Trademark infringement can leave a brand feeling flat. When someone copies a name or logo, it’s more than just a mix-up. It can cost money, trust, and even a company’s good name.
Courts in Canada and abroad have tackled trademark cases, setting rules for future disputes. In this article, we’ll discuss the basics of trademark or trade name infringement, and some of the worst and peculiar cases to learn from.
What is trademark infringement?
Trademark infringement happens when a person or entity uses the mark (or the brand) of another without consent, or in violation of registered trademark. This confuses customers about who the real owner is and leads to lost profits for the trademark owner.
Trademark infringement involves using the established name or reputation of another for profit. This can then lead to lawsuits, both for damages and criminal cases, against the infringing party.
There are a lot of ways that companies can protect their trademarks. With the help of intellectual property (IP) lawyers, trademarks owners can act quickly and pursue legal means.
Watch this video to learn more about IPs and trademarks under Canadian laws:
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Trademark infringement in Canada
The Trademarks Act is the federal law that governs the registration, use, and infringement of trademarks in Canada.
It says that trademark infringement is committed when someone else does any of the following, which results in confusion with the trademark or trade name of another:
- sells
- manufactures
- distributes
- advertises
- imports
- exports
These acts apply to goods and services that bear the confusing trademark, including on labels and packaging.
What are some of the worst trademark infringement cases?
In and out of Canada, there have been a lot of trademark infringement cases that made waves in the legal scene, from which we can learn some important lessons. Below are some of the most notable infringement cases:
For starters, here's an example of a claim of infringement in Calgary:
Want to consult a lawyer on anything related to trademarks? Here’s a list of Lexpert-ranked best law firms for intellectual property in Canada.
The fashion brand against...a fried chicken?
Aside from having the worst consequences for the infringer, the case of Louis Vuitton against Louis Vuiton Dak is one of the most unusual trademark cases. The fashion icon filed the case against the fried chicken restaurant for infringing its trademarked logo, packaging, and trade name in Seoul Central District Court.
A clear case of trademark infringement
Eventually, the court awarded damages against Louis Vuiton Dak. The fried chicken restaurant was even fined for a larger amount after it changed its name to “LOUISVUI TONDAK” to evade liability.
This case highlights the far-reaching legal rights of a trademark or trade name holder, even against anywhere in the globe. It also shows that owners of registered trademarks have many options when it comes to protecting their rights, either in or outside of their borders.
The tale of two Barbies
International brands have also enforced their registered trademarks in Canada. One of these is the case of Mattel, Inc. v. 3894207 Canada Inc., 2006 SCC 22, this time involving the toy manufacturer of the Barbie dolls, Mattel Inc.
However, this one has a very different ending than that of Louis Vuiton Dak’s case.
Two confusing Barbies?
In 2006, Mattel tried to stop a Montréal restaurant from using and registering the name “Barbie’s.” While the restaurant had been using the name since 1992, Mattel argued that it confused consumers and suggested a trade connection.
In its defense, the restaurant said its business was different from toys, and customers would not mix them up with Mattel’s Barbie dolls. As such, the issue arose as to what the name “Barbie’s” would make people think of: the doll or the restaurant.
The Canadian Intellectual Property Office (CIPO) allowed the registration of the restaurant name. Accepting the restaurant’s arguments, it found that using the “Barbie” name does not create confusion since Mattel’s fame relates to dolls and doll accessories, while the restaurant’s registration covers different products and services.
This decision of the CIPO was upheld by both the Federal Court and the Federal Court of Appeal.
The Court’s ruling: no infringement
It seems that the victory of the restaurant reached all the way to the Supreme Court. Ultimately, the high court held that the restaurant could keep its name and that there is no trademark infringement here.
The court said there was little chance that people would think that the restaurant was linked to Mattel’s Barbie dolls. It further explained that trademark protection will depend on whether the average customer would be confused or not.
Since the two businesses were so different, the court found that there was no confusion.
The passing‑off of prescription drugs
Between two pharmaceutical companies, the chances of trademark infringement are too high, especially when two companies produce the same drugs. A clear-cut case is Ciba-Geigy Canada Ltd. v. Apotex Inc., [1992] 3 SCR 120.
Since 1977, Ciba-Geigy has been making metoprolol tablets and had a registered trade name under “Lopresor.” On the other hand, Apotex started selling a similar medicine with packaging that Ciba-Geigy claims to be too close to its own.
With Ciba-Geigy being worried that patients and pharmacists would mix up the two products, it filed cases against Apotex for passing off its products. It argued that its get-up (or how it looks) would confuse not only the medical professionals, but also the public.
There can only be one metoprolol
The Supreme Court agrees with Ciba-Geigy. It ruled that proof of secondary meaning and of misrepresentation is not only limited to the patients who use the drug, but also to physicians, dentists and pharmacists.
How can lawyers help when it comes to trademark infringement?
Whether in preventing or addressing infringement, trademark and IP lawyers can help you in many ways:
Legal steps to take against trademark infringement in Canada
As an owner of a trademark or trade name, you can enforce your rights in case of infringement by:
- gathering evidence that infringement has occurred
- notifying the infringer in writing and demanding they stop using your trademark
- engaging in negotiations or alternative dispute resolution
- filing a claim for an injunction and/or damages against the infringer
If you think that your trademarked goods and services have been infringed, you must act quickly, or your right to file a suit may be barred by limitation periods. For a faster evaluation of one’s case, reach out immediately to an intellectual property lawyer.
Defenses in trademark infringement disputes
On the other hand, if you’re on the receiving end of a trademark infringement case, an IP lawyer can also help defend your case. Whether it’s in or out of the court, here are some defenses in an infringement case:
- that there is no confusion between the two products
- that the mark or name of the other party is not distinctive
- proving you’re the first user of the mark or name in good faith
Best practices for protecting clients from trademark infringement
There are many ways a lawyer can help aside from filing cases against or defending clients when it comes to trademark infringement. One is to ensure that clients are well-protected against IP violations, all within the boundaries of Canadian IP laws.
Here are some best practices for IP lawyers to protect clients against infringement:
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register the trademark or tradename: the first line of protection is to register trademarks for goods and services with the CIPO
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monitor the marketplace: regularly check any illegal use of your trademark or trade name, both online and offline
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create internal policies: maintain proof of trademark use (e.g., sales, advertising, and product samples), and educate staff and partners
Trademark infringement: Protecting your brand and business
Infringement can cause serious harm to a company, big or small. Acting early and reaching out to the best lawyers in this field can help stop problems before they even start. In all of these, a trusted IP lawyer can guide you through the process and help you understand your rights.
Don’t wait until a dispute gets out of hand; the right advice can save time, money, and your reputation. With the right legal support, your business can focus on what it does best, under its protected mark or registered brand.
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