Canadian trademark law

This doctrine recognizes that trademarks law is not intended to prevent the competitive use of utilitarian features of products, but that it fulfills a source-distinguishing function.

In Ciba-Geigy,[7] the Supreme Court of Canada held that trademark infringement had occurred when the size, shape, and colour of Metoprolol tablets (used to treat hypertension) were mimicked by two competitors with comparable products.

[9] Trademark law appears to be divided in two types of purposes: The Supreme Court of Canada has emasized that the tort of passing off was intended to protect the property right that plaintiffs had in the goodwill of their business.

[12] Where a company has adopted a business name that is the same or very similar to that of a competitor, a key consideration is the potential for customers to become confused.

[14] According to the Supreme Court of the United States, trademarks are very different from patents and copyrights to the extent that they require "no fancy or imagination, no genius, no laborious thought".

[16] Unlike other branches of intellectual property law, protection of trademarks does not necessarily arise from any act of creativity.

For unregistered trademarks, the common law tort of passing off is the primary means by which producers can obtain remedies against a competitor.

For a successful action in passing off the claimant must show three things: A mark must be registrable in order to be fully protected under the Trademarks Act.

On June 17, 2019, amendments to section 46 of the Trademarks Act reduced this validity period to ten years for all future registrations and renewals.

The renewable nature of trademark registrations makes it the only form of intellectual property with statutory protections that do not definitively expire.

In addition, when a generic product is legally sold by a number of distributors, it is not generally possible for one manufacturer to claim exclusive trademark protection.

Section 38 of the Act requires opponents to provide detailed specifications of the grounds for opposition, such that the applicant has a fair opportunity to rebut the allegations and meet their onus of satisfying the registrar that registration is warranted.

Registration is costly; however, once the trademark is registered, proving an infringement is easier and therefore possibly less expensive than a common law passing-off action.

The rationales behind the two notions also differ: passing off merely protects the disruption of economic relations by misrepresentation, while registration actually sees marks as commodities.

[22] Other differences exist:[23] Relying on the common law action of passing off is still useful when a symbol cannot be registered or when registration is invalid.

Moreover, its flexibility makes it more adequate than the concept of infringement provided by the Act for situations that are not covered by the legislation, for instance misleading practices on the Internet.

This eventually reduces search costs for customers by simplifying the decision-making process and facilitating exchanges between the seller and the consumers.

[29] In this context, trademarks fulfill a trust function to the extent that they provide a more reliable market for consumers, who can't immediately tell if credence goods are trustworthy or not.