Trademark Usage: Protecting your Trademark Rights by Proper Use of a Registered, or Unregistered Mark

You've just gone through the sometimes lengthy and complicated process of application, office actions from the Examiner, responses, advertisement, and maybe even opposition, and now you are the proud owner of a new trade-mark. But your IP (intellectual property) lawyer starts talking about "use", as if things are just getting started.

Well, actually, they are.

You've obtained registration of your trade-mark, which was a big hurdle, but now you have to actually use it. This may seem like an unnecessary thing to point out, especially after jumping through the hoops to get the registration. "After all this time and money, you think I won't use it?" Nevertheless, non-use turns out to be one of the most significant methods for expunging trade-mark registrations. A trade-mark registration is not like a patent registration, where you can simply obtain the protection and, so long as payments are made, do absolutely nothing for the length of the registration. Trade-marks are obtained through use ... and they must be maintained through use.

When the government grants a trade-mark registration, it is granting a limited monopoly over the word, phrase or design. This grant protects your business reputation, but it also protects the public. On your end of the bargain, there are some responsibilities. First and foremost, there is the necessity of using the mark.

If you think about it for a moment, it makes sense. What did you have to prove in order to get the registration? Use. So what should you have to continue in order to maintain it? Use. The trade-mark protection is put in place so that the mark you use in association with your "wares" (product) or services cannot be misappropriated by anyone else. The main idea behind this is the protection of consumers who might unwittingly be drawn into the purchase of one person or company's product while thinking that it was actually that of another. You get a benefit, as well, since you've likely built up a reputation around the mark, or plan to, and a very important business asset can therefore be guarded.

So the story isn't over when you receive the registration certificate. Now you must use the mark. But what constitutes "use"?

What Counts as "Use"?

Since trade-marks exist in order to identify the source of a product or service, the "use" obviously has to demonstrate that connection. But it's not always as easy as it sounds. For example, you'd think that advertising your product would amount to use of your trade-mark. What could be more clearly connected to your product than the advertisement that discusses the product and draws the customer in to purchase it? But, in fact, the courts and the Trade-marks Office have consistently affirmed that this is not "use"!

And that's not all. Requirements for "use" vary from country to country, and you may find yourself without the use necessary for maintaining your foreign registration even though you've met the Canadian requirements.

Contacting an IP professional is a good step to take if you've got any questions about whether what you're doing amounts to "use", but this article offers a brief introduction to the issues and problems so that you'll be aware of what to watch out for.


TRADE-MARK USE IN CANADA

The Trade-marks Act

The English common law was the origin of the use requirement, and common law rights are acquired through "use" in a non-technical sense. But The Trade-marks Act is the foundation for understanding what is meant by the word "use" today, and the language can be highly technical. Section 4 of the Act sets out the basics:

4. (1) When deemed to be used. - A trade-mark is deemed to be used in association with wares if, at the time of the transfer of the property in or possession of the wares, in the normal course of trade, it is marked on the wares themselves or on the packages in which they are distributed or it is in any other manner so associated with the wares that notice of the association
is then given to the person to whom the property or possession is transferred.

4. (2) Idem. - A trade-mark is deemed to be used in association with services if it is used or displayed in the performance or advertising of those services.

4. (3) Use by export. - A trade-mark that is marked in Canada on wares or on the packages in which they are contained is, when the wares are exported from Canada, deemed to be used in Canada in association with those wares.

All right, that's the technical part. Here's what the language really means ...


Section 4(1) and "Use" in Association With Wares

This is a fairly brief section, but there's a lot packed into it. The first thing to note is that this part only relates to "wares", or products, not to services. Services are covered by section 4(2), which we'll come to in a moment. The second thing to note is that we're talking about trade-marks, not trade names or corporate names or designs that won't distinguish this as your product. It must be a trade-mark, intended to distinguish and actually distinguishing your product from that of anyone else.

Next, the use must take place when the "property in or possession of" the product passes to the recipient, normally the purchaser. This would happen when the product is purchased from the retailer, for example. Also, the transaction must take place "in the normal course of trade," so some sort of business transaction has to take place, and, again, a simple purchase of goods
is one example.

The remainder of the passage deals with marking and the association it is to create in the recipient's mind. Basically, the passage states that, at the time already mentioned above, a trade-mark must be marked on the product or its packaging, or it must be in some other way associated with the product such that the recipient would know that the mark is referring to that product. This has been fleshed out by the courts and the Trade-marks Office, to which we'll return later.


Section 4(2) and "Use" in Association With Services

You might expect that the rules would be the same for products as for services, but they're not. In fact, the rules are far more strict for "wares" - advertising can even, in some cases, provide a sufficient means for using a trade-mark in association with services. For example, a television commercial would provide adequate "use" for services, but not for products!

All that is required of services, according to the Act, is that the mark be used or even just displayed in either the performance or advertising of those services. This is far broader than the requirements for products, but then the nature of a product is such that it is easier to affix a mark to. It's easy to affix a mark to a box of nails, but what if we're talking about marriage counseling services?


Section 4(3) and Use by Export

This is a trickier area, and one that has required considerable court and Trade-marks Office interpretation. This passage refers to products - not services - that are exported from Canada. Basically, since the product is not really being "used" in Canada but rather in another country, it sets up the requirements for finding that the product is deemed to have been used in Canada. This affords protection to a mark registered and used in Canada from those products that are produced in Canada and use, say, a confusingly similar mark that could become known in Canada (in spite of being exported) or confuse consumers in the other jurisdiction. Again, the potential for consumer confusion is the key to understanding these provisions.

That covers most of what the Act has to say about "use", but we need to look to the interpretations of these provisions to get a clearer picture of just what "use" may be required of the mark owner in specific situations.


Interpretation by the Trade-marks Office and the Courts

A vast assortment of cases and board decisions have interpreted this one section of the Act, so this portion of the article will attempt to condense this material and present it in a helpful manner.


The Form of the Mark

As anyone involved in a business knows, sometimes you like to try a few variations on your logo, or change it slightly, say, on your product packaging. However, for the trade-mark owner this is risky and needs to be done very carefully in order to count as "use". In the Burroughs case,¹ there was a "family" of marks covering the products of the manufacturer, and all had a
common suffix, "SPORIN". The word "SPORIN" was also registered as a trade-mark, but this was successfully challenged in this case. SPORIN had not been used on its own to distinguish the owner's wares, and its use with various prefixes, such as "NEO" and "POLY", didn't constitute "use" of SPORIN as a trade-mark. The Court held that the word SPORIN identified the manufacturer, not the wares. So if you're going to use a family of marks and would like to protect the common component, the lesson here is to use that component alone with respect to wares or services.

The Court offered some assistance on what deviation from the registered mark will be allowed, in the Alibi Roadhouse case,² where they stated that the particular facts of each case would determine whether there was "use", but that "the deviation [from the registered mark] shall not be such as to cause an injury or deception to anyone." Again, the consumer is the focus, and the Court is trying to make sure the public is not harmed in any way by the variance of a mark.

The Court will try to recognize legitimate variations, but they keep a tight rein. The use of the mark in various forms and variations resulted in a finding of non-use in the Abruzzese case out of Quebec,³ but slight variations will likely be acceptable. In the Dairy Co-operative decision,⁴ the Trade-marks Office (TMO) held that a variation was fine, since it was "not substantially different" from the registered mark and wouldn't deceive or injure the public. The TMO also helpfully pointed out that variations can reasonably be expected in the business world.

The Court has also brought in another practical consideration - the differences in material that you're trying to affix a mark to. In the Promafil case,⁵ "small and unimportant differences" were held to be acceptable considering the various materials being used for the wares, "provided that the continuing commercial impression remains the same." This brings the whole topic into focus: so long as you're acting reasonably and using variant marks that are only slightly different than the registered form, the consumers will not be confused and the Court will probably be happy.


Combinations of Marks

On a related topic, there are restrictions on how marks can be combined with other marks and trade names. While the Act says nothing about mark combinations, there has been a bit of Court and TMO interpretation. The consumer focus is again evident, as can be seen in the Compagnie Internationale case,⁶ where the Court stated that mark combination is not a
problem so long as it doesn't mislead the public regarding the source of the wares.

Sometimes, the trade-mark is part of the owner's corporate name. In such a situation, as in the Road Runner case,⁷ the trade-mark must be prominent relative to the rest of the corporate name in order to constitute "use" of the mark. And the mark must not only be prominent but clearly distinguishable, according to the Johann Becker case.⁸


Use in the "Normal Course of Trade"

This phrase is very important, and many cases have turned on its meaning. In Molson Companies Ltd. v. Halter,⁹ the Court defined it as follows: "... there must be a normal commercial transaction in which the owner of the trade mark completes a contract in which a customer orders from the owner the trade mark wares bearing the trade mark, [and the] wares are delivered by the owner of the trade mark pursuant [to the contract]." The cases have played with this a bit, as in the Bradale case where the Court affirmed that the transfer of wares need
not be for money,¹⁰ but in essence this is where the definition stands. So, for example, charitable donations¹¹ and samples¹² have been refused as "use" of a trade-mark. The "normal course of trade" is decided on a case by case basis, looking to such factors as the nature of the industry, and a single sale may or may not amount to use in the normal course of trade. Seasonal sales may even constitute use, so long as this is "normal" for that business.

This issue becomes very important when we're talking about exports, as at least part of the trade is taking place outside Canada, and "use" must be shown within Canada for either the maintenance or infringement of a mark. However, in the Manhattan Industries case,¹³ the Court held that there was "use" in Canada as long as any part of the chain of trade took place in
Canada. So, for example, there would be "use" if the consumer purchased the wares in Canada even if the manufacturer sold the wares to the retailer in the U.S.

However, under section 4(3) which governs export of goods from Canada, the Court has held in Molson Companies Ltd. v. Moosehead Breweries Ltd. et al.¹⁴ that the "normal course of trade" restriction from section 4(1) does not apply to section 4(3). This would mean that, in the case of a product exported from Canada, all you would have to prove is "use" of the mark on the shipping packaging, for example, at the time of exporting.


Use on Packaging

Speaking of packaging, there are a number of decisions that have been made regarding this, as well. A mark used on packaging can constitute "use" even if it doesn't appear prominently on the packaging, and even if there are other marks and the trade-name in close proximity, according to the Kavanagh decision.¹⁵ Consumer confusion would obviously still be an important
factor to consider, though. And, as the Anheuser-Busch decision¹⁶ demonstrates, using the mark in a secondary fashion at the bottom edge of a package's end panels certainly won't make your mark known to any significant extent.

But the packaging that can be the medium isn't restricted to, for example, the box. Even the packing tape can serve as the housing for the mark, according to the Labatt case.¹⁷ So long as the mark is visible and distinguishable, there should be "use".


Use on Wares Other Than Those Covered by the Registration

A registration does not confer on its owner the unlimited use of the mark with its products. You are limited to the wares or services listed on the registration, and the Courts and TMO are quite unforgiving if you step outside the bounds.

A good example is the Body Shop decision,¹⁸ where Body Shop tried to stop another company from using the mark BODY COMPANY on clothing on the grounds that Body Shop was already putting its own similar mark on t-shirts and sweatshirts. These wares were sold in their stores, but the registration didn't cover clothing. They were only promotional items and not a natural extension of the wares covered by the registration, so this didn't constitute "use".


Comparative Advertising and "Use" of A Rival's Mark

This is an area that's a bit messy at the moment, and if you are considering using a competitor's mark for the sake of comparison you should definitely contact an IP professional. It's also different from the preceding topics in that the focus is on infringement of your trade-mark by another party, so the relevant sections are 19, 20 and 22, rather than just section 4.

The primary case right now is Clairol, a 1968 decision of the Exchequer Court.¹⁹ In Clairol, the alleged infringer of Clairol's trade-marks had used them both on its packaging and in a brochure in the form of a color comparison chart. In this case one of the relevant sections of the Act was section 19, which grants exclusive rights to the owner to use the mark. The Court said that simple use was not enough to prove section 19 infringement -- which is judicial interpretation and not found in the section itself -- but that the mark must have been used for the purpose of distinguishing the infringer's own product, so there was no infringement on that ground. Another section the Court addressed was section 22, which speaks to the situation where someone else's use of your mark depreciates the goodwill you've built up around that mark.²⁰ Goodwill has been defined as "the benefit and advantage of the good name, reputation, and connection of a business. It is the attractive force which brings in custom."²¹ The Court held that the use of a rival's trade-mark as a means of taking business away from them amounted to depreciation of goodwill, so there was infringement on this ground (but only with regards to the packaging, as the brochures were not in association with the wares). The Court recognized the reasonableness of legitimate comparisons or criticisms, but this was not such a case.

One result of this case is that there are now two different definitions of "use" for sections 19 and 22! In section 19 "use" requires that this be done in order to distinguish the infringer's wares, but section 22 "use" only requires a use that would result in depreciation of goodwill. But the mess didn't stop with Clairol.

In the Eye Masters case,²² an odd distinction (grounded in Clairol) is set up between wares and services, where comparative advertising was found to be a violation in the case of services but couldn't be with respect to wares! The Court itself recognized that this produced a "bizarre" result but felt compelled to decide the issue in this manner. Also, this action was only for an interim order before going to trial, and Courts are often more open to an uncomfortable outcome than they would be in the final decision on the matter.

Almost two years later, the point came up again, this time in the Future Shop case.²³ Again, this was an interim order proceeding, but the discussion of comparative advertising was strong. The Court found that the wares/services distinction was not supported by Clairol, thereby getting around the Eye Masters decision, but leaving open the question of services and Clairol. The Court also helpfully put things in perspective by stating that comparative advertising that stresses the differences between the wares does not affect the rival's goodwill in the same way as it would if it stressed the similarities. Section 22 would not be a problem if you're actually trying to distance yourself from the other's product.

In the end, Clairol will probably still be the backbone of interpretation relating to wares, but services are an open question. And to think that this likely could have been avoided if Clairol had simply used one definition of "use"!


Use and Services

Generally, the situation with respect to services isn't as confusing as it is within the realm of comparative advertising. There is no definition of "services" in the Act, nor is there for "performance", and there was no general legal protection before trade-mark legislation came into effect, so the interpretation has been left to the Courts and the TMO, who have kept things relatively simple.

In the Kraft case,²⁴ the Court states that "services" includes even services which are incidental and ancillary to the sale of goods. However, the Court goes on to say that some "services" are really just part of the sale of wares and therefore will not be considered separately. In the end, the lack of harm to consumers may have won the day. The consumer focus was again stressed in the Carling decision,²⁵ where a benefit to the public was set up as a requirement for a "service".

A quick glance at section 4(2) would seem to support the belief that all you have to do is advertise in order to accrue "use", but that's not the case. In the Cornerstone Securities case,²⁶ the Court held that mere advertising would not constitute "use" unless there were also actual performance of the services.

A further complication arises, as always, in the case of services provided by someone in a foreign jurisdiction, like the U.S. In the Porter case,²⁷ mere advertising in Canada with the actual services provided elsewhere did not constitute "use". Even the sale in Canada of entrance vouchers to a U.S. service was rejected as "use", since the services would still be performed in the
U.S.²⁸ And, in the Motel 6 case,²⁹ booking hotel reservations for a stay in the U.S. did not constitute use in Canada, since there were no business facilities in Canada.


Manufacturers and Distributors

The relationship between manufacturer and distributor is one that complicates things a bit, since the manufacturer who normally owns the mark and affixes it to the wares is often not the one who sells it to the retailer or ultimate consumer. Such a situation obviously requires a special set of rules to protect the legitimate interests of the manufacturer.

The Royal Doulton case³⁰ stands as authority for the proposition that, since the manufacturer produces the wares and affixes the mark to them while the distributor merely distributes the wares, the "use" accrues to the manufacturer and its mark in the manner contemplated by s.4 of the Act. This approach is affirmed when one looks to the Argenti case,³¹ where importers and distributors are both placed in the role of agent for the manufacturer in terms of mark "use". The Fennessy case³² puts it quite well: "The question is not who is using the mark but rather whose mark is being used? As long as the wares emanate from the owner, the mark is being used in Canada by the owner, even if no direct sales are made by him."

However, the manufacturer still needs to be careful, as the mark could possibly come to be distinctive of the distributor,³³ and then the protection would be lost. The manufacturer needs to make more than token use of the mark,³⁴ and allowing the distributor to use the mark in association with others' wares over a period time without complaint can also cost it the registration.³⁵


Miscellany

Various other issues come up from time to time, simple matters with huge consequences. For example, there is the requirement that the use of a trade-mark be continuous,³⁶ and that the use be a lawful one,³⁷ even if there is full compliance with section 4. A trade-mark must be used visually, according to the Playboy case,³⁸ but this may not be strictly so, and infringement certainly isn't limited to visual use.

Also, remember that a trade-mark can only identify one source, so it can't cover your business and two other related companies you're associated with; this brings in issues of trade-mark distinctiveness and the protection of consumers. However, the case law has recognized that there can be collective goodwill in a trade-mark,³⁹ and partnerships clearly have the right to register trade-marks. Joint ownerships and co-ownership structures are more complicated, though. And in the licensing situation, use by a licensee or even a sub-licensee should enure to the licensor/owner so long as the owner maintains direct or indirect control over that use.

If a trade-mark is held in trust, any use will likely enure to the beneficiaries, but this type of situation can get extremely complicated and contextual. There may be a loss of the mark's distinctiveness, so great care must be exercised.

There are many other issues that are only just coming to the fore, such as computer and Internet use of marks, and the wrinkles are still being ironed out there. See, for example, the BMB case,⁴⁰ where the image of a mark constituted use even though it only appeared on the computer screen but was demonstrated to the consumer prior to purchase. A few cases have also
found infringement where the mark was used on the infringer's web site or as their domain name, although these were merely interim proceedings.⁴¹


The General Approach

As you can see, there are a great many factors to consider when assessing whether "use" has taken place and whether it's sufficient for the purpose at hand. This assessment can be a formidable task for you to undertake, and it can even get that way for IP professionals at times. The most important thing to remember, and what lies at the heart of trade-mark protection, is the consumer's welfare. So long as you keep the consumer's best interests at heart, and try to minimize any source confusion that might possibly take place, then that reasonable approach should hold you in good stead. Just from the cases canvassed above, a lack of danger to the consumer has often defused a potentially precarious situation. But then, this is in your best interest, as well; having a mark that makes you stand out from the crowd will only be a benefit to you as you seek to market and sell your wares or services to Canadian consumers and those around the world.

There will always be tricky calls. Does use of your mark on brochures available at the point of sale constitute "use", on grounds of close association? Maybe, but the facts of the specific case will determine the outcome.


TRADE-MARKS IN THE U.S.

While consumer protection is an important part of U.S. trade-mark law, the importance of free competition also has pride of place, receiving a larger emphasis than in Canada. This slightly different balance may be behind some of the differences in the U.S. approach to trade-mark protection. However, a great deal of U.S. trade-mark law is generally equivalent to that in Canada, due to a shared reliance on the English common law and modern international treaties on trade-mark regulation, such as the Paris Convention.

Registration basically requires two things, adoption of a distinctive mark and its use, in order to distinguish the goods. Advertising, again, does not amount to use for goods, but the TMO is more open to non-verbal, non-visual "marks", like sounds and smells. The most important thing to remember about "use" in the U.S. is that it must be "use in commerce".

Pursuant to the Lanham Act (the U.S. equivalent of our Trade-marks Act), Section 1051, there must be "use in commerce" -- not just "use" -- which translates to interstate or foreign commerce, according to Section 1127, as these are the areas that Congress can regulate under its Article I power. This is very different from the Canadian situation, where any legitimate use, even if only local, can form the basis for registration and maintenance of national-scale trade-mark rights, possibly even if the mark is not distinctive in every region of Canada.⁴² However, intrastate commerce is covered if it has an effect on interstate or foreign commerce.

An application must include the date of first use as well as the date of first use in interstate commerce. Continued use of the trade-mark must be proved to renew the registration (Lanham Act, Section 1059); the owner must file a "use" affidavit six years after the registration. Two years of non-use creates a presumption of abandonment.

To establish use for an actual-use application, a "sham" transaction will not be adequate. Prior to 1988, "token" use, such as a single sale, used to be sufficient, though, to obtain registration, so long as it was followed by substantial commercial use, and the use had to be "deliberate and continuous, not sporadic, casual or transitory"⁴³ in order to defend against a charge of
non-use or in the event of a dispute with another mark-user over who used the mark first. The "token use" doctrine was abolished in 1988, with the introduction of an "intent-to-use" application possibility, roughly similar to the Canadian proposed use application.

Affixation of the mark is given a more specific discussion, and includes such things as associated displays and affixed tags. Use on associated documents is also specifically accepted where affixing the mark to the goods is impracticable.

In the U.S., use by controlled companies ensures the benefit of the parent company, according to the Lanham Act, 15 U.S.C. 22, section 1055. In Canada, there must be a license to allow such use.⁴⁴

These are only a few of the differences, small though they usually are. An IP professional will be able to assist you in assessing your particular situation, and will likely have a number of U.S. associates who can offer excellent advice and counsel as they work with you.


THE EUROPEAN APPROACH

There is no single approach that covers all of Europe, and some countries, like France, do not even require use to enable trade-mark rights or registration to be obtained. Having said this, there are some general comments that we can offer you on this matter.

Due to the widespread use of European Community registrations, a set of trade-mark rules has been established that has wide application in Europe. Under those rules, which are very similar to Canadian and U.S. law in many respects, use plays a prominent role.

A registration can be revoked for lack of "genuine use", such use being required to last continuously for five years after registration. Other grounds for revocation are more in line with our own system.

The European Community is, like Canada, not yet a party to the Madrid Protocol, an international treaty that seeks to establish international guidelines for the registration of trade-marks. In this and most other ways, the European system is closely allied to the Canadian trade-mark system. Again, if you have any questions, a call to an IP professional with experience in the European system and a reliable set of foreign associates should be able to answer those questions.


SO WHAT NOW?

Proper use of a trade-mark has many advantages. In addition to helping you obtain registration and maintain it, it can minimize the likelihood that the mark will become a generic term for that type of wares or services, which would render your registration invalid. It also assists you in defending your mark against the "innocent infringers" as well as the more blatant ones. And
proper use is the best, and sometimes the only, shield against a charge of abandonment or non-use.

Knowing what proper use can give you is only half the battle. This article is about the other half -- you need to know what actually constitutes "use". You put a great deal of time, money and effort into obtaining your trade-marks and building up goodwill around them, and now you have some information to help you protect that investment. And as stated above, calling an IP professional to assist in the registration, maintenance and enforcement of your trade-mark rights is the best way to ensure that you won't get caught with some technicality and end up losing on that investment.

Again, always remember the consumer. They are what trade-mark protection is all about. You will obtain the benefit of registration that protects not only your mark but the goodwill attached to it, but you also have the responsibility to ensure that consumers know who you are and what your products are, and you have a role to play in protecting the public from source confusion. Trade-mark protection is give-and-take, and being aware of that simple truth leaves you in a strong and knowledgeable position.

NOTES

¹ Burroughs Wellcome Inc. v. Kirby, Shapiro, Eades & Cohen (1983), 73 C.P.R. (2d) 13 (Federal Court, Trial Division). 

² Alibi Roadhouse Inc. v. Grandma Lee's International Holdings Ltd. (1997), 76 C.P.R. (3d) 327, 136 F.T.R. 66 (Federal Court, Trial Division). 

³ Ass'n de la Famille Abruzzese v. Ass'n de St-Gabriel de l'Adoration, Patron d'Abruzzo, [1983] C.S. 558 (Quebec Superior Court). 

⁴ Dairy Co-operative Ltd. v. Fraser Valley Milk Producers Cooperative Association (1988), 19 C.P.R. (3d) 400 (Trade-marks Office). 

⁵ Promafil Canada Ltée v. Munsingwear Inc. (1992), 44 C.P.R. (3d) 59 (Federal Court of Appeal). 

⁶ Compagnie Internationale pour l'Informatique CII Honeywell Bull, Société Anonyme v. Herridge, Tolmie and Registrar of Trade Marks (1983), 77 C.P.R. (2d) 101, [1983] 2 F.C. 766 (Federal Court, Trial Division). 

⁷ Road Runner Trailer Mfg. Ltd. v. Road Runner Trailer Co. Ltd. (1984), 1 C.P.R. (3d) 443 (Federal Court, Trial Division). 

⁸ Johann Becker Ohg Likorfabrik v. Canada (Registrar of Trade-marks) (1997), 71 C.P.R. (3d) 461 (Federal Court, Trial Division). 

⁹ (1976), 28 C.P.R. (2d) 158 (Federal Court, Trial Division). 

¹⁰ Bradale Distribution Enterprises Inc. v. Safety First Inc. (1987), 18 C.I.P.R. 71 (Quebec Superior Court). 

¹¹ Ports International Ltd. v. Registrar of Trade-marks (1983), 79 C.P.R. (2d) 191 (Federal Court, Trial Division). 

¹² Professional Gardener Co. v. Registrar of Trade-marks (1985), 5 C.P.R. (3d) 568 (Federal Court, Trial Division). See also Adidas (Canada) Ltd. v. Nippon Rubber Co. Ltd. (1977), 28 C.P.R. (2d) 141 (Acting Registrar of Trade Marks). 

¹³ Manhattan Industries Inc. v. Princeton Manufacturing Ltd. (1971), 4 C.P.R. (2d) 6 (Federal Court, Trial Division). Further support for this can be found in Lin Trading Co. v. CBM Kabushiki Kaisha (1989), 20 C.I.P.R. 1 (Federal Court of Appeal). 

¹⁴ (1990), 32 C.P.R. (3d) 363, 36 F.T.R. 241 (Federal Court, Trial Division). 

¹⁵ Re Kavanagh Foods Ltd., [1998] T.M.O.B. No. 41 (Trade Marks Opposition Board). 

¹⁶ Anheuser-Busch Inc. v. Upper Canada Brewing Co. Ltd., [1998] T.M.O.B. No. 210 (Trade Marks Opposition Board). 

¹⁷ Labatt Brewing Co. v. Molson Breweries, A Partnership (1996), 68 C.P.R. (3d) 216, 113 F.T.R. 13 (Federal Court, Trial Division). 

¹⁸ Body Shop International PLC v. K Mart Canada Ltd., [1992] T.M.O.B. No. 451 (Trade Marks Opposition Board). 

¹⁹ Clairol International Corp. v. Thomas Supply & Equipment Co. Ltd. (1968), 55 C.P.R. 176 (Exchequer Court). 

²⁰ Note that your trade name or corporate name can house the goodwill associated with your business, but a trade-mark is for the goodwill associated with your wares or services. That's the distinction. 

²¹ Inland Revenue Commissioners v. Muller & Co.'s Margarine Ltd., [1901] A.C. 217 (English House of Lords). 

²² Eye Masters Ltd. v. Ross King Holdings Ltd. (c.o.b. Shopper's Optical), [1992] F.C.J. No. 815 (Federal Court, Trial Division). 

²³ Future Shop Ltd. et al. v. A. & B. Sound Ltd. et al. (1994), 55 C.P.R. (3d) 182 (British Columbia Supreme Court). 

²⁴ Kraft Ltd. v. Registrar of Trade Marks (1984), 1 C.P.R. (3d) 457 (Federal Court, Trial Division). 

²⁵ Carling O'Keefe Breweries of Canada Ltd. - Les Brasseries Carling O'Keefe du Canada Ltée Trading as Carling O'Keefe Breweries v. Anheuser-Busch, Inc. (1985), 4 C.P.R. (3d) 216 (Hearing Officer, Trade Marks). 

²⁶ Cornerstone Securities Canada Inc. v. Registrar of Trade Marks (1994), 58 C.P.R. (3d) 417 (Federal Court, Trial Division). 

²⁷ Porter v. Don the Beachcomber (1966), 48 C.P.R. 280, 33 Fox Pat. C. 79 (Exchequer Court). 

²⁸ Marineland Inc. v. Marine Wonderland and Animal Park Ltd. (1974), 16 C.P.R. (2d) 97 (Federal Court, Trial Division). 

²⁹ Motel 6, Inc. v. No. 6 Motel Ltd. (1981), 56 C.P.R. (2d) 44 (Federal Court, Trial Division). 

³⁰ Royal Doulton Tableware Ltd. v. Cassidy's Ltd. - Cassidy's Ltée (1984), 1 C.P.R. (3d) 214 (Federal Court, Trial Division). See also All Canada Vac Ltd. v. Lindsay Manufacturing Inc. (1990), 32 F.T.R. 259 (Federal Court, Trial Division). 

³¹ Argenti Inc. v. Exode Importations Inc. (1984), 8 C.P.R. (3d) 174 (Federal Court, Trial Division). 

³² P. Michael Fennessy v. Verb Investments Inc. (1993), 67 F.T.R. 319 (Federal Court, Trial Division). 

³³ Havana House Cigar & Tobacco Merchants Ltd. v. Skyway Cigar Store (1998), 81 C.P.R. (3d) 203, 147 F.T.R. 54 (Federal Court, Trial Division). 

³⁴ Sequa Chemicals Inc. v. United Color & Chemical Ltd. (1993), 53 C.P.R. (3d) 216 (Federal Court of Appeal). 

³⁵ White Consolidated Industries Inc. v. Beam of Canada Inc. (1991), 39 C.P.R. (3d) 94 (Federal Court, Trial Division). 

³⁶ Labatt Brewing Co. v. Benson & Hedges (Canada) Ltd. (1996), 67 C.P.R. (3d) 258 (Federal Court, Trial Division). 

³⁷ McCabe v. Yamamoto and Co. (America) Inc. et al. (1989), 23 C.P.R. (3d) 498 (Federal Court, Trial Division). 

³⁸ Playboy Enterprises Inc. v. Germain (1987), C.P.R. (3d) 517 (Federal Court, Trial Division). 

³⁹ Institut National des Appellations d'origine des vins et eaux-de-vie v. Andres Wines Ltd. (1990), 30 C.P.R. (3d) 279 (Ontario Court of Appeal); leave to appeal to the Supreme Court of Canada was refused. 

⁴⁰ BMB Compuscience Canada Ltd. v. Bramalea Ltd., [1989] 1 F.C. 362 (Federal Court, Trial Division). 

⁴¹ See, for example, Tele-Direct (Publications) Inc. v. Canadaian Business Online Inc. et al. (1997), 77 C.P.R. (3d) 23 (Federal Court, Trial Division); Bell Actimedia Inc. v. Puzo (Communications Globe Tête), [1999] F.C.J. No. 683 (Federal Court, Trial Division). 

⁴² Great Lakes Hotels v. Noshery Ltd. (1968), 56 C.P.R. 165 (Exchequer Court). 

⁴³ La Société Anonyme des Parfums Le Galion v. Patou Inc., 495 F.2d 1265, 181 USPQ 545 (2d Circuit 1974). 

⁴⁴ Trade-marks Act, section 50(1).

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