CANADA Law and Practice Contributed by: Casey Chisick, Steven Kennedy, Karen MacDonald, Jessica Zagar, Dian Howard and Steven Henderson, Cassels Brock & Blackwell LLP
marks Act will come into force requiring that a mark be in use before its owner can commence an action for trademark infringement or depre - ciation of goodwill. As of the date of writing, it is not entirely clear how provision will be enforced or even the extent to which a mark must be used, particularly where there are numerous goods and services listed in the registration. At a minimum, it is expected that a defendant will be able to assert non-use of the plaintiff’s mark as a defence to an infringement or deprecia - tion of goodwill action and it could potentially form a basis to challenge standing on a prelimi - nary basis. It is therefore going to be critical to ensure that a mark is in use before it is asserted in a court proceeding, and the most cautious approach would be to ensure that the mark is in use in association with all of the listed goods and services. 9.2 Defences to Copyright Infringement (Fair Use/Fair Dealing) Fair Dealing In certain situations, fair dealing allows a user to deal with a copyright-protected work or other subject matter without permission from or pay - ment to the copyright owner. To claim fair deal - ing, a user must satisfy the two-step test set out by the Supreme Court of Canada. • First, the dealing must be for one or more of the allowable purposes set out in the Copy - right Act, namely research, private study, education, parody, satire, criticism, review, or news reporting. The Supreme Court has directed that the allowable purposes be given a “large and liberal interpretation”, with the “analytical heavy-hitting” reserved for the second step. • Second, the dealing must also be considered “fair”, with at least six non-exhaustive fac - tors available to aid in the determination: the
purpose of the dealing, the character of the dealing, the amount of the dealing, alterna - tives to the dealing, the nature of the work, and effect of the dealing on the work. Further, if the dealing is for the purpose of criti - cism, review, or news reporting, the source of the work – and, if given in the source, the name of the author, performer, maker, or broadcaster – must be given. Satire and Parody “Satire” and “parody” are not defined in the Copyright Act. The Federal Court has observed that satire includes elements of ridicule, irony, or sarcasm, and that parody should be understood as having two basic elements: the evocation of an existing work while exhibiting noticeable differences; and the expression of mockery or humour. Parody does not, however, require that the source of the parodied work be identified or that the expression of mockery or humour be directed at the exact thing being parodied. Freedom of Expression The Copyright Act does not recognise an express exception based on freedom of expres - sion. However, courts have recognised that a dealing for the purpose of criticism or review (or presumably parody or satire) may be fair even if the criticism is strongly expressed. 9.3 Exhaustion Trade Mark The Trademarks Act does not deal specifically with the exhaustion of trade mark rights. Once a product bearing an owner’s trade mark has been sold to the first buyer, the owner is gener - ally unable to prevent the subsequent sale of the goods by that buyer.
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