AuthorDavid Vaver
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.
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: /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).
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 (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).

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