o!an identifiable feature that is used by a person for the purpose of distinguishing his goods or services
from those of others
o!a special type of trademark used to identify goods or services that conform to a particular
o!the owner of the mark may register it or license its use to other persons whose goods, services, or
business meet the defined standards.
o!the shaping of goods or their containers, or a distinctive mode of wrapping or packaging.
The Tort of Passing-off
o!The common law protects a trademark owner through the tort of passing-off. A person commits the tort of
passing-off when he misrepresents goods, services, or a business in such a way as to deceive the public into
believing that those things are the goods, services, or business of some other person, thereby causing
damage to the latter. The main purpose of a passing-off action is to protect the trademark owner from the
sale of counterfeit goods, which is actually theft of goodwill.
o!the benefit and advantage of the good name, reputation, and connections of a business.
Requirements / Elements of Passing-off
1.!The plaintiff’s goods, services, or business must enjoy a reputation that is of some value worth protecting.
2.!The defendant must have misrepresented its goods, service, or business as those of the plaintiff.
3.!There must either be actual confusion or a likelihood of confusion in the public’s mind between the
goods, services, or business of the plaintiff and those produced or licensed by the defendant.
4.!The plaintiff must suffer or be likely to suffer damage in consequence of the passing-off.
Rights Obtained by Registration
o!Section 19 of the Act gives the owner of a valid registered trademark the exclusive right to its use throughout
Canada in respect of the goods and services for which it was registered.
o!No unauthorized person may then sell, distribute, or advertise any goods or services in association with a
confusing trademark or trade name, or otherwise use the mark in a manner that is likely to have the effect of
depreciating the value of the goodwill attached to it.
o!Registration provides a complete defence to a passing-off action. If another person claims that he had
already been using the mark, or a deceptively similar mark, before the registration, his only recourse is to
attack the validity of the registration.
o!If, after a trademark has been registered, it is discovered that some other person had been using a similar
trademark before the registered owner first used it, the first user may bring proceedings to have the
registration “expunged”—that is, removed.
o!The remedies that either court may grant are almost the same. If there is injury to the goodwill of the owner,
then damages may be awarded.
o!If the defendant has profited from the infringement, an account of profits may be ordered.
o!The defendant may be restrained from further infringement by an injunction and may be required to deliver
up or dispose of infringing materials.