The Requirement to Show Use
To succeed in action for infringement relying on section 19 or 20 of the Act, the plaintiff must show that the defendant has used the impugned mark as a trademark. This requires that the plaintiff establish that the defendant’s use of the mark satisfies the requirements of the definition of a trademark or trade name set out in section 2 and the definition of use as required by section 4 in association with goods or services.
Both the intention of the defendant and recognition by the public are relevant factors and either may show that the defendant has used the impugned mark as a trademark. It is unnecessary to show both, but one or the other must be shown.
Invalidity
The owner of a registered trademark benefits from a presumption that its registration is valid and the onus remains on an attacking party to show it is invalid and should be expunged. If it is found that the plaintiff’s trademark registration is invalid, this is a complete defence to a claim for of infringement
Comparison with a Claim for Passing Off
An action for infringement is based on the rights associated with the ownership of a registered trademark available under section 19 or 20 of the Act. An action for common law passing off, or under section 7 of the Act, is based on the existence of goodwill, a misrepresentation and resultant damage. While related, the causes of action differ in several ways including:
(a) Infringement under section 19 or 20 of the Act is concerned only with one method of passing off, restricted to the use of a registered trademark and a confusing trademark.
(b) In an action for infringement, once the plaintiff has shown use of a registered trademark and a confusing trademark, the defendant cannot avoid infringement by showing added matter distinguishes its goods or services from those of the trademark owner.
(c) In an action for the infringement, the plaintiff has the right to rely on its registration as evidence of ownership and its exclusive rights throughout Canada, while the plaintiff in an action for passing off must establish goodwill in the trading indicia it seeks to protect, which may be territorially limited.
(d) In an action for infringement, a court must consider the trademark registration according to its terms to reflect the entire scope of the rights granted to the plaintiff but in an action for passing off, a court should only consider how the mark in issue has been used by the plaintiff.
A plaintiff may be unsuccessful with an action for infringement because the registration was invalid but might still succeed with a claim for passing off on the same evidence. In most actions seeking infringement, an alternative claim for passing off is pleaded.
If you have questions, please contact me at mckeown@gsnh.com
John McKeown
Goldman Sloan Nash & Haber LLP
480 University Avenue, Suite 1700
Toronto, Ontario MSG 1V2, Canada
Direct Line: +1 (416) 597-3371
