CANADA Law and Practice Contributed by: Casey Chisick, Steven Kennedy, Karen MacDonald, Jessica Zagar, Dian Howard and Steven Henderson, Cassels Brock & Blackwell LLP
2. Trade Mark Ownership, Protection and Rights 2.1 Types of Trade Marks The Trademarks Act recognises several types of trade marks. • A “trade mark” is a “sign” or a “combination of signs” that is used or proposed to be used to distinguish the goods and/or services of one party from those of another. “Sign”, in turn, includes words, personal names, visual designs, letters, numerals, colours, figurative elements, three-dimensional shapes, holo - grams, moving images, modes of packaging goods, sounds, scents, tastes, textures and the positioning of a sign. • A “certification mark” is a sign or combination of signs that distinguishes goods and servic - es that are of a certain defined standard. • A “geographical indication” is used to iden - tify certain types of wines, spirits, foods, and agricultural products as originating from a certain territory, region, or locality. • A “prohibited” or “official” mark is a badge, crest, emblem, or mark that is adopted and used by any public authority to distinguish its goods or services. Industrial designs attract separate protection under the Industrial Design Act. Certain trade marks in Canada receive special protection under their own designated legisla - tion. For example, the Olympic and Paralympic Marks Act specifically relates to the protection of 39 marks related to the Olympic and Paralympic Games. Canadian trade mark law does not expressly protect unregistered marks that are famous in other jurisdictions. However, under the com -
mon law doctrine of passing off, a foreign trade mark owner may be able to demonstrate that the fame of their mark has resulted in that mark having goodwill and reputation in Canada such that confusion with similar marks could result. 2.2 Essential Elements of Trade Mark Protection A trade mark is eligible for registration if it is dis - tinctive of the goods and services with which it is associated and does not fall under one of the express prohibitions in the Trademarks Act. Examples of these prohibitions are marks that are: • primarily or merely a surname of an individual who is living or has died within the preceding 30 years; • clearly descriptive (or deceptively misdescrip - tive) of the character or quality of the associ - ated goods and services; • the name of any of the associated goods and services in any language; • confusing with another registered (or pending) trade mark; or • primarily dictated by utilitarian function. An otherwise unregistrable trade mark can qual - ify for registration if the applicant can demon - strate that the mark has acquired distinctiveness in Canada. This is often demonstrated through evidence of extensive sales and advertising in Canada. 2.3 Trade Mark Rights A trade mark registration provides its owner with the exclusive right to use that mark in associa - tion with the listed goods and services through - out Canada for the duration of the registration term.
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