581 RECENT DEVELOPMENTS IN CANADIAN LAW: INTELLECTUAL PROPERTY, PART II TRADE MARKS AND UNFAIR COMPETITION William L. Hayhurst* I INTRODUCTION ..................................................... 583 II. OPPOSITION PROCEEDINGS ........................................ 583 A . Parties ....................................................... 583 B . Pleadings .................................................... 586 C. M aterial Dates ............................................. 589 1. Noncompliance with Section 29 ................... 592 2. Applicant Not the Person Entitled to Registration .......................................... 593 3. Mark Unregistrable ................................. 595 (a) Confusing with a Registered Trade Mark .................................... 595 (b) Adoption Prohibited .......................... 596 (c) Nature of the Mark ........................... 597 4. Mark Nondistinctive ................................. 599 D . O nus ......................................................... 600 1. Noncompliance with Section 29 ................... 601 2. Applicant Not the Person Entitled to Registration .......................................... 602 (a) PriorFiled Application ...................... 602 (b) PriorUse of Trade Marks ................... 602 * Of the Bar of Ontario, Counsel to Ridout & Maybee, Toronto. 582 Ottawa Law Review/Revue de droit d'Ottawa [Vol. 19:3 (c) Prior Use of Trade Names .................. 604 (d) PriorMaking Known of Trade Marks ...... 605 3. Mark Unregistrable ................................. 605 (a) Nature of the Mark ........................... 605 (b) Confusing with a Registered Trade Mark .. 606 (c) Adoption Prohibited .......................... 607 4. Mark Nondistinctive ................................. 607 5. General ............................................... 609 E. Evidence ..................................................... 609 F. Appeals ...................................................... 612 III. QUESTIONABLE TRADE MARKS ................................... 614 IV. ISSUES OF REGISTRABILITY ....................................... 618 V. TRADE MARK USE FOR SERVICES ................................ 622 VI. TRADE MARK USE FOR WARES .................................. 624 VII. SECTION 44 OF THE TRADE MARKS ACT ........................ 626 VIII. SECTIONS 9 AND 10 OF THE TRADE MARKS ACT .............. 629 IX. CONFUSING MARKS ............................................... 631 X. SECTION 7 OF THE TRADE MARKS ACT ......................... 637 XI. DISTINCTIVENESS .................................................. 641 A. Trade Mark Licensing ..................................... 641 B. Knowledge in Canada of a Foreign Trade Mark or Trade Name ............................... 647 1. The Common Law Position ........................ 647 2. Trade Mark Registration ........................... 649 C. Law Reform ................................................. 651 XIl. TRAFFICKING IN A TRADE MARK ................................ 653 XIII. RIGHTS ACQUIRED BY REGISTRATION ........................... 657 1987] Recent Developments in CanadianLaw XIV. THE GREY MARKET ............................................... 660 XV. RIGHTS OF PUBLICITY AND PRIVACY ............................. 661 XVI. UNFAIR COMPETITION ............................................. 664 I. INTRODUCTION Part I of the present survey' reviewed developments in the Canadian law of patents, industrial designs, copyright and confidential information from the end of 1982 to the end of 1986. This Part deals with the case law reported from the end of 1982 to the end of 1987, pertaining to trade marks and unfair competition. During this period there has been no legislative activity on these subjects. The last survey relating to trade marks2 began with a review of developments in opposition proceedings in the Trade Marks Office, that most prolific source of reported decisions. This survey will also begin with the topic of opposition proceedings. II. OPPOSITION PROCEEDINGS Since the last survey3 the members of the Trade Marks Opposition Board have clarified their positions on a number of matters. Their care in doing so has assisted applicants and opponents in preparing their cases. In spite of the fact that one member of the Board decides each case, there has been substantial uniformity in the decisions during this period. A. Parties Subsection 37(1) of the Trade Marks Act4 provides that "any person" may oppose a trade mark application after the application has been ad- vertised. Paragraph 37(2)(c) provides that one of the possible grounds of opposition is that the applicant is not "the person entitled to registra- tion". Section 2 of the Act provides the following definition: " 'person' I W.L. Hayhurst, Recent Developments in Canadian Law: Intellectual Property (1987) 19 OTrAWA L. REv. 137 [hereinafter PartI]. 2 W.L. Hayhurst, IndustrialProperty: Part1I (1983) 15 OTrAvA L. REV. 311. 3 Ibid. 4 R.S.C. 1970, c. T-10 [hereinafter, unless otherwise indicated, all statutory references are to the Trade Marks Act]. Ottawa Law ReviewlRevue de droit d'Ottawa [Vol. 19:3 includes any lawful trade union and any lawful association engaged in trade or business or the promotion thereof, and the administrative authority of any country, state, province, municipality or other organized admin- istrative area". In Compagnie des Montres Longines FrancillonS.A. v. Pinto Trad- ing Co.5 the trade mark application in question had been filed in the name of Pinto Trading Co. It emerged that Pinto Trading Co. was the trading name of an individual, Nessim Pinto. Considering that a legal action would be a nullity if commenced solely in an individual's firm name or trading style (and of course an ultimate objective in obtaining a trade mark registration is to be in a position to sue infringers), the Board concluded that the named applicant was not a person. Although the opponent had not specifically raised the objection that the applicant was not a person, 6 the Board refused the application. The question arises whether the application could have been amended to identify the applicant as Nessim Pinto, or Nessim Pinto doing business as Pinto Trading Co. It is submitted that it could have been. Subsection 36(a) of the Trade Marks Regulations7 provides that an application may not be amended at any time "to change the identity of the applicant, except after recognition of a transfer by the Registrar". The suggested amendment would not change anyone's identity, because a trading name is merely an alias, in this case an alias of a real person and the real applicant. The Board would have done well to advise Mr. Pinto that his application would be refused unless he amended it to identify himself as the applicant. In the Pinto case the Board said that the definition of "person" in the Act has been interpreted as including "sole proprietorships, partner- ships, corporations, lawful associations and joint ventures".8 In Harvard Club of Montreal v. Vetements Howick Apparel Ltd.9 the applicant con- tended that the opponent was merely a social club and not a "person", but neither party filed evidence. Chairman Partington referred to the statutory definition of "person" quoted above and said that: a person can include a lawful association engaged in trade or business or the promotion thereof. Additionally, the word "business" does possess a broad definitionio and would encompass any "purposeful activity" which might well, in my opinion, be charitable or educational in purpose. I am 5 (1983), 75 C.P.R. (2d) 283 (T.M. Opp. Bd.). 6 Ibid. at 284. The statement of opposition alleged that the application did not comply with s. 29(i) of the Act in view of the fact that the applicant was aware of the opponent's trade mark LONGINES and thus could not be satisfied that it was the person entitled to use the trade mark NEUGINE in Canada in association with watches. 7 C.R.C., c. 1559. 8 Supra, note 5 at 286. 9 (1986), 8 C.P.R. (3d) 493 at 495 (T.M. Opp. Bd.). 10 Presumably he means a broad dictionary definition, but he does not quote one. 19871 Recent Developments in Canadian Law of the view that the opponent in its correspondence of October 24, 1983," has established to my satisfaction that it has qualified itself as being a "person" .... 12 In Garantv. Abba FashionsLtd. 13 the opponent was an individual, Beverley J. Garant. One of her grounds of opposition was that the ap- plicant was not the person entitled to register the mark in question because the mark was confusing with certain trade marks and trade names that had earlier been used by the opponent. Chairman Partington concluded from the evidence that it was not the opponent alone, but the opponent in partnership with her husband, who had used the marks and names upon which the opponent relied. Under subsection 17(1) of the Act a trade mark application cannot be refused because of earlier use of a confusing trade mark or trade name except at the instance of the person who is the prior user, or that person's successor in title. Ms. Garant had not opposed on behalf of the partnership nor as its successor, and she was held not to be a person entitled to rely upon the alleged prior uses. Ms. Garant argued that a partnership is not a person nor a legal entity, but the Chairman held that a partnership is a "lawful association engaged in trade or business" within the statutory definition of "person", and he stated: In this regard, the term "association" does not have, in law, a fixed meaning such as is accorded to "partnership"