Trade-marks

• Author: David Vaver
• Pages: 423-557

423

CHAPTER 4

trademarks

Trade-marks and trade-name s are protected at b oth common and civ il

law and under the Trade-marks Act.1 This chapter focuses on trade-mark

protection under the Act but also discusses available common law pro-

tection for these items and for personal and Inter net domain names.

A. INTRODUCTION

Trade-marks are commonly classif‌ied as intellectual property, but there

is nothing intellectual about them at all. Despite the blandishments

of Madison Avenue and its Canadian counterparts, the law has never

treated trade-mark production a s intellectua l — wisely, when one see s

the vast range of obvious descriptive words that are used on goods and

services. In 1879 the United States Supreme Court ruled that Congres s

could not pass trademark legislation under its power to legislate for pat-

1 R.S.C. 1985, c. T-13 [T Act] as amended, including t he Trade-mark Regulation s,

1996, SOR /96-195 [TR]; in this chapter it is cal led the Act. For non-binding

practice, see Ca nadian Intellectua l Property Off‌ice’s Trade-marks Examina-

tion Manual (Septembe r 1996) [T Manual], online: www.cipo.ic.gc.ca/eic /site/

cipoInternet-Inter netopic.nsf/eng/wr0 0060.html. For general theor y, see C. Ng,

“A Common Law of Identity Sign s” (2007) 20 I.P.J. 177 [Ng]. See Glossary for the

origin of the d istinctive Canadi an spelling of “trade-ma rk” and “trade-name”

(“trademark” in the Un ited States, “trade mark” in t he United Kingdom and

other Commonwealt h states).

INTELLECTUA L PROPERTY LAW424

ents and copyrights: trademarks do not “depend upon novelty, discov-

ery, or any work of the brain”; they require “no fancy or imagination,

no genius, no laborious thought.”2 Over a century later, the Supreme

Court of Canada called trade-marks, rather unk indly, “something of

an anomaly in intellectua l property law”: unlike patents or copyrights,

they provided the public with nothing new or expres sive; t hey were

just “a kind of shortcut to get consumers to where they want to go.”3

Short-cuts are nonetheless valuable: ask any toll-bridge owner.

We f‌ind that a trade-mark may merely comprise a prosaic word or

device — and today many do. The mark may be thought of independ-

ently, or it may be someone else’s idea. Who originated it, or how, does

not matter. No right s to a trade-mark f‌low from mere creation. Use or

its surrogates — public recognition or an intention to use — alone cre-

ate the rights, and then not in t he creator but in the person behind t he

use, intent, or creation of public recognition.4 So advertising agencies

that devise trade-marks for their clients do not usually own the mark;

it is the client who marks it on his goods who may register it.5 Simi-

larly, the media that nicknamed an English solicitor M R L O O P H O L E for

his knack of successfully defending drunk-drivi ng charges acquired no

rights in t he catchy descr iption: only the grateful solicitor could apply

to register it. Later creativity may give r ise to other IP rights, such as

copyright for words written in calligraphy or incorporated in a fancy

design;6 but these are separate issues.

Those uncomfortable with the “intellectual” epithet sometimes,

more apt ly, call these assets industrial property. The term is not de-

meaning; it merely signals the essentially commercial and prof‌it-making

character of these assets. But the propert y part of industrial property can

still seriously mislead. True, trade-marks are often classed as “intan-

gible” property and their holder can exclude even innocent users;7 they

2 Trademark Cases, 100 U.S. 82 at 94 (1879), invalidati ng the legislation.

3 Mattel, Inc. v. 3894207 Canada Inc., [2006] 1 S.C.R. 772 at [21] [Mattel].

4 Re Frankie Goes to Hollywood Ltd.’s Trade Mark Application (25 May 2007)

(U.K.T.M.O.) [unreported], online: w ww.ipo.gov.uk/o14007.pdf (band, not mem-

ber who suggeste d band’s name, owns the trad e mark rights) [Frankie].

5 American E xpress Co. v. Goertz, 515 F.3d 156 (2d Cir. 2008).

6 Australian Chinese Newspa pers Pty. Ltd. v. Melbourne Chinese Press Pty. Ltd.,

[2003] FCA 878 at [108]–[9] (Austl. Fed. Ct.), aff’d (sub nom. Melbourn e Chinese

Press Pty Ltd. v. Australian Chinese Ne wspapers Pty Ltd.) [2004] FCAFC 201

(Austl. Full Fed. Ct.) (trade mark rig hts and copyright, as ar tistic work, in

newspaper tit le in Chinese callig raphy); Griggs Group Ltd. v. Evans, [2004]

F.S.R. 673 at 679 (Ch.), aff’d [2005] EWCA 11 (DR M A R T E N S in orig inal design).

7 A.G. (Ontario) v. A.G. (Canada), [1937] A.C. 405 at 417 (P.C.) (exclusive right

to use a trade-m ark creates “a form of property in e ach Province”); Laugh It

Trade-marks 425

may be sold or licens ed, pass in bankruptcy, and be “interest s” under

bulk sales laws. Yet they are not like other property. Their “owner” does

not and should not have the right to exclude others from all or even

most uses. The E X X O N m ark owner c annot stop the u se of the word in

this book or in other media. It cannot (or at least, should not) stop Shell

saying its products are “cheaper than EX X O N ” (if they are).8 Nor has this

property the stability associated with other property rights. Indeed, it

is precisely when an owner starts treating its trade-ma rks as its prop-

erty th at it runs into trouble. Right s in E X X O N may in law d isappear i f

the mark is unused, if it is licensed without its owner controlling what

products it is marked on, if it changes in character (e.g., from a manu-

facturer’s mark to a distributor’s mark), or if it becomes gener ic (as

A S P I R I N d id in the United States, and almost d id in Canada too).9

Descriptively, therefore, trade-marks work dif ferently from other

forms of property; at common law, they cannot be saved from “misap-

propriation” or the ravages of some amorphous “un fair competition.”

This has been a deliberate policy choice. The Supreme Court, for one,

has cautioned against curtailing the “perceived benef‌its to the com-

munity from free and fair competition” by expand ing the common law

(particularly the passing-off action) beyond the protection of “the com-

munity from the consequential damage of unfair competition or . . .

[trade].” But “unfair competition or tr ade” was no catch-all for any ac-

tivity a judge thought distasteful: only misrepre sentations that would

likely cause public deception or confusion were covered.10 English

courts, too, have rejected unfair competition as a common law wrong;

such a tort would be “[un]desirable, still less necessary,” and to say

that misappropriation f‌ixes the boundaries of unlawful behaviour is “at

Off Promotions CC v. South Afri can Breweries Internatio nal (Finance) BV, 2005

(2) S.A. 46 at [10] (S. Afr. S.C.A.), rev’d on other grounds , 2006 (1) S.A. 144

(S. Afr. Const. Ct.) [Laugh It Off] (compare C.B. Simkin Trust v. Inland Revenu e

(New Zealand), [2004] UKPC 55); Henry Clay & Bock & Co. Ltd. v. Eddy (1915),

19 C.L.R. 641 (Austl. H.C.); College Savings Bank v. Florida Prepaid Postsecond-

ary Educatio n Expense Board, 527 U.S. 666 at 673 (1999); Anheuser-Busch Inc. v.

Portugal (2007), 45 E.H.R.R. 36 at [72] (Eur. Ct. Hum. Rts.) [Anheuser-Busch].

8 But see section H(3), “Dilution,” in this chapter.

9 Bayer Co. Ltd. v. American Dr uggists Syndicate Co. Ltd., [1924] S.C.R. 558 [Bayer];

compare GE Trade Mark, [1973] R.P.C. 297 at 323 (H.L.) [GE], contra. See section

B(2)(b), “Distinctivene ss,” in this ch apter.

10 Consumer ’s Distributing Co. v. Seiko Time Canada Ltd., [1984] 1 S.C.R. 583, 10

D.L.R. (4th) 161 at 173, 175, 183, rev’g (1980), 29 O.R. (2d) 221 (H.C.J.), aff’d

(1981), 34 O.R. (2d) 481 (C.A.) [Seiko]; RBC Dominion Sec urities Inc. v. Mer-

rill Lynch Canada Inc., 2007 BCCA 22 at [65], rev’d on other grounds, [2008] 3

S.C.R. 79 (no duty on ex-employee to compete fairly w ith ex-employer).