COUNTRY CORRESPONDENT CO-PUBLISHED EDITORIAL Canada Bereskin & Parr LLP

Interlocutory or interim injunctions Brigitte Chan Tamara Céline Winegust are rare and typically difficult to obtain, Partner Associate The importance of registration although the British Columbia Supreme Court recently granted one where the [email protected] [email protected] While rights in and other commercial signs can exist irrespective of registration, defendant – who had sold his business Brigitte Chan is a partner with Bereskin & Tamara Céline Winegust is an associate registration has many important advantages name to the plaintiff in a bankruptcy Parr LLP and a member of the trademarks at Bereskin & Parr LLP and a member proceeding – began operating a consulting practice group. Her practice focuses on of the practice group. Her business under a nearly identical name trademark prosecution, licensing and practice focuses on trademarks, new (Alpha Neon (2012) Ltd v Ziskos, 2014 enforcement, as well as , domain media/copyright, licensing, marketing and BCSC 2326). In extreme circumstances, name and related Internet matters. advertising law, in addition to litigation. where there is a real or impending threat Trademark registration is not required by public authorities under significant the Trademarks Act provides for a similar to rights, a rights holder may for rights in trademarks, , trade government control in Canada – are treated cause of action. The per be able to obtain a quia timet injunction. names and other commercial signs in as ordinary common law trademarks unless se is not available in Quebec, although Injunctions may also serve as a remedy in CDRP Dispute 254 (BCICAC), March 27 2014). In Quebec, the Charter of the French Canada. However, the geographic scope published in the Trademarks Journal as general principles of civil liability in the successful passing-off cases. UDRP complainants must likewise Language and related regulations require and enforcement mechanisms for such an official mark. Section 9(1) prohibits Quebec Civil Code facilitate a similar cause Owners of unregistered trademarks demonstrate ownership of a confusingly all inscriptions to be in French, regardless unregistered marks and signs are limited anyone in connection with a business from of action. can seek the transfer of domain names similar mark, bad-faith registration of of whether they appear on product when compared to the national protection adopting as a trademark, or otherwise, Owners of registered marks are provided containing the same or a confusingly the domain name and the registrant’s packaging, commercial documents or and statutory enforcement mechanisms any name that consists of, or so nearly with additional means of addressing similar mark by bringing a complaint lack of legitimate interest. The UDRP public signage. An exception exists for available to trademarks registered with the resembles as to be likely to be mistaken for, in the Trademarks Act. These under the Canadian Internet Registration defines ‘marks’ more narrowly, specifically non-French trademarks that are recognised Canadian Office. the official mark after it has been advertised include causes of action for infringement Authority’s Dispute Resolution Policy excluding business and trade names, within the meaning of the Trademarks Amendments to the Trademarks Act as such. The test is not one of confusion, but (Section 20) – which include the sale, (CDRP) for domain names in the country- personal names and geographic identifiers Act and for which no French version has (RSC 1985 c T-13) set out in Bill C-31 remove rather of resemblance, so use in different distribution or advertisement of goods code top-level domain (TLD) ‘.ca’, or under from protection unless they are also trade been registered. In such case no French trade dress; but broaden the scope of what channels of trade or with different goods or or services; the manufacture, possession, the Internet Corporation for Assigned or service marks. That said, UDRP panels translation is required. However, the term can function as a trademark to include: “a services does not affect this analysis. import, export or attempt to export goods Names and Numbers Uniform Domain have accepted ‘recognised’ is undefined and although word, a personal name, a design, a letter, A number of measures and causes of for the purposes of sale or distribution in Name Dispute Resolution Policy (UDRP), rights as grounding a UDRP complaint courts have held that both registered a numeral, a colour, a figurative element, action are available for unregistered marks, association with a confusing trademark or for those in the generic TLD ‘.com’. where the mark is shown to have become a and unregistered marks fall under this a three-dimensional shape, a hologram, a such as the common law tort of passing off trade name; or the commission of any of Under the CDRP, complainants must distinctive identifier of the complainant or exception, the Office québécois de la langue moving image, a mode of packaging goods, and injunctive relief, as discussed below. these acts in the knowledge that the mark meet the Canadian presence requirements its goods and services. française (the Quebec government body in a sound, a scent, a taste, a texture and the If rights in an unregistered mark or is not associated with the goods or services and must establish that: Owners of trade or business names charge of protecting the French language positioning of a sign.” other commercial sign are violated, the to which it is attached – and depreciation • the subject domain name is confusingly may also seek to change a deceptively in Quebec) takes the position that only Other commercial signs, such as trade owner is entitled to bring an action for the of goodwill (Section 22), which is usually similar to a mark in which the similar business name under the provincial registered trademarks can benefit from the names or business names, can function common law tort of passing off. Various relied upon in the case of well-known complainant had rights before the or federal business acts, most of which exception. Securing registration for non- as a trademark when they are used to kinds of activities may constitute passing marks. Owners of registered marks may domain name was registered and in prohibit the adoption of business names French trademarks used in the province of distinguish the source of goods and services. off, including: also avail themselves of the new request for which it continues to have rights; that are identical or similar to the name of Quebec is therefore advantageous. In Canada, common law trademark • classic passing off, where the defendant’s assistance procedure (Section 51.04) and • the domain name was registered in bad a known body corporate, trust, association, While rights in trademarks and other rights arise through use and the creation inferior goods are passed off as those of request the Canada Border Services Agency faith; and partnership, sole proprietorship or commercial signs can exist irrespective of of a reputation for that mark, and are the plaintiff; to detain imported counterfeit trademark • the registrant has no legitimate interest individual, or the name by which one of trademark registration, registration has protected through the provinces’ powers • reverse passing off, where someone goods before they can enter the Canadian in the domain name. those entities carries out its business or many important advantages, including: over property and civil rights under else’s goods are passed off as those of the market. identifies itself where use of that name • protection for the trademark across Sections 92(13) and (16) of the Constitution defendant; and Common law rights in trademarks Both registered and unregistered would be likely to deceive. The acts and Canada; Act 1867 ((UK), 30 & 31 Vict, c3). Unlike • extended passing off, where it is the and other commercial signs can also be trademarks may form the basis of a regulations typically also contemplate • easier access to the Federal Court of registered trademarks, which receive quality of the goods rather than their enforced through injunctions, although complaint. ‘Marks’ are broadly defined by administrative proceedings, allowing Canada in the event of infringement; protection throughout Canada, protection source that is misrepresented. such relief is usually granted only in the CDRP and include both trademarks trade or business name owners to file a • access to the new request for assistance for unregistered trademarks is usually extreme circumstances. Three factors are and trade names used in Canada to complaint with the relevant government border measures programme; and limited to the geographical area in which Three elements are required to prove considered when granting an injunction: distinguish the complainant’s wares, services department seeking an order that the other • the creation of prima facie evidence of the mark’s distinctiveness can be proven. passing off. First, there must be a pre- • whether there is a serious issue to be or business. Complainants relying on party be required to change its name. For ownership of the trademark. As such, unrelated entities may have rights existing commercial reputation in the tried; unregistered rights must adduce evidence example, Section 12 of the Canada Business in the same unregistered trademark, for mark. Second, the public must have been • whether the plaintiff will suffer establishing the mark’s reputation, such Corporations Act (RSC, 1985, c C-44) Once amendments to the Trademarks the same or similar goods or services, in deceived or confused as to the mark’s irreparable harm if the injunction is not as explaining advertising and marketing contains a prohibition against adopting Act set out in Bill C-31 are implemented, different geographical areas of Canada. origin. Third, this must have caused actual granted; and practices, providing advertising expenditures a deceptively descriptive name and marks for which there has been no use Certain types of mark – including official or potential damage to the plaintiff (eg, • whether the balance of convenience in the relevant jurisdiction and producing provides the director with power to order in commerce will be allowed to seek the marks – are granted broad protection under Ciba-Geigy Canada Ltd v Apotex Inc [1992] favours granting the injunction (eg, business records demonstrating sales in a corporation doing so to change its name. benefits of registration, including national Section 9 of the Trademarks Act. ‘Official 3 SCR 120 (SCC) and Kirkbi AG v Ritvik RJR-MacDonald Inc v Canada (Attorney association with the mark or trade name Such proceedings are usually reserved for protection and access to the marks’ – trademarks adopted and used Holdings Inc 2005 SCC 65). Section 7(b) of General), [1994] 1 SCR 311 (SCC)). (eg, Guitar Center, Inc v Robert (Rob) Pipemi, clear-cut cases of bad faith. of international registration.

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