
Trade Marks Act started out as Unfair Competition Act of 1932 due to Canada’s international duties as a member of the Paris Union.
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Unfair Competition: s. 7
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7(a) - injurious falsehood
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7(b) and (c) - deal with tort of passing off
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7(d) - deals with false or misleading descriptions likely to deceive the public
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Prohibited Marks: s. 9
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Precludes someone from capitalizing on any well-known respected public symbol and adopting it for his or her own wares or services.
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Absolutely prohibited
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s 9(1) contains a long list of matters that may not be adopted in connection with a business and also prohibits adoption of marks so nearly resembling them as to be mistaken for them, like national flags, coats of arms, Red Cross, etc., portrait or signature of a living individual or one dead less than thirty years, etc.
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Conditionally prohibited
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Not absolute but depends on whether they have been the subject of public notice given by the registrar of trademarks.
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Arms, crest or flag of Canada, a province, or municipal corporation.
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Further Prohibitions: ss. 10 and 11
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Also prohibited are marks described in s. 10 that “by ordinary and bona fide commercial usage, become recognised in Canada as designating the kind, quality, quantity, destination, value, place of origin or date of production of any wares or services.”
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s. 10.1 prohibits the adoption or use as a trademark, in association with another plant variety of the same species, of a denomination designating a plant variety under the Plant Breeders’ Rights Act.
Protected Geographical Indications -
s. 11.11 to 11.2 concern geographical indications for wines or spirits.
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Exceptions are made for some Canadian usages, customary names, and generic terms.
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Also a provision for amendment to and removal from the list.
The Registration Process -
Application to register a trademark is made tot he Registrar’s Office in the appropriate form under s. 30 and must include “a statement in ordinary commercial terms of the specific wares or services in association with which the mark has been or is proposed to be used.”
Registrability Ordinary Trademarks Barriers to Registration -
word primarily merely a surname. (Standard Oil)
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written or phonetically descriptive or deceptively misdescriptive in English or French. (Orange Maison)
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the name of any language of the wares or services in connection with which it is used or proposed to be used
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“confusing" with a registered trademark. (s. 2 - 6)
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prohibited mark under s. 9 or 10
a) Names or Surnames -
s. 12(1) Subject to s. 13, a trade-mark is registrable if it is not
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a word that is primarily merely the name or the surname of an individual who is living or has died within the preceding 30 years.
Standard Oil Co. v. Registrar of Trade Marks -
FIOR (fluid iron ore reduction)
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A surname in telephone directories, but is it “primarily merely” a surname?
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No > therefore registrable.
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For purposes of the Trade Mark Act there are three classes of words:
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Dictionary words, names, invented words.
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“Merely” - FIOR is not merely surname of living person because it has existence as an invented word.
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“Primarily” - a reasonable person in Canada in English or French would equally as likely identify FIOR as a brand or mark of some kind or a surname, so not primarily.
b) Descriptiveness -
s. 12(1)
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(b) whether depicted, written or sounded, either clearly descriptive or deceptively misdescriptive in the English or French language 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.
Drackett Co. of Canada Ltd. v. American Home Products Corp. -
s. 12(1)(b) - Once-a-week to be used in association with a floor cleaner.
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Clear that there was no prior use so can’t be saved under s. 12(2).
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The test that a trademark is clearly descriptive is one of first impression.
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“clearly” in s. 12(1)(b) means “easy to understand, self-evident, plain”.
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“character” means “feature, trait or characteristic of the product”.
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ONCE-A-WEEK implies that the product is to be used weekly; it points to a “character” of the product.
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Held to be not registrable.
Home Juice Co. v. Orange Maison Ltée -
s. 12(1)(b) “English or French” - which dictionary to use?
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Only Canadian or elsewhere?
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Orange Maison had no French meaning in QC, but in French Dictionary in France it meant hoe made, good quality orange juice.
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Held that you must consider international vocabulary, not just Canadian.
c) Genericness -
12(1)
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(c) the name in any language of any of the wares or services in connection with which it is used or proposed to be used.
Wool Bureau of Canada Ltd. v. Bruck Mills Ltd. -
WOLAINE was not the name in English or French, plaintiffs thought it sounded like woollen, word was actually a contraction of “wool” and “laine”, found that it was not the phonetic equivalent of the word “woollen”.
Brûlerie Des Monts Inc. v. 3002462 Canada Inc. -
Found that the phrase “La Brûlerie” (meaning the place where coffee is roasted) was declared invalid as unregistrable.
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In the dictionary, couldn’t take word from public domain for exclusive use.
d) Confusion with Registered Trademarks -
12(1)
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(d) confusing with a registered trade-mark.
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Confusing defined in s. 6
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Use defined in s. 4.
United Artists Corp. v. Pink Panther Beauty Corp. -
Opposition proceeding to proposed trademark.
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Confusing with a registered trademark, but fame is not in s. 6.
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Pink Panther beauty salon is defendant.
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Key factor is that they’re very different services/wares (movies v. beauty salon).
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The test is confusion, now how famous/established the trademark is.
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In this case, no confusion.
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Just because it is a famous mark, doesn’t mean there is a presumption of confusion.
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(Contra to Disney and Orkin in common law passing off).
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Issue was not how well known the mark was, but whether there was a likelihood of confusion in the mind of the average consumer between the respondent’s mark and the appellant’s proposed mark with respect to the goods and services provided.
Mattel, Inc. v. 3894207 Canada, Inc. -
Opposition proceeding.
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Barbie doll v. Barbie Restaurant Services, no confusion found.
Veuve Clicquot Ponsardin v. Boutiques Cliquot Ltée -
Infringement claim, rather than opposition proceeding, so burden of proof lies with the holder of the registered trademark to prove likelihood of confusion.
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Different in the spelling (lack of a “c”) was not significant.
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Even if you allowed broadening of usage of Clicquot to encompass fine products, you can’t say there is going to be confusion with a mid-range supplier of apparel (confusion).
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Says can’t look at s. 6, but maybe to s. 22 dilution.
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(s. 20 infringement - confusion): dilution (or depreciation of goodwill).
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(1) No person shall use a trade mark registered by another person in a manner that is likely to have the effect of depreciating the value of the goodwill attaching thereto.
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Steps:
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Use (s. 4)
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Goodwill attached
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Mental association between the mark and the use of by the defendant (like causation for damage).
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Likelihood of depreciation (damage).
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Depreciation can be tarnishment or blurring (death by 1000 cuts).
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This test is just short of misappropriation.
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No requirement to show that use of the marks in the same geographic area could cause confusion.
Exceptions a) Acquired Distinctiveness -
s. 12(2) the barriers to registration in ss. 12(1)(a) and (b) may be overcome by proving that the trademark “has been so used in Canada by the applicant or his predecessor in title as to have become distinctive at the date of filing an application for its registration.”
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s. 12(2) cannot be used to avoid any of the other prohibitions on registration in s. 12(1).
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s. 18(2) is a companion to s. 12(2).
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A ground of invalidity of registered trademarks is that they were not registrable at the date of registration, as provided in s. 18(1)(a).
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However, s. 18(2) states that if a trademark had, through use, “become distinctive at the date of registration”, its validity cannot be challenged simply because evidence of that earned distinctiveness had not been put before the decision maker prior to the grant of registration.
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Therefore, acquired distinctiveness may be proved at the time of application if s. 12(1)(a) or (b) is raised by the registrar or an opponent, or later, should the issues of validity depend on registrability.
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Home Juice case is an example of s. 18(2) rescuing a clearly descriptive trademark.
b) Marks Registered Abroad: s. 14 -
s. 14(1) provides that, notwithstanding s. 12, a mark is registrable in Canada if the applicant or predecessor in title had caused it to be duly registered in the applicant “country of origin”.
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Can’t be confusing with a registered trademark, contrary to morality or public order, or deceptive to the public, or prohibited by ss. 9 or 10.
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Also can’t be, by s. 14(1)(b), be “without distinctive character, having reared to all the circumstances of the case including the length of time during which it has been used in any country”.
c) Associated Marks: s. 15 -
s. 15(1) Notwithstanding ss. 12 or 14, confusing trademarks are registrable if the applicant is the owner of all such trade-marks, which shall be known as associated trademarks.
d) Disclaimer: s. 35 -
s. 35 states:
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The Registrar may require an applicant for registration of a trademark to disclaim the right to the excessive use apart from the trademark of such portion of the trademark as is not independently registrable, but the disclaimer does not prejudice or affect the applicant’s right then existing or thereafter arising in the disclaimed matter, nor does the disclaimer prejudice or affect the applicant’s right to registration on a subsequent application if the disclaimed matter has then become distinctive of the applicant’s wares or services.
Canadian Jewish Review Ltd. v. Registrar of Trade Marks -
Application was for the mark THE CANADIAN JEWISH REVIEW.
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Words were in a script form suggestive of Hebraic letterpress.
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Descriptive under s. 12(1)(b).
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All the words were disclaimed, nonetheless, the mark was refused.
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After a disclaimer, there must be something remaining that is capable of distinctiveness.
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The design portion was intrinsic to the words and could not be dissociated from them the design was merely an embellishment of the letters.
Cooper v. Mark’s Work Wearhouse Ltd. -
A disclaimer of the name DAN COOPER for clothing was a recognition of the barrier of s. 12(1)(a).
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There was separate design matter sufficient to allow the mark as a whole to be registered.
Distinguishing Guise: s. 13 -
In s. 2, the definition of trademark includes “distinguishing guise” as a kind of trademark.
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(a) a shaping of wares or their containers, or
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(b) a mode of wrapping or pack again wares
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the appearance of which is used by a person for the purpose of distinguishing or so as to distinguish wares or services manufacturers, sold, leased, hired or performed by him from those manufactured, sold, leased, hired or performed by others.
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Under s. 13, distinguishing guises have their own specific requirements for registrability:
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13(1) A distinguishing guise is registrable only if
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(a) it has been so used in Canada by the applicant or his predecessor in title as to have become distinctive at the date of filing an application for its registration; and
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(b) the exclusive use by the applicant of the distinguishing guise in association with the wares or services with which it has been used is not likely unreasonably to limit the development of any art or industry.
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The applicant must produce evidence to the registrar under s. 32(1) showing the extent and time of use in Canada, and by s. 32(2) the registrar must restrict the registration tot he wares or services and to the territorial area of Canada where distinctiveness has been demonstrated.
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Cannot be based on proposed use.
Dominion Lock Co. Ltd. and Independent Lock Co. v. Schlage Lock Co. -
Two key companies, wares for one filed as “original keys for door locks”.
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After application was filed, ruled as distinguished guise under s. 2 (g) of the Act.
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Held that the trademark was not distinctive when it was filed, and it is not registrable for the further reason that it does not meet the test of s. 13(1)(b).
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Many key blanks had been sold to public in the same/similar shape.
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Schlage argued that they were different, originals to the public and blanks to locksmiths, but that was not a realistic distinction.
Certification Marks: s. 23 -
Definition of trademark in s. 2 includes “certification mark” as a kind of trademark.
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a mark that is used for the purpose of distinguishing or so as to distinguish wares or services that are of a defined standard with respect to
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(a) the character or quality of the wares or services,
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(b) the working conditions under which the wares have been produced or the services performed,
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(c) the class of persons by whom the wares have been produced or the services performed,
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from wares or services that are not of that defined standard.
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Under s. 23(1) a certification mark may be registered only by someone not engaged int eh actual provision of the wares or services with which the mark is associated.
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Under (2) the registered owner license others to use the mark if they meet the defined standard.
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s. 30(f) the applicant for a certification mark must include in the application “particulars of the defined standard” and a statement that the applicant is not engaged in the provision of the relevant wares or services.
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The owner of a certification mark may under s. 23(3) take action against unauthorised uses.
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