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Marginal note:When mark or name confusing

• 6 (1) For the purposes of this Act, a trademark or trade name is confusing with another trademark or trade name if the use of the first mentioned trademark or trade name would cause confusion with the last mentioned trademark or trade name in the manner and circumstances described in this section.

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• Marginal note:Confusion — trademark with trade name

  (3) The use of a trademark causes confusion with a trade name if the use of both the trademark and trade name in the same area would be likely to lead to the inference that the goods or services associated with the trademark and those associated with the business carried on under the trade name are manufactured, sold, leased, hired or performed by the same person, whether or not the goods or services are of the same general class or appear in the same class of the Nice Classification.

• Marginal note:Confusion — trade name with trademark

  (4) The use of a trade name causes confusion with a trademark if the use of both the trade name and trademark in the same area would be likely to lead to the inference that the goods or services associated with the business carried on under the trade name and those associated with the trademark are manufactured, sold, leased, hired or performed by the same person, whether or not the goods or services are of the same general class or appear in the same class of the Nice Classification.

• Marginal note:What to be considered

  (5) In determining whether trademarks or trade names are confusing, the court or the Registrar, as the case may be, shall have regard to all the surrounding circumstances including

  • (a) the inherent distinctiveness of the trademarks or trade names and the extent to which they have become known;

  • (b) the length of time the trademarks or trade names have been in use;

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  • (d) the nature of the trade; and

  • (e) the degree of resemblance between the trademarks or trade names, including in appearance or sound or in the ideas suggested by them.

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Marginal note:Infringement

• 20 (1) The right of the owner of a registered trademark to its exclusive use is deemed to be infringed by any person who is not entitled to its use under this Act and who

  • (a) sells, distributes or advertises any goods or services in association with a confusing trademark or trade name;

  • (b) manufactures, causes to be manufactured, possesses, imports, exports or attempts to export any goods in association with a confusing trademark or trade name, for the purpose of their sale or distribution;

  • (c) sells, offers for sale or distributes any label or packaging, in any form, bearing a trademark or trade name, if

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    • (ii) the sale, distribution or advertisement of the goods or services in association with the label or packaging would be a sale, distribution or advertisement in association with a confusing trademark or trade name; or

  • (d) manufactures, causes to be manufactured, possesses, imports, exports or attempts to export any label or packaging, in any form, bearing a trademark or trade name, for the purpose of its sale or distribution or for the purpose of the sale, distribution or advertisement of goods or services in association with it, if

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    • (ii) the sale, distribution or advertisement of the goods or services in association with the label or packaging would be a sale, distribution or advertisement in association with a confusing trademark or trade name.

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• (1.1) The registration of a trademark does not prevent a person from making, in a manner that is not likely to have the effect of depreciating the value of the goodwill attaching to the trademark,

  • (a) any bona fide use of his or her personal name as a trade name; or

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2 In this Act,

confusing

confusing , when applied as an adjective to a trademark or trade name, means, except in sections 11.13 and 11.21, a trademark or trade name the use of which would cause confusion in the manner and circumstances described in section 6; (créant de la confusion)

person

person  includes any lawful trade union and any lawful association engaged in trade or business or the promotion thereof, and the administrative authority of any country, state, province, municipality or other organized administrative area; (personne)

trade name

trade name  means the name under which any business is carried on, whether or not it is the name of a corporation, a partnership or an individual; (nom commercial)

WTO Agreement

WTO Agreement  has the meaning given to the word Agreement by subsection 2(1) of the World Trade Organization Agreement Implementation Act; (Accord sur l’OMC)

WTO Member

WTO Member  means a Member of the World Trade Organization established by Article I of the WTO Agreement. (membre de l’OMC)

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Marginal note:Use of trademark or trade name before April 1, 1949

68 For the purposes of this Act, the use or making known of a trademark or the use of a trade name in Newfoundland before April 1, 1949 shall not be deemed to be a use or making known of such trademark or a use of such trade name in Canada before that date.

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Marginal note:Concurrent use of confusing marks

• 21 (1) If, in any proceedings respecting a registered trademark the registration of which is entitled to the protection of subsection 17(2), it is made to appear to the Federal Court that one of the parties to the proceedings, other than the registered owner of the trademark, had in good faith used a confusing trademark or trade name in Canada before the filing date of the application for that registration, and the Court considers that it is not contrary to the public interest that the continued use of the confusing trademark or trade name should be permitted in a defined territorial area concurrently with the use of the registered trademark, the Court may, subject to any terms that it considers just, order that the other party may continue to use the confusing trademark or trade name within that area with an adequate specified distinction from the registered trademark.

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