Canadian Intellectual Property Law and Strategy PDF

Canadian Intellectual Property
Law and Strategy
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Canadian Intellectual Property

Law and Strategy
Trademarks, Copyright, and
Industrial Designs
John S. McKeown
1
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Library of Congress Cataloging-in-Publication Data
McKeown, John S., 1948Canadian intellectual property law and strategy : trademarks, copyright,
and industrial designs / John S. McKeown.
p. cm.
Includes bibliographical references and index.
ISBN 978-0-19-536942-7 (pbk. : alk. paper)
1. Intellectual propertyCanada. I. Title.
KE2779.M353 2010
346.7104'8dc22
_____________________________________________
2009040074
1 2 3 4 5 6 7 8 9
Printed in the United States of America on acid-free paper
Note to Readers
This publication is designed to provide accurate and authoritative information in regard to the subject matter
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Contents
ABOUT THE AUTHOR
xix
AUTHORS NOTE
xxi
CHAPTER 1: Introduction
1. Introduction
2. International Obligations
a) Conventions, Agreements, and Treaties
b) Implementation
3. Trademarks
a) Trade-marks Act
b) Common Law Rights
4. Domain Names
5. Copyright
6. Industrial Designs
CHAPTER 2: Protection of Trademarks in Canada
1. Trademark Legislation in Canada
a) Federal Legislation
b) Provincial Legislation
2. Basic Denitions
a) Trademark
b) Certication Mark
c) Distinctiveness
d) Distinguishing Guise
e) Prohibited Marks
f) Prohibited Designations
g) Protected Geographical Indications for Wines and Spirits
h) Ocial Marks
i) Olympic and Paralympic Marks Act
CHAPTER 3: Registrable Trademarks
1. Characteristics Which May Preclude Registration
2. Primarily Merely a Name or a Surname
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3. Descriptive or Deceptively Misdescriptive Trademarks
a) The First Impression
b) Clearly
c) Deceptively Misdescriptive
d) English or French Language
e) Character or Quality
f) Conditions of or the Persons Employed in Production of Wares
g) Place of Origin
h) Suggestive Words
i) Coined Words
j) Disclaimer
4. Acquired DistinctivenessSecondary Meaning
a) Applicability
b) Evidence Required
c) The Determination
5. Names of Wares or Services
6. Confusing With a Registered Trademark
a) The Statutory Framework
b) Associated Marks
7. Prohibited Marks and Designations
CHAPTER 4: Acquisition of Rights
1. Adoption
2. Making Known
3. Registration and Use in the Applicants Country of Origin
a) Applications
b) Registrability of Marks Registered and Used in a
Country of Origin
4. Use or Proposed Use in Canada
CHAPTER 5: Trademark Use
1. The Importance of Trademark Use
2. Wares
a) At the Time of the Transfer of Property or Possession
b) In the Normal Course of Trade
c) Notice of Association
3. Services
4. Wares Exported from Canada
5. Deviating Use
CHAPTER 6: Entitlement
1.
2.
3.
4.
Entitlement to Registration
Marks That Have Been Used or Made Known in Canada
Marks Registered and Used Abroad
Proposed Use Marks
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Contents vii
CHAPTER 7: Applications
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1.
2.
3.
4.
5.
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Content
Amendment
Examination
Disclaimer
Advertisement
CHAPTER 8: Registration
1.
2.
3.
4.
5.
6.
Allowance
Registration
Marking
Invalidity
Registration of Concurrent Rights
Term of Protection and Renewal
CHAPTER 9: Assignments and Licenses

1. Assignments
a) Scope
b) Eectiveness
c) Distinctiveness
2. License
a) Availability
b) Control
c) Proceedings for Infringement
CHAPTER 10: Expungement
1. Section 45 Proceedings
a) Summary Procedure
b) Evidence
c) Eect of Non-Use
d) The Hearing
e) Appeal
2. Expungement by the Federal Court
a) Jurisdiction
b) Procedure
c) Person Interested
d) Limitations
e) Grounds for Expungement
CHAPTER 11: Confusing Trademarks
1. Introduction
2. Confusing Trademarks
b) Inherent Distinctiveness
c) Duration of Use
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Contents
d)
e)
f)
g)
h)
The Nature of the Wares, Service, or Business

Famous Trademarks
Nature of the Trade
Degree of Resemblance
Other Circumstances
CHAPTER 12: Opposition Proceedings

1. Introduction
2. Statement of Opposition
a) Time for Filing and Extensions
b) Grounds of Opposition
c) The Material Dates
d) Content
e) Counter Statement
f) Amendments
3. Evidence
a) The Framework
b) The Onus of Proof
c) The Nature of the Evidence
4. The Hearing
5. Appeal
CHAPTER 13: Infringement
1. Infringement
a) Statutory Framework
b) The Requirement to Show Use
c) Invalidity
d) Comparison with a Claim for Passing O
e) Grey Market Goods
2. Defenses to an Action for Infringement
a) Invalidity of the Plaintis Registered Trademark
b) Ownership
c) Consent or License
d) Denial of Infringement
e) Plaintis Own Goods
3. Depreciating the Value of the Goodwill Attached to a Trademark
a) Statutory Denitions
b) The Elements Required to Be Shown
CHAPTER 14: Common Law RightsPassing O
1. Passing O
a) The Nature of the Tort
b) Reputation or Goodwill
c) Trade Dress or Get Up
d) Misrepresentation
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Contents ix
e) Damage
f) The Relevant Date
2. Subsection 7(b) and (c) of the Trade-marks Act
3. Defenses
a) The Absence of Reputation or Goodwill
b) Other Defenses
CHAPTER 15: Actions for Infringement and Passing O
1. Jurisdiction
2. Interim Proceedings
a) Proceedings for Interim Custody
b) Proceedings for Detention by Minister
3. Parties
a) Plainti
b) Licensee
c) Defendants
d) Directors and Ocers
4. Pleadings
a) Basic Requirements
b) Particulars
5. Interlocutory Injunctions
a) Purpose
b) The Test for Granting an Interlocutory Injunction
c) A Serious Question to Be Tried
d) Irreparable Harm
e) The Balance of Convenience
6. Anton Piller Orders
a) Purpose
b) Conditions for Granting an Order
c) Safeguards in the Order
7. Discovery
8. Delay and Acquiescence
9. Limitation Period
10. Evidence at Trial
a) Plaintis Ownership in an Action for Infringement
b) Infringement
c) Passing O
11. Remedies
a) The Trade-marks Act
b) Permanent Injunction
c) Prots or Damages
d) Destruction, Exportation or Other Disposition of
Oending Wares
e) Costs
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Contents
CHAPTER 16: Domain Names
1. The Internet
2. Domain Names
a) First Come, First Served
b) gTLD Domain Names
c) .ca Domain Names
d) Trademark Protection
3. Jurisdictional Issues
4. The UDRP
a) History
b) Applicable Disputes
c) Confusingly Similar
d) No Rights or Legitimate Interest
e) Bad Faith
f ) Procedure
5. The CDRP
a) History
d) No Legitimate Interest
e) Bad Faith
f ) Procedure
g) CDRP WHOIS Privacy Policy
6. Actions in the Courts
CHAPTER 17: Copyright: Basic Concepts
1. Introduction
a) Acquisition
b) Originality
c) Fixation
d) Compilations
e) Derivative Works
CHAPTER 18: Literary, Dramatic, Musical, and Artistic Works
1. Introduction
2. Literary Works
a) What Is Protected
b) Computer Programs
c) The Rights Associated with a Literary Work
3. Dramatic Works
b) Cinematographic Works
c) The Rights Associated with a Dramatic Work
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Contents xi
4. Musical Works
b) The Rights Associated with a Musical Work
5. Artistic Works
b) The Rights Associated with an Artistic Work
c) Designs Applied to Useful Articles
CHAPTER 19: Neighboring Rights
1. Introduction
2. Performers Rights
b) Canada and Rome Convention Countries
c) Performers RightsWTO Countries
d) The Right to Equitable Remuneration
3. Sound Recordings
b) The Rights Associated with a Sound Recording
c) The Right to Equitable Remuneration
4. Broadcasters Communication Signal
b) The Rights Associated with a Broadcasters
Communication Signal
CHAPTER 20: Moral Rights
1. What Is Protected
2. The Right to the Integrity of the Work
3. The Right to Be Associated with the Work or to
Remain Anonymous
4. Waiver
5. Term of Protection and Succession
CHAPTER 21: Term of Protection
1.
2.
3.
4.
5.
6.
7.
8.
The General Term of Protection

Anonymous and Pseudonymous Works
Posthumous Works
Works of Joint Authorship
Photographs
Cinematographic Works
Crown Copyright
Performers Performances, Sound Recordings and
Communication Signals
9. Abandonment
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Contents
CHAPTER 22: Ownership of Copyright
1. Authorship
a) The Author Is the Owner
b) The Author
2. Engravings, Photographs, or Portraits
a) Photographs
b) Engravings
c) Portraits
3. Other Commissioned Works
4. Contracts of Service
a) Employment Under a Contract of Service or Apprenticeship
b) In the Course of Employment
c) Absence of Agreement to the Contrary
d) Articles or Other Contributions to a Newspaper,
Magazine, or Similar Periodical
5. Collective Works
6. Compilations
7. Works of Joint Authorship
a) Statutory Denition
b) Collaboration of Two or More Authors
c) The Nature of the Contribution
d) The Nature of Joint Authors Interest
8. Cinematographic Works
9. Performers Performances, Sound Recordings, and
10. Presumptions as to Ownership
CHAPTER 23: Crown Copyright
1. Crown Copyright
a) The Crown
b) Government Departments
c) The Rights Available to the Crown
d) Federal Policy Relating to Crown Copyright
e) Other Rights under the Act
2. Crown Prerogative
3. Crown Immunity
CHAPTER 24: Assignment
1. Assignments
a) The Extent of the Right
b) Partial Assignments
c) The Rights of the Assignor
d) Must Be In Writing
e) Construction
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Contents xiii
f) Transfer of Possession of Physical Things
g) Limitation where the Author Is the First Owner of Copyright
h) Registration of Assignments and Licenses
2. Devolution
3. Bankruptcy
a) The Property of the Bankrupt
b) Licenses
c) Proposals
d) Reversion of Copyright
CHAPTER 25: Licenses
1.
2.
3.
4.
5.
6.
Proprietary Licenses
Ordinary Licenses
Implied Licenses
Assignment
Withdrawal of Consent
Licenses by Operation of Law
CHAPTER 26: Registration and Marking

1.
2.
3.
4.
Registration Is Not Required

Applying for Registration
Rectication of the Register of Copyrights
Eect of Registration
a) Admissibility
b) Evidence
c) Notice of Assignment or License
d) Varying Presumptions
e) Statutory Notice
CHAPTER 27: Direct Infringement

1. The Sole Right
a) The Nature of the Right
b) Intention to Infringe
c) Consent or Licence
2. Authorizing Infringement
a) The Sole Right to Authorize
b) Authorization
c) Infringement by Agents and Employees
CHAPTER 28: Secondary Infringement
1. Secondary Infringement
b) Knowledge of Infringement
c) Importation of Infringing Works
d) Sale or Rental of Infringing Works
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Contents
e) Distribution to the Prejudice of the Copyright Owner
f) By Way of Trade Distribute, Expose, or Oer for Sale or
Rental, or Exhibit in Public
g) Possession of Infringing Works
h) Possession of Plates Specically Designed for the
Purpose of Making Infringing Copies
2. Permitting Infringing Performances in Theatres
3. Parallel Importation of Books
a) Exclusive Distributor
b) The Nature of the Exclusive Distributors Rights
CHAPTER 29: Exceptions
1. Application
2. Fair Dealing
a) The Excepted Activities
b) The Meaning of Fair Dealing
c) Fair Dealing for the Purpose of Research or Private Study
d) Fair Dealing for the Purpose of Criticism or Review
e) Fair Dealing for the Purpose of News Reporting
3. Educational Institutions
a) Denition of Educational Institution
b) The Excepted Activities
c) Literary Collections
4. Libraries, Archives, and Museums
a) Denitions
5. Machines Installed in Educational Institutions, Libraries,
Archives, and Museums
6. Computer Programs
7. The Incidental Inclusion of a Work in Another Work
8. Ephemeral Recordings
9. Pre-Recorded Recordings
10. Retransmission
11. Persons with Perceptual Disabilities
12. Statutory Obligations
13. Miscellaneous Exceptions
a) Artistic Works
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Contents xv
b) Architectural Works, and Sculptures or Works of Artistic
Craftsmanship Situated in Public Places
c) Newspaper Report of Public Lecture
d) Public Recitation of Extracts
e) Report of an Address of a Political Nature Given at a
Public Meeting
f) Performance at any Agricultural or Agricultural-Industrial
Exhibition or Fair
g) Performance by Religious, Educational, Charitable,
or Fraternal Bodies
h) Equitable Remuneration
i) Library and Archives of Canada
CHAPTER 30: Actions for Infringement of Copyright
1. Jurisdiction
2. Seizure of Imported Copies
a) Section 44
b) Sections 44.144.3
c) Exceptions
3. Parties to Actions in the Courts
a) The Owner of Copyright
b) The Author
c) Persons Deriving Rights from the Owner
f) Defendants
4. Pleadings
a) Notice of Claim
b) Statement of Claim
c) Statement of Defense
d) Particulars
7. Summary Applications
8. Discovery
9. Limitation Period for Civil Remedies
a) Presumptions
b) Certicate of Registration as Evidence
c) Circumstantial Evidence
d) Expert Evidence
11. Remedies
a) Permanent Injunction
b) Possession of Infringing Copies
c) Declaratory Relief
d) Damages
e) Account of Prots
f) Statutory Damages
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xvi Contents
g) Delivery Up
h) Costs
CHAPTER 31: Criminal Remedies
1. Criminal Proceedings
2. Section 42 Oences
a) Section 42(1)
b) Subsection 42(2)
c) Penalties
a) Performance of a Dramatic or Operatic Work or
Musical Work
b) Change or Suppression of Title or Authors Name
4. Criminal Code
CHAPTER 32: Copyright Board and Collective Administration of Rights
1.
2.
3.
4.
5.
6.
7.
8.
9.
10.
The Copyright Board

Jurisdiction
The Powers of the Copyright Board
Collective Administration of Performing Rights and
Communication Rights
a) Background
b) Performing Rights and Communication Rights Societies
c) Equitable Remuneration for Performers and
Makers of Sound Recordings
d) The Eect of Fixing Royalties
e) Radio Performances in Places Other Than Theatres
The General Regime-Collective Administration in
Relation to Rights under Sections 3, 15, 18, and 21
a) Background
b) General Regime Collective Societies
c) Tari or Agreement
d) Filing of Proposed Taris
Examination of Agreements
The Retransmission Regime
a) Background
b) Retransmission Collective Societies
c) Filing of Proposed Taris
d) Claims by Non-Members
Private Copying
Owners of Copyright Who Cannot Be Found
Compensation for Acts Done Before Recognition of Copyright
CHAPTER 33: Industrial Designs

1. Denition of a Design
a) Shape and Conguration
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Contents xvii
2.
3.
4.
5.
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7.
8.
9.
10.
11.
12.
13.
14.
b) Pattern or Ornament
c) Finished Article
d) Appeal to and Judged Solely by the Eye
e) Sets
f) Kits
Industrial Designs and Other Intellectual Property Rights
a) Copyright
b) Patents
c) Trademarks
Originality
Publication
The Proprietor
a) Author
b) Designs Executed for Consideration
Application
a) The Requirements
b) Identifying the Features that Constitute the Design
c) Priority Based on an Application Filed in Another Country
Registration
Marking
Term
Assignment and License
Expungement and Alteration
Infringement
a) The Exclusive Right
b) License
c) The Activities
d) The Article in Respect of which the Design Is Registered
e) Whether a Design Not Diering Substantially from
the Design Has Been Applied
Actions for Infringement
a) Jurisdiction
b) Limitation Period
Remedies
a) Injunction
b) Damages or Prots
c) Delivery Up
d) Defenses
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TABLE OF CASES
387
INDEX
425
About the Author
John S. McKeown is a practising lawyer in Toronto, Ontario, Canada. He

focuses on providing advocacy and advice concerning intellectual property
and related matters, including protecting trademarks, domain names, copyrights, patents, confidential information and misleading advertising and claims
under the Competition Act. Some of Canadas largest marketers rely on his
advice. He is certified by the Law Society of Upper Canada as a specialist in
Intellectual Property Law (Trade Marks/Copyright).
Authors Note
This book has been written to explain to practitioners outside Canada how
the Canadian legal system works for trademarks, copyright and industrial
designs. A practical approach has been adopted and emphasis has been given
to how these laws may be used strategically.
Chapters have also been included relating to actions for infringement
since this is the type of information that is vital to enforcing rights.
As a practising lawyer and advocate, I have attempted to present the law
in a clear and understandable fashion. The law is stated as of July 2009.
I thank my wife and our sons for their patience while I worked on the
text.
CHAP T ER
1
Introduction
1. Introduction
b) Implementation
3. Trademarks
a) Trade-marks Act
4. Domain Names
5. Copyright
Chapter 1 Introduction
1. Introduction
The purpose of this book is to explain to practitioners and other interested
individuals outside of Canada how Canadian laws relating to trademarks,
domain names, copyright, and industrial designs work so they can use this
information strategically to their advantage.
Canadas international obligations have an important effect on these laws
since Canadian legislation must comply with these obligations. However,
despite this impetus towards harmonization, there are significant differences
between Canadian laws and the laws of other countries.
Canada has ratified a number of international conventions or agreements
relating to the protection of intellectual property, which are important to
developing an understanding of Canadian law. The Paris Convention for the
Protection of Industrial Property, the Agreement establishing the World
Trade Organization, North American Free Trade Agreement, and the Berne
Convention are of particular importance.
Canada is a member of the Paris Convention for the Protection of
Industrial Property.1 The Convention is designed to strengthen the protection of industrial property among its members mainly relating to patents,
trademarks, and industrial designs. National treatment and priority rights are
made available to applicants from member countries.
Canada is a party to the Agreement that established the World Trade
Organization (WTO) and adopted the Agreement on Trade-Related Aspects
of Intellectual Property Rights (TRIPS), including trade in Counterfeit Goods.
TRIPS provides for standards or minimum levels of protection and enforcement of intellectual property rights, which member countries must implement. Members are required to enact legislation providing mechanisms for
the enforcement of rights,2 including civil, criminal, and customs procedures.3
TRIPS requires, among other things, that Members comply with the Berne
Convention (Paris Revision, 1971) and the Paris Convention.4 One of the
fundamental principles of TRIPS is national treatment; Members must make
1.
2.
3.
4.
Canada has adhered to the Stockholm Revision (1967).

TRIPS, Article 41.
TRIPS, Articles 4261.
Article 9.
International Obligations 3
available to the nationals of other Members treatment no less favourable than

it accords to its own nationals.
Any Member who feels that a benefit accruing to it directly or indirectly
under TRIPS has been nullified or impaired, or that the attainment of an
objection was impeded as a result of a failure of another Member to carry out
its obligations under TRIPS, may invoke the dispute settlement provisions of
the General Agreement on Tariffs and Trade (GATT),5 and the 1994 dispute
settlement arrangements. As a result, a TRIPS dispute-settlement panel can
enforce the provisions of TRIPS and the relevant Conventions.
Canada has entered into the North American Free Trade Agreement
(NAFTA) between Canada, the United States of America, and the United
Mexican States, which was signed on December 17, 1992 and implemented in
Canada on January 1, 1994. The treaty is primarily directed to trade between
the parties but also contains a model code for the protection and enforcement
of intellectual property rights.
Under Chapter 17 of NAFTA, each party agrees to provide in its territory
to the nationals of the others, adequate and effective protection and enforcement of intellectual property rights, while ensuring that measures to enforce
such rights do not themselves become barriers to legitimate trade.6 To provide this protection, the parties agreed to give effect to, at a minimum, the
provisions of Chapter 17 and the provisions of the Berne Convention (Paris
Revision, 1971) and Paris Convention.7 The provisions of Chapter 17 are very
similar to the requirements of TRIPS.
Under NAFTA, the parties have agreed to establish the Free Trade
Commission to, among other things, resolve disputes.8 In addition, the option
is available to resolve the dispute under the dispute-settlement provisions of
the GATT.
Canada is a member of the International Convention for the Protection of
Performers, Producers, Phonograms, and Broadcasting Organizations (the
Rome Convention). The Convention is concerned with the protection of
neighboring rights granted to performers, producers of phonograms, and
broadcasting organizations.9
Canada signed both the WIPO Copyright and WIPO Performance and
Phonograms Treaties in December of 1997, signaling a commitment not to
derogate from the principles set out in the Treaties. Ratification is still being
considered but is currently the subject of considerable political debate.
5.
6.
7.
8.
9.
TRIPS, Articles 6364.

North American Free Trade Agreement, Article 1701(1).
North American Free Trade Agreement, Article 1701(2).
Article 2001.
See Chapter 19.
Canada does not adhere to the Madrid Protocol for the international registration of trademarks, the Trademark Law Treaty, or the Nice Agreement
on the Classification of Goods and Services, although the Canadian Intellectual
Property Office issued a request for views concerning whether Canada should
adhere. There are divergent views and it remains to be seen what approach
the Government will take.
b) Implementation
In Canada, a treaty or convention must be implemented by domestic legislation.10 Treaties or conventions do not have any direct effect and do not form
part of the domestic law,11 although a treaty may be referred to in the context
of interpreting the provisions of the legislation implementing it.12
In Canada, the Federal Parliament has jurisdiction over trademarks,
copyright, and industrial designs. The provinces may protect unregistered
trademarks and trade secrets under provincial laws or the common law in
provincial courts.
A brief overview of the law concerning trademarks, common law rights,
domain names, copyright, and industrial designs follows. In some cases overlapping protection is possible; for example, a trademark which incorporates a
design element that is original may be protected both as a trademark and
under the Copyright Act.
3. Trademarks
a) Trade-marks Act
Parliament has enacted the Trade-marks Act13 which provides a national
public registry system showing proscribed information for each registered
trade mark. The Act facilitates the protection of trademarks by granting
exclusive rights to owners and providing for public notice of those rights. The
Act implements Canadas international obligations.
10. Pfizer Inc. v. Canada (1999), 2 C.P.R. (4th) 298 (F.C.), affirmed 250 N.R. 66 (F.C.A.).
11. De Montigny v. Cousineau, [1950] S.C.R. 297.
12. National Corn Growers Association v. Canada (Canadian Import Tribunal) (1990), 74 D.LR.
(4th) 449 (S.C.C.).
13. R.S.C. 1985, c. T-13, as amended.
Trademarks 5
The use of a mark in Canada or in a country that is a member of the Paris

Convention or a member of World Trade Organization creates rights under
the Act. A non-Canadian trademark owner may file an application for a mark
on the basis registration and use in the owners country of origin.14 The Act
provides that the term country of origin means a country of the Union (a
member of the Paris Convention or the World Trade Organization) in which
the applicant had, at the date of the application, a real and effective industrial
or commercial establishment, that was his or her domicile, or was a citizen or
national.15
Priority rights are also available. The priority date for applications based
on a mark registered and used abroad is the date of the filing of the application in Canada or, if specific requirements including requirements relating to
16
timely filing are satisfied, the foreign filing date.
In Canada, in order to be eligible to obtain a trademark registration, the
applied-for mark must comply with the provisions of the Act relating to registrable trademarks. The Act lists a number of matters which may preclude
obtaining a registration.17 The application of these matters can be avoided in
part for a mark registered and used abroad.18

The Canadian trademark registration system co-exists with common law
trademark rights.19 Common law rights are typically acquired through actual
use of a common law mark in Canada in association with wares or services.
These rights are not affected by any international obligations.
In the case of a well-known mark, it may be not necessary that a person
actually use the mark in Canada in order to have goodwill or a reputation
which may be protected.20 As a common law trademark becomes known and
goodwill is associated with it, the owner of the mark will be able to assert
claims against others who use confusing trademarks in the specific region or
area where the common law trademark owner has built up goodwill. This
type of claim is referred to as passing off.
14.
15.
16.
17.
18.
19.
20.
Subsection 16(2) of the Trademarks Act and Chapters 4, part 3 and Chapter 6, part 3.
Section 2.
See Chapter 6, part 3.
See Chapter 3.
See Chapter 14.
See Chapter 14, part 1(b).
4. Domain Names
Domain names and the rights associated with them are not affected by any
international obligations. In general terms, the registration of domain names
is on a first-come, first-served basis and there is no assessment of registrability or entitlement and no opposition procedure. Some Top Level Domains
are restricted and require a local presence or specific legal documentation.21
Typically domain-name registration agreements require that an applicant
submit to an administrative dispute-resolution policy limited to cases of
abusive registration of domain names.22
In Canada, a domain name that is registrable under the Trade-marks Act
and is used as a trademark may be protected as a trademark.23
5. Copyright
In Canada, copyright is purely a statutory right. The Federal Copyright Act 24
creates the rights and obligations described in the Act. The term copyright
is a shorthand reference to the exclusive rights conferred by the Act on the
copyright owner and author. Copyright consists of the sole right to exercise,
and to restrain others from exercising, specific statutory rights relating to
a literary, dramatic, musical, or artistic work, a performers performance, a
sound recording, or a communication signal. In addition, the author of a
work is given exclusive moral rights.
Under the Act, in order to obtain protection, connecting factors or
points of attachment relating to the nationality of the author or the place of
first publication of the work must be satisfied.25 These requirements are
consistent with Canadas international obligations in that they provide for
national treatment.
The Industrial Design Act 26 protects designs, defined as meaning features of
shape, configuration, pattern, or ornament, and any combination of those
21.
22.
23.
24.
25.
26.
See Chapter 16, part 2(c).

See Chapter 16.
See Chapter 16, part 2(d).
R.S.C. 1985, c. C-42, as amended.
See Chapter 17, part 1(a).
R.S.C. 1985, c. I-9, as amended and see Chapter 33.
Industrial Designs
features that, in a finished article, appeal to and are judged solely by the eye.27
Despite the generality of the definition, no protection afforded by the Act
extends to:
(a) features applied to a useful article that are dictated solely by a utilitarian function of the article, or
(b) any method or principal of manufacture or construction.
National treatment and priority rights are available for applicants from a
country that is a WTO member or a country that by treaty, convention, or
law affords a similar privilege to Canadian citizens.28
27. Industrial Design Act, R.S.C. 1985, c. I-9, as amended, section 2.

28. See Chapter 33, part 6(c).
CHAP T ER
2
Protection of Trademarks in Canada
10
10
10
2. Basic Denitions
11
a) Trademark
11
b) Certication Mark
12
c) Distinctiveness
13
15
e) Prohibited Marks
17
f ) Prohibited Designations
20
(i) General
20
(ii) Under the Plant Breeders Rights Act
21
21
h) Ocial Marks
21
24
10
Chapter 2 Protection of Trademarks in Canada

The Trade-marks Act1 came into force July 1, 1954 and has remained substantially unchanged since that time. The Act provides for a national public
registry system, showing proscribed information for each registered trademark. A registration of a trademark gives the owner the exclusive right to use
the mark throughout Canada.
The Supreme Court of Canada recently observed that the power of attraction of trademarks is recognized as among the most valuable of business
assets. Despite their commercial evolution, the legal purpose under the Act is
their use by the owner . . . to distinguish wares or services manufactured,
sold, leased, hired, or performed by him from those manufactured, sold,
leased, hired or performed by others. A trademark is a guarantee of origin or
source and inferentially, an assurance to the consumer that the quality will be
what he or she has come to associate with a particular trademark. The Act is,
in this sense, consumer protection legislation.2
The Act also rests on principles of fair dealing and is sometimes said to
hold the balance between free competition and fair competition. In applying
its provisions, the interests of the public and other merchants as well as the
interest of the trademark owner must be considered. Care must be taken not
to create a zone of exclusivity and protection that overshoots the purpose of
trademark law.3
The purpose of a trademark is to create and symbolize linkages. A trademark
is a symbol of a connection between the source of a product and the product
itself. This is reflected in the definition of a trademark contained in the Act.4
There is no provincial legislation relating to trademarks but business names
are typically required to be registered in each province as a result of provincial legislation. Federal and provincial legislation also applies to corporations,
including corporate names, and the registration of extra-provincial corporations. In general terms, before an incorporation or registration of an extraprovincial corporation is allowed, evidence must be filed to show that the
1.
2.
3.
4.
R.S.C. 1985, c. T-13, as amended.

Mattel, Inc. v. 3894207 Canada Inc., 2006 SCC 22, 49 C.P.R (4th) 321 at paragraph 2 (S.C.C.).
Basic Definitions
proposed corporate name is not so similar to an existing business name as to

be confusing.
The Province of Quebec has adopted the Charter of the French language
to promote the status and the use of the French language in that province.
The Charter provides that every inscription on a product, on its container or
on its wrapping or on a document or objects supplied with it, including the
directions for use and the warranty certificates, must be drafted in French.
While the French inscription may be accompanied by a translation, no
inscription in another language may be given more prominence than the
inscription in French. Public signs and posters, as well as commercial advertising must be in French. Signs, posters, and advertising may also be both
in French and another language, but the French portion must be markedly
predominant.
An exception to the mandatory use of French is extended to recognized
trademarks. Regulations under the Charter provide that in all printed material used in commerce, including on product inscriptions, public signs, public
posters, and commercial advertising, a recognized trademark within the
meaning of the Trade-marks Act may appear exclusively in a language other
than French, unless a French version has been registered. At least one case
has found that the exception extends to both registered and unregistered
trademarks so long as they are recognized by consumers.5
2. Basic Denitions
a) Trademark
The Act provides that a trade-mark means a) a mark that is used by a person
for the purposes of distinguishing or so as to distinguish wares or services
manufactured, sold, leased, hired, or performed by him from those manufactured, sold, leased, hired, or performed by others; b) a certification mark; c) a
distinguishing guise, or d) a proposed trademark.6 The key to the definition
of a trade-mark is that it distinguishes the wares or services of its owner
from those of others.
5. Attorney General (Quebec) c. St.-Germain Transport (1994) Inc., [2006] J.Q. No. 8429 (C. Q.
(Crim. & Pen. Div.)) This interpretation is not currently shared by the Office qubcois de la
langue franaise, the body responsible for compliance. In its annotated version of the Charter
of the French Language they take the position that a recognized trademark means only a
registered mark.
6. Section 2 of the Trade-marks Act.
11
12
The words use and distinctive are also defined by the Act.7 To satisfy
the definition, a trade-mark must be used or proposed to be used. Similarly,
a mark must be distinctive or capable of being distinctive. A trademark is a
symbol of a connection between a source of a product and the product
itself.8
The Canadian Intellectual Property Office9 (CIPO) has taken the position
that a mark must be capable of being seen. As a result, they have refused to
register non-traditional marks such as colour alone, animated /moving image
marks, sounds, and scents.
A certification mark10 and a distinguishing guise11 are included in the
statutory definition even though they have different attributes than a typical
trademark.
Manufacturers marks are expressly referred to but there is nothing in the
definition to prevent the registration of a trademark by a retailer of a private
label product so long as the mark distinguishes the retailers wares from the
wares of others.
A slogan or a tagline can be used as a trademark. In order to determine
whether the use of a slogan is subject to the Act, consideration must be given
to whether the slogan is a trademark as defined in the Act and whether the
use of the slogan is trademark use within the meaning of subsection 4(1) of
the Act.12
The Act contains a related definition of a proposed trade-mark.13 It is
possible to file an application based on an intention to use a mark in Canada.
When an application is filed on this basis, the owner must actually use the
trademark in order to obtain a registration.14
b) Certication Mark
The Act provides that certification mark means a mark that is used for the
purpose of distinguishing or so as to distinguish wares or services that are
of a defined standard with respect to a) the character or quality of the wares
7. Sections 2 and 4 of the Trade-marks Act.

8. Kirkbi Ag et al v. Ritvik Holdings Inc. (2005) 43 C.P.R. (4th) 385 (S.C.C.).
9. The Canadian Intellectual Property Office is a Special Operating Agency associated with
Industry Canada, that is responsible for the administration and processing of the greater part
of intellectual property in Canada.
10. See part 2(b) of this chapter.
11. See part 2(d) of this chapter.
12. Governor & Co. v. Sears Canada Inc. (2002), 26 C.P.R. (4th) 457 (T.M.O.B.).
14. Subsection 40(2) of the Trade-marks Act.
Basic Definitions
or services; b) the working conditions under which the wares have been
produced or the services performed; c) the class of persons by whom the
wares have been produced or the services performed; or d) the area within
which the wares have been produced or the services performed. The certification mark must distinguish the wares or services it is used with from wares or
services that are not of the defined standard.15
A certification mark is used to distinguish wares or services which comply
with a defined standard.16 A certification mark may be adopted and registered only by a person who is not engaged in the manufacture, sale, leasing,
or hiring of wares or performance of services such as those in association with
which the certification mark is used.17
The owner cannot use the certification mark directly18 but may license
others to use the mark in association with wares or services that meet the
defined standard. Use by a licensee is deemed to be use by the owner.19 For
example, the WOOLMARK & design mark is reproduced on product packaging by licensees to indicate the existence of pure merino wool.
The owner of a registered certification mark may prevent its use by unlicensed persons or by licensed persons who use the mark in association with
wares or services in respect to which the mark is registered but to which their
license does not extend.20
A geographical certification mark descriptive of the place of origin of wares
or services may be registered by an administrative authority or commercial
association for a country, state, province, or municipality including or forming part of the area indicated by the mark, but the owner of such a mark must
permit the use of the mark in association with any wares or services
produced or performed in the area in which the mark is descriptive.21
c) Distinctiveness
Distinctive in relation to a trademark, means a trademark that actually
distinguishes the wares or services in association with which it is used by its

16. Section 2 and see Life Underwriters Association v. Provincial Association of Quebec Life
Underwriters [1989] F.C. 570 (F.C.T.D.).
18. Wool Bureau of Canada, Ltd. v. Queenswear (Canada) Ltd. (1980), 47 C.P.R. (2nd) 11
(F.C.T.D.), Mister Transmission (International) Ltd. v. Registrar of Trade-marks (1978), 42
C.P.R. (2d) 11 (F.C.T.D.).
19. Subsection 23(2) of the Trade-marks Act and see Wool Bureau of Canada, Ltd. v. Queenswear
(Canada) Ltd. (1980), 47 C.P.R. (2nd) 11 (F.C.T.D.).
13
14
owner from the wares or services of others, or is adapted so to distinguish

them.22 The definition applies to trademarks which are used as well as to a
trademark which is proposed to be used. In the latter case, the mark must be
adapted to distinguish the wares or services in issue, because the trademark is
inherently distinctive.23
The concept of distinctiveness is not static since distinctiveness may be
acquired as the mark is used. Acquired distinctiveness is also referred to as
secondary meaning. Conversely, a mark which was inherently distinctive or
which has acquired distinctiveness can lose its distinctiveness. For example, if
a trademark owner communicates an inappropriate message to the public,
this may result in a loss of distinctiveness.24
In the context of determining whether two trademarks are confusing, the
court or the Registrar must consider, among other things, the inherent distinctiveness of the trademarks in issue and the extent to which they have
become known. A mark which is strongly inherently distinctive will only
refer the consumer to the wares or services in issue. Typically, such a mark
will be a unique coined word. A mark with less inherent distinctiveness will
refer the consumer to other sources.
Distinctiveness is the essence and cardinal requirement of a trademark.25
The Registrar of Trademarks may not directly refuse an application to register a mark on the basis of lack of distinctiveness but an application may be
opposed on the ground that the applied-for mark is not distinctive.26 The
registration of a trademark may be found to be invalid if the trademark is not
distinctive at the time that the proceedings bringing the validity of the registration into question are commenced.27
Generally, three conditions must be satisfied to show distinctiveness:
(1) the mark and a product are associated or linked; (2) the owner uses
the association or link between the mark and its product and is selling the
product; and (3) the association or link enables the owner of the mark to
distinguish its product from that of others.28 The message actually given to

23. Boston Pizza International Inc. v. Boston Chicken Inc. (2003), 24 C.P.R. (4th) 150 (F.C.A);
AstraZeneca AB v. Novopharm Ltd. (2003), 24 C.P.R. (4th) 326 (F.C.A.), leave to appeal to the
S.C.C. refused 26 C.P.R. (4th) vi.
24. Heintzman v. 751056 Ontario Ltd. (1991), 34 C.P.R. (3d) 1 (F.C.T.D.).
25. Mattel, Inc. v. 3894207 Canada Inc. 2006 SCC 22, 49 C.P.R (4th) 321 at paragraph 75 (S.C.C.).
26. Subsections 37(1) and 38(2)(d) of the Trade-marks Act.
28. Philip Morris Inc v. Imperial Tobacco Ltd. (1985), 7 C.P.R. (3d) 254 (F.C.T.D.), 17 C.P.R. (3d)
289 (F.C.A.); leave to appeal to the S.C.C. refused 19 C.P.R. (3rd) vi; AstraZeneca AB v.
Novopharm Ltd. (2003), 24 C.P.R. (4th) 326 (F.C.A.), leave to appeal to the S.C.C. refused 26
C.P.R. (4th) vi.
Basic Definitions
the public is critical.29 The name which appears on the address line on product packaging will be important.30
Colour can be an important aspect of the trademark and help to make it
distinctive.31 However, a colour by itself is not distinctive and there must be
some additional independent feature in order to obtain a registration.32
The use of a trademark notice can assist in maintaining distinctiveness.
A trademark owner should use the notification to identify an unregistered
trademark and the symbol to identify a registered trademark. A trademark
owner may also use a trademark legend in conjunction with these symbols
such as a registered trademark of XYZ Company. The use of such a legend
when a trademark has been licensed, combined with a statement that the use
is licensed, results in a statutory presumption that the use is in fact licensed
and under the control of the trademark owner.33
In certain cases, the requirement for distinctiveness is relaxed as a result of
Canadas compliance with the Paris Convention34 for non-Canadian applicants. A non-Canadian trademark owner may file an application for a trademark and claim the benefit of section 14 to obtain a registration in Canada
based on a trademark which has been duly registered in the applicants country
of origin, if, in Canada, among other things, the mark applied for is not without
distinctive character, having regard to all of the circumstances including the
length of time during which the mark has been used in any country.35
A distinguishing guise means a shaping of the wares or their containers or
a mode of wrapping or packaging wares, the appearance of which is used by
a person for the purpose of distinguishing wares manufactured, sold, leased,
or hired by it from those manufactured, sold, leased, hired, or performed by
others.36
29. Consorzio del Prosciutto di Parma v. Maple Leaf Meats (2001), 11 C.P.R (4th) 48 (F.C.T.D.)
(2002), 18 C.P.R. (4th) 414 (F.C.A.).
30. Moore Dry Kiln Co. Canada Ltd. v. U.S. Natural Resources Inc. (1976), 30 C.P.R. (2d) 40 (F.C.A.);
White Consolidated Industries, Inc. v. Beam of Canada Inc. (1991), 39 C.P.R. (3d) 94 (F.C.T.D.).
31. Smith, Kline & French v. Reg. T.M. No. 2 (1987), 9 F.T.R. 129 (F.C.T.D.); Ciba-Geigy Canada
Ltd. v. Apotex Inc. [1992] 3 S.C.R. 120 (S.C.C.).
32. Re Smith Kline & French Can. Ltd., Application for T.M. for Circle Design (1984), 10 C.P.R.
(3d) 246; affirmed 10 C.P.R. (3d) 287 (F.C.A.); Novopharm Ltd. v. Bayer Inc. (2000), 9 C.P.R.
(4th) 304 (F.C.A).
33. Subsection 50(2).
34. Article 6quinquies.
35. Subsection 14(1)(b) of the Trade-marks Act and see Chapter 4, part 3(b).
15
16
A distinguishing guise is registrable only if a) it has been used in Canada

by the applicant or predecessor in title as to have become distinctive at the
date of filing of an application for its registration; and b) the exclusive use
by the applicant of the distinguishing guise in association with the wares or
services with which it has been used is not likely unreasonably to limit the
development of an art or an industry.37 No registration of a distinguishing
guise interferes with the use of any utilitarian feature embodied in the distinguishing guise.38 The registration of the distinguishing guise may be limited
to a defined area of Canada.39
The registration of a distinguishing guise may be expunged by the Federal
Court of Canada on the application of any interested person if the court
concludes that the registration has become likely to unreasonably limit the
development of any art or industry.40
As mentioned above the definition of trademark includes a distinguishing guise. This ensures that the owner of a distinguishing guise has the same
rights as those available to a trademark owner, including the right to bring an
action for the infringement pursuant to sections 19 and 20.
Unlike an ordinary application for a trademark, an applicant seeking to
register a distinguishing guise must provide evidence to establish that the
distinguishing guise has been used in Canada so as to have become distinctive.41 The onus of showing distinctiveness is on the applicant and has been
categorized as a heavy burden similar to that required to show acquired
distinctiveness or secondary meaning.42 If the application is opposed the
applicant can rely on the same evidence but must advise the Trade-marks
43
Opposition Board and the opponent that it relies on that evidence.
A distinguishing guise incorporating functional features of a product
which relate primarily or essentially to the product itself is not registrable.44
A plaintiff will be unable to successfully assert rights relating to an unregistered
37.
38.
39.
40.
41.
42.
43.
44.
Section 13(1) of the Trade-marks Act.

Section 13(2) of the Trade-marks Act.
Subsection 32(2) of the Trade-marks Act.
Subsection 13(3) of the Trade-marks Act and see WCC Containers Sales Limited v. Haul-All
Equipment Ltd. (2003), 28 C.P.R. (4th) 175 (F.C.T.D.)
Subsection 32(1) of the Trade-marks Act. See the practice notice in the Trade-marks Journal,
Volume 47, No. 2408, December 20, 2000 dealing with the Trade-mark Office practice.
Calumet Mfg Ltd. v. Mennen Canada Inc.; Gillette Canada Inc. v. Mennen Canada Inc. (1992),
40 C.P.R. (3d) 76 (F.C.T.D.); Molson Breweries v. John Labatt Ltd,. (2000), 5 C.P.R. (4th) 180
(F.C.A.); Glaxo Wellcome Inc. v. Novopharm Ltd. (2000), 8 C.P.R. (4th) 448 (F.C.T.D.).
Canadian Generic Pharmaceutical Association v. Sanofi-Synthelabo Inc. (2006), 60 C.P.R.
(4th) 74 (T.M.O.B.).
Remington Rand Corp. v. Philips Electronics N.V. (1995), 64 C.P.R. (3rd) 467, leave to appeal
to the S.C.C. dismissed 67 C.P.R. (3rd) vi (S.C.C.); Thomas & Betts, Ltd. v. Panduit Corp.
(2000), 4 C.P.R. (4th) 498 (F.C.A.).
Basic Definitions
but functional distinguishing guise in an action for passing off for the same
reasons.45
Similar considerations relating to functionality apply to regular trademarks. If the functionality relates either to the trade mark itself 46 or to the
wares47 this is inconsistent with registration. However, if the functionality is
secondary or peripheral with no essential connection to the wares48 this will
not be a bar to registration.
The functionality concept is intended to ensure that an applicant does not
indirectly achieve the status of a patent holder, with an unlimited term of
protection, by obtaining a trademark registration. It would be abusive and
unfair to the public to allow a person to gain the benefits of a patent by obtaining a trademark registration, especially when a person otherwise could not
obtain a patent or when the patent in issue has expired.49 However, even
though a distinguishing guise may be registrable as an industrial design this
does not prevent its registration as a trademark.50
e) Prohibited Marks
The adoption, which includes use and application for registration,51 of a variety of regal, governmental or public words, crests, symbols, marks, or other
devices is prohibited.52 Subsection 9 (1) of the Act provides that no person
shall adopt in connection with a business, as a trademark or otherwise, any
mark consisting of, or so nearly resembling as to be likely to be mistaken for,
a prohibited mark.
45. Kirkbi Ag et al v. Ritvik Holdings Inc (2002), 20 C.P.R. (4th) 224 (F.C.T.D.) appeal dismissed
(2003), 26 C.P.R. (4th) 1 (F.C.A.), appeal dismissed (2005), 43 C.P.R. (4th) 385 (S.C.C).
46. See Imperial Tobacco Co. v. Registrar of Trade-marks [1939] 2 D.L.R. 65 (Ex. Ct.) which dealt
with a transparent moisture proof wrapper for cigarettes; Parke, Davis & Co. v. Empire Laboratories Ltd. (1964), 43 C.P.R. 1 (S.C.C.) which considered colored bands encircling capsules
containing pharmaceuticals.
47. See Elgin Handles Ltd. v. Welland Vale Manufacturing Co. (1964), 43 C.P.R. 20 (Ex. Ct.) where
a design accentuated the darker coloring of the grain of the wood of tool handles.
48. See Pizza Pizza Ltd. v. Canada (Registrar of Trade-marks) (1989), 26 C.P.R. (3d) 355 (F.C.A.)
which involved a telephone number for pizza delivery; and Proctor & Gamble Inc. v. ColgatePalmolive Canada Inc, [2007] T.M.O.B. No. 1 (T.M.O.B.) concerning colored stripes added to
toothpaste.
49. Kirkbi Ag et al v. Ritvik Holdings Inc. (2005), 43 C.P.R. (4th) 385 (S.C.C.).
50. Hughes, W.J. & Sons Corn Flower Ltd. v. Morawiec (1970), 62 C.P.R. 21 (Ex. Ct.); WCC
Containers Sales Limited v. Haul-All Equipment Ltd. (2003), 28 C.P.R. (4th) 175 (F.C.T.D.).
52. Sections 3, 9, 10, 10.1, 11, 11.1, 11.14, 11.15 and subsection 12(1)(e) of the Trade-marks Act.
17
18 Chapter 2 Protection of Trademarks in Canada
The list of prohibited marks includes

a)
b)
c)
d)
the Royal Arms, Crest, or Standard;

the arms or crest of any member of the Royal Family;
the standard, arms, or crest of His Excellency the Governor General;
any word or symbol likely to lead to the belief that the wares or services
in association with which it is used have received, or are produced, sold,
or performed under, royal, vice-regal, or governmental patronage,
approval or authority;
e) the arms, crest, or flag adopted and used at any time by Canada or by
any province or municipal corporation in Canada in respect of which
the Registrar has, at the request of the Government of Canada, or of the
province or municipal corporation concerned, given public notice of its
adoption and use;
f ) the emblem of the Red Cross as used by the Medical Service of armed
forces and by the Canadian Red Cross Society, or the expression Red
Cross or Geneva Cross;
g) the emblem of the Red Crescent on a white ground adopted for the
same purpose as specified in paragraph ( f ) by a number of Moslem
countries;
g.1) the emblemcommonly known as the Red Crystalreferred to
in Article 2, paragraph 2 of Schedule VII to the Geneva Conventions
Act and composed of a red frame in the shape of a square on edge
on a white ground, adopted for the same purpose as specified in
paragraph ( f );
h) the equivalent sign of the Red Lion and Sun used by Iran for the same
purpose as specified in paragraph ( f );
h.1) the international distinctive sign of civil defence (equilateral blue triangle on an orange ground) referred to in Article 66, paragraph 4 of
Schedule V to the Geneva Conventions Act;
i) any territorial or civic flag or any national, territorial, or civic arms,
crest, or emblem, of a country of the Union53 if the flag, arms, crest, or
emblem is on a list communicated under article 6ter of the Paris
Convention or pursuant to the obligations under TRIPS54 stemming
from that, and the Registrar gives public notice of the communication;
53. Section 2 of the Act provides that country of the Union means (a) any country that is a
member of the Union for the Protection of Industrial Property constituted under the Convention of the Union of Paris made on March 20, 1883 and any amendments and revisions
thereof made before or after July 1, 1954 to which Canada is party; or (b) a Member of the
World Trade Organization established by Article I of the World Trade Organization
Agreement.
54. See Chapter 1 concerning TRIPS.
Basic Definitions
i.1) any official sign or hallmark indicating control or warranty adopted by a

country of the Union, if the sign or hallmark is on a list communicated
under article 6ter of the Paris Convention or pursuant to the obligations under TRIPS stemming from that article and the Registrar gives
public notice of the communication;
i.2) any national flag of a country of the Union;
i.3) any armorial bearing, flag, or other emblem, or any abbreviation of
the name, of an international intergovernmental organization, if the
armorial bearing, flag, emblem, or abbreviation is on a list communicated under article 6ter of the Paris Convention or pursuant to the
obligations under TRIPS stemming from that article, and the Registrar
gives public notice of the communication;
j) any scandalous, obscene, or immoral word or device;
k) any matter that may falsely suggest a connection with any living
individual;
l) the portrait or signature of any individual who is living or has died
within the preceding thirty years;
m) the words United Nations or the official seal or emblem of the United
Nations;
n) any badge, crest, emblem, or mark
(i) adopted or used by any of Her Majestys Forces as defined in the
National Defence Act,
(ii) of any university, or
(iii) adopted and used by any public authority, in Canada as an official
mark for wares or services,
in respect of which the Registrar has, at the request of Her Majesty or
of the university or public authority, as the case may be, given public
notice of its adoption and use;
n.1) any armorial bearings granted, recorded, or approved for use by
a recipient pursuant to the prerogative powers of Her Majesty as exercised by the Governor General in respect of the granting of armorial
bearings, if the Registrar has, at the request of the Governor General,
given public notice of the grant, recording or approval;
o) the name Royal Canadian Mounted Police or R.C.M.P. or any
other combination of letters relating to the Royal Canadian Mounted
Police, or any pictorial representation of a uniformed member
thereof.
Nothing prevents the adoption, use, or registration as a trademark or otherwise, in connection with a business, of any mark
(a) described above with the consent of Her Majesty or such other person,
society, authority, or organization as may be considered to have been
intended to be protected by this section; or
19
20 Chapter 2 Protection of Trademarks in Canada
(b) consisting of, or so nearly resembling as to be likely to be mistaken for

(i) an official sign or hallmark mentioned in paragraph i.1 above except
in respect of wares that are the same or similar to the wares in
respect of which the official sign or hallmark has been adopted, or
(ii) an armorial bearing, flag, emblem, or abbreviation mentioned in
paragraph i.3 above, unless the use of the mark is likely to mislead the
public as to a connection between the user and the organization.55
The Registrar of Trade-marks must, at the request of the relevant interested
party, give public notice of the adoption and use of any badge, crest, emblem,
or mark set out in paragraphs (e) and (n) in order for subsection 9(1) to apply
to such devices.
The reference to university in item n(ii) above is unlimited and a university in order to request notice of adoption be given need not be subject to the
requirement of public control in Canada.56
f) Prohibited Designations
(i) General
Section 10 states that where a mark has by ordinary and bona fide commercial
usage become recognized in Canada as designating the kind, quality, quantity, destination, value, place of origin, or date of production of any wares or
services, no person shall adopt it as a trade-mark in association with such
wares or services or others of the same general class, or use it in a way likely
to mislead.57 In addition, no one may adopt or so use any mark so nearly
resembling that mark as to be likely to be mistaken for it.
The section prohibits the adoption of marks like the hallmark for silver
and other well-known marks that designate quality or origin. This type of
mark or a mark which closely resembles it should be open for use by anyone.58 The mark as a whole must be considered, and a compound mark which

56. Canada Post Corp. v. United States Postal Service (2005), 47 C.P.R. (4th) 177 (F.C.) appeal
dismissed 2007 FCA 10 (F.C.A.).
57. See section 11 of the Trade-marks Act which prohibits the use in connection with a business
as a trademark or otherwise of any mark adopted contrary to section 9 or 10.
58. See Benson & Hedges (Canada) Ltd. v. Empresa Cubana Del Tobacco (1975), 23 C.P.R. (2d)
274 (T.M.O.B.) where the trademark HABANOS in association with cigars was found to be
unregistrable since the words habana and habanas are commonly used in association
with cigars in Canada to denote that the cigars are made in Cuba; Scotch Whiskey Association
v. Glenora Distillers International Ltd. 2008 FC 425, 65 C.P.R (4th) 441, reversed 2009 FCA
16, 76 C.P.R (4th) 1 (F.C.A.) where the word GLEN by itself in association with whiskey was
found not to be within the section.
Basic Definitions
includes a prohibited mark as a component combined with a disclaimer of

the component may be acceptable.59 For similar reasons, a component of previously registered marks will not be protected under the section.60 The party
claiming that any mark has become recognized in Canada as designating the
kind, quality, quantity, or the like must prove it by presenting appropriate
evidence.61
(ii) Under the Plant Breeders Rights Act
Where a denomination must, under the Plant Breeders Rights Act, be used to
designate a plant variety, no one may adopt the denomination as a trademark
in association with that plant variety or another plant variety of the same species or use it in a way likely to mislead.62 In addition, no one may adopt or use
any mark so nearly resembling that denomination as to be likely to be mistaken for it.

Sections 11.11 to 11.12 of the Trade-marks Act set out procedures for obtaining protected geographical indications for wines and spirits. No person shall
adopt or use in connection with a business, as a trade-mark or otherwise, a
protected geographical indication identifying a wine or a spirit in respect of a
wine or a spirit not originating in the territory indicated by the protected
geographical indication or a translation in any language of the geographical
indication in respect of that wine or spirit.63 The Act also sets out procedures
for obtaining protection and asserting objections.64
h) Ocial Marks
The term official mark describes marks adopted and used by a public
authority, in Canada, under paragraph 9(1)(n)(iii) of the Act, as a mark for
wares or services. There are a large number of these marks and many of the
59. Jordan Ste-Michelle Cellars Ltd v. Andres Wines Ltd. (1985), 6 C.I.P.R. 49 (F.C.T.D.).
60. Scotch Whiskey Association v. Glenora Distillers International Ltd. 2009 FCA 16, 76 C.P.R
(4th) 1 (F.C.A.).
61. Scotch Whiskey Association v. Glenora Distillers International Ltd. 2008 FC 425, 65 C.P.R
(4th) (F.C.) reversed 2009 FCA 16, 76 C.P.R (4th) 1 (F.C.A.).
62. Sections 10.1 of the Trade-marks Act.
63. Sections 11.14 and 11.15 of the Trade-marks Act and see the Spirit Drinks Trade Act, S.C.
2005, c. 39 which restricts the use of certain names for spirits.
64. Sections 11.12 and 11.13 of the Trade-marks Act.
21
22
marks are of a commercial nature. In certain cases their existence can cause
significant problems for which there may be no redress.
A request for an official mark may only be filed by a public authority.
This term is not defined by the Act. It has been established by case law that
in order to come within the definition there must be a significant degree of
public control of the entity in Canada65 and it must not exist for private
profit.66 Public control requires that there be power which enables the government, directly or indirectly though its nominees, to exercise a degree
of ongoing influence in the entitys governance and decision-making. The
fact that an entity is created by statute, subject to legislative amendment from
time to time, is not sufficient.67
The only limitations on what constitutes an official mark are the prohibitions set out in the Act.68 It is not necessary that the mark create an impression of being official in some way,69 so long as the mark is sanctioned by a
public authority.
An official mark must have been adopted and used in Canada in association with wares or services before a request for publication is made. There is
no definition of adopted or used in this context but both terms seem to
require public display.70 It is not clear whether the use of an official mark
under license will be recognized as adoption and use.71 The use of an official
mark by the licensee of a public authority will not be recognized as adoption
and use by the licensee.72 The failure to adopt or use has resulted in the
65. Canada Post Corp. v. United States Postal Service (2005), 47 C.P.R. (4th) 177 (F.C.) appeal
66. Registrar of Trade-marks v. Canadian Olympic Association (1982), 67 C.P.R. (2d) 59 (F.C.A.).
67. Ontario Assn. of Architects v. Assn. of Architectural Technologists (2002), 19 C.P.R. (4th) 417
(F.C.A.); Canadian Jewish Congress v. Chosen People Ministries Inc (2002), 19 C.P.R. (4th) 186
(F.C.T.D.) affirmed (2003), 27 C.P.R. (4th) 193 (F.C.A.) and see Trade-mark Office Practice
Notice, published in the Trade-marks Journal, Volume 53, No. 2677 at p. 203.
68. Sections 3, 9, 10, 10.1, 11, 11.1, 11.14, 11.15 and subsection 12(1)(e) of the Trade-marks Act.
69. Insurance Corporation of British Columbia v. Registrar of Trade-marks, (1979), 44 C.P.R. (2d)
1 (F.C.T.D.).
70. See You In-Canadian Athletes Fund Corp. v. Canadian Olympic Committee (2007), 57 C.P.R.
(4th) 287 (F.C.), appeal dismissed 2008 FCA 124, 65 C.P.R (4th ) 421 (F.C.A.).
71. The Canadian Intellectual Property Office Practice Notice, dated August 27, 2007, takes the
position that such use will not be use for the purpose of section 9 relying on Canada Post
Corp. v. United States Postal Service (2005), 47 C.P.R. (4th) 177 (F.C.) and Canadian Rehabilitation Council for the Disabled v. Rehabilitation Council for the Disabled (2004), 35 C.P.R.
(4th) 270 (F.C.) but there are two other Federal Court decisions that reached the opposite
result, Ontario Association of Architects v. Association of Architectural Technologists of Ontario
[2003] 1 F.C 331, 19 C.P.R. (4th) 417 (F.C.A.) and Magnotta Winery Corporation v. Vintners
Quality Alliance (2001), 17 C.P.R. (4th) 45 (F.C.).
72. Canadian Rehabilitation Foundation for the Disabled v. Rehabilitation Foundation for the
Disabled, 2004 FC 1357, 35 C.P.R. (4th) 270 (F.C.).
Basic Definitions
finding that the giving of public notice of the adoption and use of the mark by
73
the public authority was ineffective under section 9 of the Act.
When an application under subsection 9(1) of the Act is submitted, the
Registrar of Trade-marks must be satisfied that the applicant is a public
authority and must then give public notice of the adoption and use of the
mark by the public authority.74 The application is not examined on any other
criteria, however the Registrar of Trade-marks currently requires that evidence of adoption and use of an official mark, which shows an element of
public display, be provided as part of the application.75 An official mark need
not distinguish wares or services and it may be descriptive and confusing
with an existing registered mark.76 An application for an official mark is not
subject to opposition proceedings.77 Once public notice has been given, the
official mark is hardy and difficult to expunge.78
The decision of the Registrar to publish an official mark is subject to judicial review.79 The time for action is limited since the application must be
made within 30 days of the communication of the decision or such further
time as a judge of the Federal Court may allow.80
Subsection 9 (1) of the Act provides that no person shall adopt in connection with a business, as a trademark or otherwise, any mark consisting of, or
so nearly resembling as to be likely to be mistaken for, a mark adopted by a
public authority in respect of which the Registrar has given public notice. The
public notice of the adoption and use of an official mark does not operate
retroactively to prohibit the use of an existing mark.81 A trademark owner
can continue to use a trademark adopted or registered before the publication
73. Pisticelli v. Liquor Control Board of Ontario (2001), 14 C.P.R. (4th) 181 (F.C.T.D.); FileNET
Corp. v. Registrar of Trade-marks (2001), 13 C.P.R. (4th) 385 (F.C.T.D.) affirmed (2002), 22
C.P.R. (4th) 328 (F.C.A.); See You In-Canadian Athletes Fund Corp. v. Canadian Olympic
Committee, (2007), 57 C.P.R. (4th) 287 (F.C.), appeal dismissed 2008 FCA 124, 65 C.P.R (4th)
421 (F.C.A.).
74. Stadium Corporation of Ontario Limited v. Wagon-Wheel Concessions Ltd. [1989] 3 F.C. 132
(F.C.T.D.)
75. See Canadian Intellectual Property Office Practice Notice, dated August 27, 2007.
76. See You In-Canadian Athletes Fund Corp. v. Canadian Olympic Committee (2007), 57 C.P.R.
(4th) 287 (F.C.), appeal dismissed 2008 FCA 124, 65 C.P.R. (4th) 421 (F.C.A.).
77. Insurance Corporation of British Columbia v. Registrar of Trade-marks (1979), 44 C.P.R. (2d)
1 (F.C.T.D.).
78. Mihaljevic v. British Columbia (1988), 23 C.P.R. (3rd) 80 (F.C.T.D.).
79. Ontario Assn. of Architects v. Assn. of Architectural Technologists (2002), 19 C.P.R. (4th) 417
(F.C.A.) reversing (2001), 9 C.P.R. (4th) 501 (F.C.T.D.); Canadian Jewish Congress v. Chosen
People Ministries Inc, (2002), 19 C.P.R. (4th) 186 (F.C.T.D.) affirmed (2003), 27 C.P.R. (4th)
193 (F.C.A.).
80. Federal Courts Act, R.S.C. 1985, c. F-7, as amended, subsection 18.1(2) and see College
of Chiropodists of Ontario v. Canadian Podiatric Medical Association (2004), 37 C.P.R.
(4th) 219 (F.C.).
81. Canadian Olympic Association v. Allied Corp. (1990), 28 C.P.R. (3d) 161 (F.C.A.).
23
24
of a similar official mark with impunity. However, public notice of the adoption and use of an official mark will preclude the expansion of an existing
registration to additional wares or services82 or the registration of any pending application which was not registered at the time of the publication of the
official mark, even if previously adopted, used, and applied for.83
The test of resemblance under section 9 consisting of, or so nearly resembling as to be likely to be mistaken for is different from the test for registered
trademarks set out in section 6 of the Act.84 The test is restricted to the resemblance between the official mark and the impugned mark and the nature of
the respective wares or services is irrelevant.85 It is not a test of straight comparison and the court will consider whether a person, on first impression
having only an imperfect recollection of the official mark, would likely be
confused by the impugned mark.86

In light of the 2010 Vancouver Olympic Games, the Olympic and Paralympic
Marks Act 87 was passed to address Olympic mark protection and ambush
type marketing activities. The Act provides special, time limited protection
for Olympic and Paralympic marks,88 prohibits anyone from misleading the
public concerning their approval, authorization or endorsement as an official
Olympic sponsor 89 and makes it easier to obtain an interlocutory injunction
concerning a breach of the Act.90
82. Canadian Olympic Association v. Konica Canada Inc. (1991), 39 C.P.R. (3d) 400 (F.C.A.);
Royal Roads University v. Canada (2003), 27 C.P.R. (4th) 240 (F.C.T.D.).
83. Canadian Olympic Association v. Allied Corp., (1990), 28 C.P.R. (3d) 161 (F.C.A.).
84. See Chapter 11 concerning the test for registered trademarks.
85. Canadian Olympic Association v. Allied Corp. (1990), 28 C.P.R. (3d) 161 (F.C.A.).
86. Big Sisters Assn. v. Big Brothers of Canada (1996), 75 C.P.R. (3rd) 177 (F.C.T.D.); Canadian
Olympic Association v. Techniquip Ltd. (1999), 3 C.P.R. (4th) 298 (F.C.A.).
87. S.C. 2007, c. 27.
88. S.C. 2007, c. 27, section 2 and see schedule 1 and 2.
89. S.C. 2007, c. 27, section 4. Enforcement guidelines have been published at http://www.
vancouver2010.com.
90. S.C. 2007, c. 27, section 6.
CHAP T ER
3
Registrable Trademarks
1. Characteristics Which May Preclude Registration
26
27
3. Descriptive or Deceptively Misdescriptive Trademarks
28
29
b) Clearly
30
30
30
31
f) Conditions of or the Persons Employed in

Production of Wares
31
g) Place of Origin
32
h) Suggestive Words
32
i) Coined Words
33
j) Disclaimer
33
4. Acquired DistinctivenessSecondary Meaning
34
a) Applicability
34
35
35
36
36
36
b) Associated Marks
37
25
38
26
Chapter 3 Registrable Trademarks
1. Characteristics Which May Preclude

Registration
In Canada in order to be eligible to obtain a trademark registration, the
applied-for-mark must comply with the provisions of the Trade-marks Act
relating to registrable trademarks. Subsection 12(1) of the Act lists a number
matters which may preclude obtaining a registration. The subsection provides that a trademark is not registrable if it is
(a) a word that is primarily merely the name or the surname of an individual who is living or has died within the preceding 30 years;
(b) whether depicted, written or sounded, either clearly descriptive or
deceptively misdescriptive in the English or French language of the
character, or quality of the wares or services in association with which
it is used or proposed to be used or of the conditions of or the persons
employed in their production or of their place of origin;
(c) the name in any language of any of the wares or services in connection
with which it is used or proposed to be used;
(d) confusing with a registered trade-mark;
(e) a mark of which the adoption is prohibited by section 9 or 10;
(f) a denomination under the Plant Breeders Rights Act1 the adoption of
which is prohibited by section 10.1;
(g) in whole or in part a protected geographical indication, where the
trade-mark is to be registered in association with a wine not originating in a territory indicated by the geographical indication;
(h) in whole or in part a protected geographical indication, where the
trade-mark is to be registered in association with a spirit not originating in a territory indicated by the geographical indication,
(i) subject to subsection 3(3) and paragraph 3(4)(a) of the Olympic and
Paralympic Marks Act,2 a mark the adoption of which is prohibited by
subsection 3(1) of that Act.
The subsection does not apply to a distinguishing guise which is dealt
with separately in section 13.
1. S.C. 1990, c. 20.

2. S.C. 2007, c. 27.
Primarily Merely a Name or a Surname

Subsection 12(1)(a) of the Act provides that a trade mark is not registrable
if it is a word that is primarily merely the name or the surname of an
individual who is living or has died within the preceding 30 years. To decide
whether the limitation applies it must be determined whether the primary
(chief) (principal) (first in importance) meaning of the word is merely (only)
(nothing more than) a surname.3 The question must be considered from the
point of view of a person in Canada of ordinary intelligence and education.4
It does not matter that the name is rare or in common use, as long as the mark
is a name and nothing else,5 but there must be evidence that an individual
bearing that name is living or has died within the preceding 30 years.6
If the mark is both a surname and a dictionary word, each of which are of
substantial significance, it is not primarily merely a surname.7 The subsection does not prevent the registration of a foreign name that a person
in Canada of ordinary intelligence and education would not think of as a
surname.8
The name of a historical character who has died prior to the preceding
30-year period will be registrable9 but if there are individuals who currently
bear the same name, the reference must be perceived to be to the historical
character to avoid the limitation.10
The name of a fictitious person is not precluded from registration unless
the fictitious name is also the name or the surname of an individual who is
living or has died within the preceding 30 years.11
If the surname is part of a composite mark, it may be possible to disclaim
the surname and obtain a registration if the other elements of the mark are
sufficiently distinctive to avoid the limitation.12
Despite the limitation concerning name or surname significance, a nonCanadian trademark owner may claim the benefit of section 14 to obtain a
registration in Canada based on a trademark which has been duly registered
3.
4.
5.
6.
7.
8.
9.
10.
11.
12.
Registrar of Trade-marks v. Coles Bookstores Ltd., [1974] S.C.R. 438 (S.C.C.).

Standard Oil Co. v. Registrar of Trade-marks (1968), 55 C.P.R. 49 (Ex. Ct.).
Forge Moderne Inc. v. Registrar of Trade-marks (1967), 51 C.P.R. 1993 (Ex. Ct.).
Gerhard Horn Investments Ltd. v. Registrar of Trade-marks (1983), 73 C.P.R. (2d) 23
(F.C.T.D.).
Elders Beverages (1975), Ltd. v. Registrar of Trade-marks (1979), 44 C.P.R. (2d) 59 (F.C.T.D.);
Molson Cos. Ltd. v. John Labatt Ltd. (1981), 58 C.P.R. (2d) 157 (F.C.T.D.).
Galanos v. Registrar of Trade Marks (1982), 69 C.P.R. (2d) 144 (F.C.T.D.).
Gerhard Horn Investments Ltd. v. Registrar of Trade-marks (1983), 73 C.P.R. (2d) 23
(F.C.T.D.).
Baroness Spencer-Churchill v. Cohen (1968), 55 C.P.R. 276 (T.M.O.B.)
Gerhard Horn Investments Ltd. v. Registrar of Trade-marks [1983] 2 F.C. 878 (F.C.T.D.).
General Motors of Canada v. Dcarie Motors Inc.,(2000) 9 C.P.R. (4th) 368 (F.C.A.).
27
28 Chapter 3 Registrable Trademarks
in the applicants country of origin, if among other things, the mark applied
for is not without distinctive character in Canada, having regard to all of the
circumstances including the length of time during which the mark has been
used in any country.13
The limitation can also be overcome if it can be shown that the mark has
acquired distinctiveness. A trademark that is primarily merely the name or
surname of an individual who is living or has died within the preceding
30 years, is registrable if it has been so used in Canada by the applicant or its
predecessor in title as to have become distinctive at the date of the filing of an
application for its registration.14
Paragraph 9(1)(l) of the Act prohibits the adoption of a trademark consisting of, or so nearly resembling as to be likely to be mistaken for, the portrait
or signature of any individual who is living or has died within the preceding
30 years.15 This prohibition may be overcome by obtaining the consent of the
individual involved16 but a signature may still be unregistrable by virtue of
subsection 12(1)(a).17
3. Descriptive or Deceptively Misdescriptive

Trademarks
Subsection 12(1)(b) of the Act provides that a trademark is not registrable if
it is, whether depicted, written or sounded, either clearly descriptive or deceptively misdescriptive in the English or French languages of the character, or
quality of the wares or services in association with which it is used or proposed to be used or of the conditions of or the persons employed in their
production or of their place of origin.18
There are two underlying policies associated with this limitation. First, it
prevents applicants from monopolizing descriptive words to stop competitors
from using those words to describe their products.19 Second, it prevents the
public from being misled by the use of deceptively misdescriptive marks.20
13. Subsection 14(1) of the Trade-marks Act and see Chapter 4, part 3(b).
14. Subsection 12(2) and see Matol Biotech Labratoriees Ltd. v. Jurak Holdings Ltd. (2008),
69 C.P.R (4th) 321 (F.C.); Miranda Aluminum Inc. v. Miranda Windows & Doors Inc. 2009
FC 669 (F.C.) and part 4 of this chapter.
15. See subsection 12(1)(e).
16. Subsection 9(2)(a).
17. Murjani International Ltd. v. Universal Impex Co. (1985), 5 C.P.R. (3d) 115 (T.M.O.B.),
(1986), 12 C.P.R. (3d) 481 (F.C.T.D.).
18. See S.C. Johnson & Son, Ltd. v. Marketing International Ltd. [1980] 1 S.C.R. 99 (S.C.C.).
19. General Motors Corp. v. Bellows, [1948] Ex. C.R. 187 (Ex. Ct.); affirmed [1949] S.C.R.; Fibergrid Inc. v. Precisioneering Ltd. (1991), 35 C.P.R. (3d) 221 (F.C.T.D.).
20. Atlantic Promotions Inc. v. Registrar of Trade-marks, (1984), 2 C.P.R. (3d) 183 (F.C.T.D.).
Descriptive or Deceptively Misdescriptive Trademarks

The test for determining whether a trademark is either clearly descriptive or
deceptively misdescriptive is the immediate or first impression formed by the
ordinary user or purchaser of the wares or services in issue.21 The determination must not be based on research into or critical analysis of the meaning of
the words.22 The common meaning of words in their ordinary and popular
sense must be determined and the perspective of experts or people with special
knowledge may not be representative of the average ordinary purchaser.23
The addition of design features to a composite mark may not be sufficient
to avoid the limitation. A trademark, which when sounded, is clearly descriptive of the character or quality of the ware(s) or service(s) in issue, may not be
registrable despite the existence of the design features.24 In order to determine whether the design features are sufficiently distinctive to result in a
registrable mark, the first impression created by the mark must be considered. If the substance of the mark is the design, the prohibition should not
apply.25 If the substance of the mark is a word or words which can be sounded
and are clearly descriptive, the mark may not be registrable.
While there is agreement concerning the principles that apply to
determine whether a trademark is either clearly descriptive or deceptively
misdescriptive, their application in a specific case may not be. There are many
reported cases dealing with clearly descriptive marks which are difficult
to reconcile.
A trademark that is not registrable by reason of this provision is registrable
if it has been so used in Canada by the applicant or its predecessor in title as
to have become distinctive at the date of filing of an application for its registration.26 A non-Canadian trademark owner may also claim the benefit of
section 14 to obtain a registration in Canada based on a trademark which has
been duly registered in the applicants country of origin, if among other
21. ITV Technologies Inc. v WIC Television Ltd. (2003), 29 C.P.R. (4th) 182 (F.C.T.D.), (2005),
38 C.P.R (4th) 481 (F.C.A.).
22. Oshawa Group Ltd. v. Registrar of Trade-marks (1980), 46 C.P.R. (2d) 145 (F.C.T.D); ITV
Technologies Inc. v WIC Television Ltd. (2003), 29 C.P.R. (4th) 182 (F.C.T.D.), (2005), 38 C.P.R
(4th) 481 (F.C.A.).
23. John Labatt Ltd. v. Carling Breweries Ltd. (1974), 18 C.P.R. (2d) 15 (F.C.T.D.); Consorzio del
Prosciutto di Parma v. Maple Leaf Meats (2001), 11 C.P.R (4th) 48 (F.C.T.D.).
24. Best Canadian Motor Inns Ltd. v. Best Western International, Inc., (2004), 30 C.P.R. (4th) 481
(F.C.). A Canadian Intellectual Property Office (CIPO) Practice Notice, dated February 16,
2005, states that an application for a composite mark will be considered not registrable if it
contains clearly descriptive or deceptively misdescriptive words which are the dominant feature of the mark. Factors to be considered include the relative size of the design and the
words, the inherent distinctiveness of the design, and the font, style, and layout of the
words.
25. Fiesta Barbecues Ltd. v. General Housewares Corp. (2003), 28 C.P.R. (4th) 60 (F.C.).
26. Subsection 12(2) and see part 4 of this chapter.
29
30
things, the mark applied for is not without distinctive character in Canada,
having regard to all of the circumstances including the length of time during
which the mark has been used in any country.27
b) Clearly
The word clearly in the subsection means easy to understand, self-evident,
or plain. It is not synonymous with accurately.28 The limitation will apply
only if the trademark is clearly descriptive or deceptively misdescriptive. The
concept of clearness is an essential element to preclude registration.29
To be deceptively misdescriptive a trademark must first be found to be
descriptive and then be found to mislead the public as to the character or
quality of the wares or services.30 The test applied is whether an ordinary
consumer in Canada would be misled concerning the wares or services with
which the trademark is associated.31 The trademark SHAMMI applied for
use in association with a transparent polyethylene glove, which did not
contain any chamois or shammy leather, was found to be deceptively misdescriptive contrary to the subsection.32

The reference in the subsection to the English or French languages requires a
determination of English or French usage on an international basis and not
simply the English or French meanings then current in Canada.33 A descriptive connotation in a foreign language will not preclude registration unless an
27.
28.
29.
30.
Subsection 14(1) of the Trade-marks Act and see Chapter 4, part 3(b).
Drackett Co. v. American Home Products Corp., [1968] 2 Ex. C.R. 89 (Ex. Ct.).
Thomas J. Lipton Ltd. v. Salada Foods Ltd., (No. 3), (1979) , 45 C.P.R. (2d) 157 (F.C.T.D.).
Candrug Health Solutions Inc. v. Thorkelson 2007 FC 411, 60 C.P.R (4th) 35 (F.C.), 2008 FCA
100, 64 C.P.R. (4th) 431 (F.C.A.); Oshawa Group Ltd. v. Registrar of Trade-marks, (1980), 46
C.P.R. (2d) 145 (F.C.T.D).
31. Atlantic Promotions Inc. v. Registrar of Trade-marks (1984), 2 C.P.R. (3d) 183 (F.C.T.D.).
32. Dep. A.G. v. Biggs Laboratories (Can.) Ltd,. (1964), 42 C.P.R. 129 (Ex. Ct.).
33. Home Juice Co. v. Orange Maison Ltee. [1970] S.C.R. 942 (S.C.C.).
ordinary consumer in Canada of the wares or services in issue would understand the mark as being clearly descriptive.34
If a word is new to the English or French languages, it may not be clearly
descriptive. However, the word must not be a dictionary word and be without
a clearly discernible meaning.35
The word character as used in the subsection means a feature, trait, or characteristic of the wares or services listed in the application.36 The trademark
should not be considered by itself but rather in relation to those wares or
services.37
The reference to quality means that laudatory words, which praise or
attribute a quality or value to a product or a service, will likely be clearly
descriptive.38 The words Select, Superior, Perfect or Better will likely
be found to be clearly descriptive.39 A laudatory connotation may not be fatal
and the mark must still be considered in its entirety.40
f) Conditions of or the Persons Employed in Production

of Wares
A trademark, which is clearly descriptive or deceptively misdescriptive of the
conditions of or of the persons employed in the production of the wares or in
the provision of the services, is not registrable. The trademark KILNCRAFT was
found not registrable in association with tableware since the first impression of
34. Gula v. B. Manischewitz Co., [1946] Ex. C.R. 570 (Ex. Ct.); affirmed (1947), 8 C.P.R. 103
(S.C.C.); B. Manischewitz Co. of Can. v. Hartstone, [1953] Ex. C.R. 1 (Ex. Ct.); Jordan & Ste.
Michelle Cellars Ltd. v. Gillespies & Co. (1985), 6 C.P.R. (3d) 377 (F.C.T.D.).
35. Pizza Pizza Ltd v. Reg. TM. (1982), 67 C.P.R. (2nd) 202 (F.C.T.D.); Clarkson Gordon v.
Registrar of Trade-marks (1985), 5 C.P.R. (3d) 252 (F.C.T.D.).
36. Drackett Co. v. American Home Products Corp., [1968] 2 Ex. C.R. 89 (Ex. Ct.).
37. Thompson J. Lipton Ltd. v. Salada Foods Ltd., (No. 3) (1979), 45 C.P.R. (2d) 282 (F.C.T.D.);
Jordan & Ste. Michelle Cellars Ltd. v. T.G. Bright & Co. (1984), 81 C.P.R. (3d) 103 (F.C.A.).
38. Registrar of Trade-marks v. G.A. Hardie & Co., [1949] S.C.R. 483 (S.C.C.); Mitel Corporation
v. Registrar of Trade-marks (1984), 79 C.P.R. (2d) 202 (F.C.T.D.); Cafe Supreme F. & P. Ltee. v.
Sons P.G. Can. (1984), 3 C.I.P.R. 201 (F.C.T.D.).
39. Mitel Corporation v. Registrar of Trade-marks (1984), 79 C.P.R. (2d) 202 (F.C.T.D.); Unilever
Canada Inc. v. Superior Quality Foods, Inc., (2007) 62 C.P.R. (4th) 75 (T.M.O.B.).
40. Nabisco Brands Ltd. v. Perfection Foods Ltd. (1985), 7 C.P.R. (3d) 468 (T.M.O.B.), (1986),
12 C.P.R. (3d) 456 (F.C.T.D.).
31
32 Chapter 3 Registrable Trademarks
an ordinary consumer in Canada on seeing the mark would be that the wares
were produced by a kiln process.41
There are few cases dealing with the reference to persons employed.
However, it has been found that the word engineer is not registrable for use
in association with services as it would be assumed that the services would be
performed by a professional with that designation.42
g) Place of Origin
A trademark which is clearly descriptive or deceptively misdescriptive of the
place of origin of the wares or services it is sought to be registered in association with, is not registrable.43 It must be shown that wares or services referred
to in the application are produced or offered in the geographic area suggested
by the mark and an average Canadian consumer would be aware of the
connection.44 The fact that words indicate origin alone does not preclude
registration.45
h) Suggestive Words
A mark which is merely suggestive is not clearly descriptive.46 A mark
which creates a covert and skillful allusion to the character or quality of the
wares may be registrable.47
A mark which describes a condition or manner in which the wares or services are used by consumers may not be clearly descriptive of the character or
quality of the wares or services. For example, the trademark KOOL ONE in
41. Staffordshire Potteries Ltd. v. Registrar of Trade-marks (1976), 26 C.P.R. (2d) 134 (F.C.T.D.);
Lubrication Engineers Inc. v. Canadian Council of Professional Engineers (1992), 41 C.P.R.
(3d) 243 (F.C.A.). CIPO has published a practice note concerning professional designations
in the Trade-marks Journal, dated June 13, 2007.
42. Canadian Council of Professional Engineers v. John Brooks Co., 2004 FC 586, 35 C.P.R. (4th)
507 (F.C.) and see CIPO practice note concerning professional designations in the Trademarks Journal, dated June 13, 2007.
43. Atlantic Promotions Inc. v. Registrar of Trade-marks (1984), 2 C.P.R. (3d) 183 (F.C.T.D.).
44. Consorzio del Prosciutto di Parma v. Maple Leaf Meats (2001), 11 C.P.R (4th) 48 (F.C.T.D.);
but compare with Sociedad Agricola Teresa Ltda v. Vina Leyda Limitada, 2007 FC 1301 (F.C.)
which found that as far as place of origin was concerned it was not dependent on the knowledge of an average Canadian consumer.
45. Great Lake Hotels Ltd. v. Noshery Ltd. (1968), 56 C.P.R. 165 (Ex. Ct.).
46. Dep. A.G. v. v. Jantzen of Canada Ltd. (1964)[1965] Ex. C.R. 227 (Ex. Ct.); Thomas J. Lipton
Ltd. v. Salada Foods Ltd. (No. 3), (1979), [1980] 1 F.C. 740, 45 C.P.R. (2d) 282 (F.C.T.D.);
Jordan & Ste-Michelle Cellars Ltd./Les Caves Jordan & Ste-Michelle Ltee. v. T.G. Bright & Co.
(1984), 2 C.I.P.R. 45 (F. C.A.).
47. Dep. A.G. v. v. Jantzen of Canada Ltd. (1964)[1965] Ex. C.R. 227 (Ex. Ct).
association with beer was found to be suggestive and registrable because it

48
did not relate to an intrinsic quality or characteristic of the product.
A trademark that refers to the character or quality of wares or services in
an elliptical way may be clearly descriptive.49 However the reference to elliptical does not encompass any indirect reference to the nature or characteristics of a product.50
i) Coined Words
Although the individual words of a composite trademark may be clearly
descriptive, the mark as a whole may be registrable if the words do not go
together in a natural way and create an impression separate and distinct from
its components.51 Joining together of two descriptive words to form a single
word,52 a short, meaningless addition,53 or the misspelling of a clearly descriptive word, may not be sufficient to avoid the limitation. In each case, the
impression created by the trademark as a whole, whether depicted, written,
or sounded, must be considered.
j) Disclaimer
The Registrar of Trade-marks may require an applicant for registration of a
trademark to disclaim the right to the exclusive use of a portion of the
trademark which is not independently registrable.54 The disclaimer does
not prejudice or affect the applicants current rights in the disclaimed
matter or the applicants right to registration on a subsequent application
if the disclaimed matter has become distinctive of the applicants wares or
services.
48.
49.
50.
51.
52.
Registrar of Trade Marks v. Frank J. Provenzano (1978), 40 C.P.R. (2d) 288 (F.C.A.).
S.C. Johnson & Son, Ltd. v. Marketing International Ltd. [1980] 1 S.C.R. 99 (S.C.C.).
Fibergrid Inc. v. Precisioneering Ltd. (1991), 35 C.P.R. (3d) 221 (F.C.T.D.).
Pizza Pizza Ltd v. Registrar of Trade-marks (1982), 67 C.P.R. (2nd) 202 (F.C.T.D).
General Motors Corp. v. Bellows [1948] Ex. C.R. 187 (Ex. Ct.); affirmed [1949] S.C.R. 678;
Shell Canada Limited v. P.T. Sari Inco Food Corporation, 2008 FCA 279, 68 C.P.R. (4th) 390
(F.C.A.).
53. Thomson Research Assoc. Ltd. v. Registrar of Trade-marks (1982), 67 C.P.R. (2d) 205 (F.C.T.D.);
affirmed (1983), 71 C.P.R. (2d) 287 (F. C.A.).
54. Section 35. By Practice Notice, published 2007-08-15 CIPO has indicated that effective
immediately the Registrar will generally no longer require an applicant for registration of a
trademark to enter disclaimers pursuant to section 35 of the Act. Disclaimers will continue
to be required for 11-point maple leaf designs which are governed by Order in Council P.C.
1965-1623, dated September 2, 1965. Voluntary disclaimers will continue to be accepted.
33
34
A disclaimer of part of a trademark may be used to overcome an objection

based on descriptiveness or the use of a name or surname so long as the
disclaimed matter is not the dominant feature of the composite mark55 and
the remaining portion of the mark contains distinctive matter.56 It has been
suggested that a disclaimer should not be used in relation to deceptively misdescriptive matter so as to render a mark as a whole registrable when the
deceptive matter is the dominant feature of the composite mark.57
4. Acquired DistinctivenessSecondary
Meaning
a) Applicability
Subsection 12(2) of the Act provides relief for a trademark that is not registrable by reason of the limitations of subsections 12(1)(a), (trademarks that
are primarily merely names or surnames) or subsection 12(1)(b) (clearly
descriptive or deceptively misdescriptive trademarks). A mark that is not registrable as a result of these subsections, is registrable if it has been so used in
Canada by the applicant or its predecessor in title as to have become distinctive at the date of filing an application for its registration.
Subsection 12(2) of the Act does not apply to marks subject to the remaining limitations of subsection 12(1) including
(a) a trademark which is the name in any language of the wares or services
in connection with which it is used or proposed to be used;
(b) in whole or in part a protected geographical indication, where the
trademark is to be registered in association with a wine not originating
in a territory indicated by the geographical indication; or
(c) in whole or in part a protected geographical indication, where the
trademark is to be registered in association with a spirit not originat58
ing in a territory indicated by the geographical indication.
55. Lake Ontario Cement Ltd. v. Registrar of Trade-marks (1976), 31 C.P.R. (2d) 103 (F.C.T.D.);
Canadian Council of Professional Engineers v. John Brooks Co., 2004 FC 586, 35 C.P.R. (4th)
507 (F.C.).
56. Molson Cos. Ltd. v. John Labatt Ltd. (1981), 58 C.P.R. (2d) 157 (F.C.T.D.); Canadian Council
of Professional Engineers v. John Brooks Co., 2004 FC 586, 35 C.P.R. (4th) 507 (F.C.).
57. Lake Ontario Cement Ltd. v. Registrar of Trade-marks (1976), 31 C.P.R. (2d) 103 (F.C.T.D.).
58. Subsection 12(1)(c), (g) and (h).
Acquired DistinctivenessSecondary Meaning
An applicant who claims that its trademark is registrable under subsection 12(2)
must file with the Registrar evidence by way of affidavit or statutory declaration establishing the extent to which and the time during which the trademark has been used in Canada and any other evidence the Registrar may
require in support of the claim.59 The onus of showing acquired distinctiveness is on the applicant. While this has been categorized as being a heavy
burden,60 recent cases have clarified that the standard of proof remains on the
balance of probabilities and reference to a heavy burden refers to the exceptional nature of subsection 12(2).61
The requirements of the subsection may be satisfied by evidence of
acquired distinctiveness in a defined territorial area in Canada, such as a
specific province or provinces. In such a case, the Registrar will restrict the
registration to the defined territory in which the trademark has shown to
have become distinctive.62
The issue is whether the mark has been so used in Canada as to have become
distinctive at the date of filing of an application for its registration.63 A claim
of acquired distinctiveness depends on all the circumstances relating to the
use of the mark. Exclusive use of the mark may be compelling evidence but is
not an absolute requirement. A trademark that has acquired distinctiveness
in a substantial portion of the relevant market may be registered.64
In considering the evidence presented, the methods that were employed in
selecting each deponent will be assessed to determine whether or not they are
representative.65 Leading questions or other inappropriate practices must not
be used to obtain evidence.66 Survey evidence, if reliable and valid, may be
used to show acquired distinctiveness.67
59. Subsection 32(1) and see the Trade-mark Examination Manual, paragraph. IV.10.03 for a
description of the Registrars requirements.
60. Standard Coil Products (Canada) Ltd. v. Standard Radio Corp. (1971), 1 C.P.R. (2d) 155
(F.C.T.D.), affirmed (1976), 26 C.P.R. (2d) 288 (F.C.A.).
61. John Labatt Ltd. v. Molson Breweries, a Partnership (2000), 5 C.P.R. (4th) 180 (F.C.A.).
63. Subsection 12(2) and see John Labatt Ltd. v. Molson Breweries, a Partnership (2000), 5 C.P.R.
(4th) 180 (F.C.A.).
64. John Labatt Ltd. v. Molson Breweries, a Partnership (2000), 5 C.P.R. (4th) 180 (F.C.A.).
65. Robert C. Wian Enterprises Inc. v. Mady (1965), 46 C.P.R. 147 (Ex. Ct.).
66. Registrar of Trade-marks v. G.A. Hardie & Co. [1949] S.C.R. 483 (S.C.C.).
67. Canadian Schenley Distilleries Ltd. v. Canadas Man. Distillery Ltd. (1975), 25 C.P.R. (2d) 1
(F.C.T.D.) and see Mattel, Inc. v. 3894207 Canada Inc. (2006), 49 C.P.R. (4th) 321 (S.C.C.)
concerning survey evidence.
35
36
A registration obtained pursuant to the subsection will be subject to the

statutory limitations concerning infringement. No registration of a trademark prevents the bona fide use by a person of his or her own name as a
trade name or the bona fide use, other than as a trademark, of any descriptive
or geographical expression, in such a manner as to not likely have the
effect of depreciating the value of the goodwill attaching to the registered
trademark.68

Subsection 12(1)(c) provides that a trademark is not registrable if it is the
name in any language of any of the wares or services in association with which
it is used or proposed to be used. Unlike subsection 12(1)(b) all languages are
considered. The mark as a whole must be the name of the wares or services
based on the immediate and first impression of the Canadian everyday user
of the wares or services in issue.69
If a portion of a composite mark is the name of the wares or services and
the remaining portion of the mark contains distinctive matter, the mark may
be registrable with a disclaimer of the right to the exclusive use of the portion
of the trademark which is a name.
If a trademark becomes the name of the wares through popular use of the
mark as a generic term, the mark may lose its distinctiveness.70

Subsection 12(1)(d) provides that a trademark is not registrable if it is confusing with a registered trademark. The Act provides that confusing when
applied as an adjective to a trademark or trade name means a trademark or
trade name, the use of which would cause confusion in the manner and the
circumstances described in section 6.71 Section 6 provides that the use of a
68. Section 20.

69. ITV Technologies Inc. v WIC Television Ltd., (2003), 29 C.P.R. (4th) 182 (F.C.T.D.), (2005) 38
C.P.R (4th) 481 (F.C.A.).
70. Aladdin Industries Inc. v. Canadian Thermos Products Ltd., [1969] Ex. C.R. 80, (Ex.Ct.)
affirmed [1974] S.C.R. 845 (S.C.C.).
71. Section 2.
Confusing With a Registered Trademark
trademark causes confusion with another trademark if the use of both trademarks in the same area would be likely to lead to the inference that the wares
or services associated with those trademarks are manufactured, sold, leased,
hired, or performed by the same person, whether or not such wares or
services are of the same general class.
In determining whether trademarks are confusing, the court or the
Registrar, as the case may be, must have regard to all of the surrounding
circumstances including:
(a) the inherent distinctiveness of the trademarks and the extent to which
they have become known;
(b) the length of time the trademarks have been in use;
(c) the nature of the wares, services, or business;
(d) the nature of the trade; and
(e) the degree of resemblance between the trademarks in appearance or
sound or in the ideas suggested by them.72
During the course of the prosecution of an application, an examiner may
issue a report taking the position that the applied-for mark is unregistrable
on the ground that it is confusing with a registered trademark. A third party
may also oppose an application on the ground that it is confusing with a
registered trademark.
b) Associated Marks
Section 15(1) provides that confusing trademarks are registrable if the
applicant is the owner of all such trademarks. Such marks are known as associated trademarks.73 To obtain the benefit of the subsection, the applicant for
registration of the confusing trademark and the owner of the registered trademark must be the same person. The subsection does not apply to related
companies.74
Upon the registration of any trademark associated with any other registered trademark, a note of the registration of each trademark is made on the
record of the registration of the other trademark.75
No amendment of the register recording any change in the ownership
or in the name or address of the owner of any one of a group of associated
72. Subsection 6(5) and see Chapter 11.

73. Subsection 15(1) and see Wilkinson Sword (Can.) Ltd. v. Juda (1968), 51 C.P.R. 55 (Ex. Ct.).
74. Registrar of Trade-marks v. Aciers (1978), 40 C.P.R. (2d) 28 (F.C.A.). The term related companies is defined in section 2.
37
38
trademarks will be made unless the Registrar is satisfied that the same change
has occurred with respect to all of the trademarks in such group and corresponding entries are made contemporaneously with respect to all such trademarks.76 As a result, the Registrar has a duty to refuse to record any assignment
or change relating to only one of the associated trademarks.
The Act does not preclude an unregistered transfer to a third party of
one of the associated marks but such a course action may result in a loss of
distinctiveness of the marks.77

A trademark is not registrable if it is
(a) a mark of which the adoption is prohibited by section 9 or 10;78
(b) a denomination under the Plant Breeders Rights Act,79 the adoption of
which is prohibited by section 10.1;
(c) in whole or in part a protected geographical indication, where the
trademark is to be registered in association with a wine not originating
80
in a territory indicated by the geographical indication;
(d) in whole or in part a protected geographical indication, where the
trademark is to be registered in association with a spirit not originat81
ing in a territory indicated by the geographical indication; or
(e) subject to subsection 3(3) and paragraph 3(4)(a) of the Olympic and
Paralympic Marks Act,82 a mark the adoption of which is prohibited by
83
subsection 3(1) of that Act.
76. Subsection 15(3) and see Philco International Corp. v. Registrar of Trade-marks (1980), 48
C.P.R. (2d) 86 (F.C.T.D.).
77. Subsection 48(2) and see Wilkinson Sword (Can.) Ltd. v. Juda (1968), 51 C.P.R. 55 (Ex. Ct.).
78. Subsection 12(1)(e) and see Chapter 2, part 2(e).
79. S.C. 1990, c. 20.
80. Subsection 12(1)(g).
81. Subsection 12(1)(h).
82. S.C. 2007, c. 27.
83. Subsection 12(1)(i).
CHAP T ER
4
Acquisition of Rights
1. Adoption
40
2. Making Known
41
3. Registration and Use in the Applicants Country of Origin
42
a) Applications
42

Country of Origin
43
(i) Availability
43
(ii) Substantive Requirements
44
39
45
40
Chapter 4 Acquisition of Rights
1. Adoption
The Trade-marks Act provides that rights in a mark are acquired by adopting
it. A trademark is deemed to be adopted by a person when that person or his
or her predecessor in title commenced to use it in Canada or make it known
in Canada.1 If the mark has not been used or made known in Canada by the
applicant or his or her predecessor in title, it is deemed to be adopted on the
filing of an application for registration of a trademark in Canada.2 These
provisions are definitional in nature and are applied in the interpretation of
the Act.3
The term person includes any lawful trade union, any lawful association
engaged in trade or business or the promotion thereof, and the administrative authority of any country, state, province, municipality, or other orga4
nized administrative area.
An application for a mark may be filed on the basis of a) the use the trademark in Canada,5 b) making the trademark known in Canada,6 c) registration
and use in the country of origin of the applicant,7 and d) proposed use.8
An application can include multiple grounds as the basis of registration.
The term country of origin means:
(a) the country of the Union in which the applicant for registration of a
trademark had at the date of the application a real and effective industrial or commercial establishment, or
(b) if the applicant for registration of a trademark did not at the date of the
application have in a country of the Union an establishment as
described in paragraph (a), the country of the Union where he or she
on that date had his or her domicile, or
(c) if the applicant for registration of a trademark did not at the date of the
application have in a country of the Union an establishment as
described in paragraph (a) or a domicile as described in paragraph
(b), the country of the Union of which he or she was on that date a
9
citizen or national.
1.
2.
3.
4.
5.
6.
7.
8.
9.
Section 3.
Section 3.
Enterprise Rent-A-Car Co. v. Singer (1998), 79 C.P.R. (3d) 45 (F.C.A).
Section 2. The Interpretation Act, R.S., 1985, c. I-21, states that in every enactment person
includes a corporation.
Subsection 16(1).
Subsection 16(1).
Subsection 16(2).
Subsection 16(3).
Section 2.
Making Known
The term country of the Union is defined to mean a country that is a

member of the Union for the Protection of Industrial Property constituted
under the Convention of the Union of Paris or any member of the World
Trade Organization.10
In addition to rights available under the Act, common law rights may be
available. However, common law rights are only obtained when goodwill or
reputation is established in the minds of purchasers in a specific territory by
associating the trademark, including product trade dress, with specific goods
or services such that the trademark/trade dress is recognized by purchasers as
distinctive of the owners goods or services.11 Since common law rights are
generally tied to trade dress, they are more limited than rights under the
Trade-marks Act which generally focus on the right to use a mark.
2. Making Known
A trademark is deemed to be adopted when a person or his or her predecessor
in title made the trademark known in Canada.12 However, as will be seen, the
requirements to establish the making known of a mark are restrictive.
A trademark is deemed to be made known in Canada by a person only if
the mark is used by such person in a country of the Union, other than Canada,
in association with wares and services and:
(a) the wares are distributed in association with the mark in Canada; or
(b) the wares or services are advertised in association with it in
(i) any printed publication circulated in Canada in the ordinary
course of commerce among potential dealers in or users of the
wares or services, or
(ii) radio broadcasts ordinarily received in Canada by potential
dealers in or users of the wares or services
and the mark has become well known in Canada by reason of the distribution
or advertising.13 These requirements are peremptory and are matters of
substantive law and not evidence.14

11. Ciba-Geigy Canada Ltd. v. Apotex (1992), 44 C.P.R. (3d) 289 (S.C.C.) and see Chapter 14 for
a discussion of these rights.
12. Section 3.
13. Section 5.
14. Valles Steak House v. Tessier (1980), 49 C.P.R. (2d) 218 (F.C.T.D.); Motel 6 Inc. v. No. 6 Motel
Ltd. (1981), 56 C.P.R. (2d) 44 (F.C.T.D.).
41
42 Chapter 4 Acquisition of Rights
For the purpose of establishing that a mark has been made known it is not
sufficient to show circulation of printed publications or radio broadcasts
alone. It must be shown that the publications or broadcasts circulated among
or were ordinarily received in Canada by potential dealers in or users of such
wares or services.15
The broadcasts relied upon must be substantial and have a significant
impact in Canada.16 Only reputation acquired as a result of the broadcasts
described above can be considered; reputation acquired by word of mouth is
not relevant.17
For the purpose of establishing that a mark has been made known it is sufficient to show that a substantial area or part of Canada knows the mark as
opposed to the entire country.18
3. Registration and Use in the Applicants

Country of Origin
a) Applications
A non-Canadian trademark owner may file an application for a mark on the
basis of registration and use in the owners country of origin.19 The particulars of the registration and use in the country of origin must be set out in the
application.20 Before such an application will be approved for advertisement,
a certified copy of the registration must be filed.21 In order to obtain a registration it is not necessary to show use in Canada of the applied-for mark,22
but any registration may be subject to attack if use does not occur.23
It is important to be aware that the registration in the country of origin
must be accompanied by use. While the Registrar does not require proof of
24
use, the application may be opposed on the grounds that use did not occur.
15. Marineland Inc. v. Marine Wonderland and Animal Park (1974), 16 C.P.R. (2d) 97
(F.C.T.D.).
16. Andres Wines Ltd. & E. & J. Gallo Winery (1975), 25 C.P.R. (2d) 126 (F.C.A.); Motel 6, Inc. v.
No. 6 Motel Ltd. (1981), 56 C.P.R. (2d) 44 (F.C.T.D.).
17. Motel 6 Inc. v. No. 6 Motel Ltd. (1981), 56 C.P.R. (2d) 44 (F.C.T.D.).
18. Valles Steak House v. Tessier (1980), 49 C.P.R. (2d) 218 (F.C. T.D.).
20. Subsection 30(d).
23. Generally after three years under the summary provisions of section 45 concerning use or
at any time in the Federal Court under section 18, see Chapter 10.
24. Allergan Inc. v. Lancme Parfums and Beaut & Cie (2007), 64 C.P.R. (4th) 147 (T.M.O.B.).
Registration and Use in the Applicants Country of Origin 43
If an applicant applies to register the same or substantially the same trademark in Canada for use in association with the same kind of wares or services,
within six months from the date of first filing in a country which adheres to
the Paris Convention or is a member of the World Trade Organization, then
the date of filing in that country becomes the effective Canadian filing
date.25

Country of Origin
(i) Availability
Section 14 of the Act provides that notwithstanding section 12, a trademark
that the applicant or applicants predecessor in title has caused to be duly
registered in or for the country of origin of the applicant is registrable if,
in Canada:
(a) it is not confusing with a registered trade mark;
(b) it is not without distinctive character, having regard to all the circumstances of the case, including the length of time during which it has
been used in any country;
(c) it is not contrary to morality or public order or of such a nature as to
deceive the public; or
(d) it is not a trade-mark the adoption of which is prohibited by sections 9
or 10.
Section 14 is only available to an applicant with a country of origin that is a
member of the Paris Convention or the World Trade Organization and in
relation to a trademark that the applicant or applicants predecessor in title
has caused to be duly registered. The section does not apply to trademarks
that have been used but not registered in the country of origin.
A claim to the benefit of the section is not restricted to an application
based on registration and use and the section can apply to an application
based on use or proposed use in Canada.26
An applicant who is entitled to claim the benefit of the section may do so
at any time during the application process but the registration relied upon
must exist at least until the Canadian registration is granted.27
25. Section 34 and see Chapter 6, part 3.

26. McDonalds Corp. v. Dep. A.G. Can. (1977), 31 C.P.R. (2d) 272 (F.C.T.D.).
27. W.R. Grace & Co. v. Union Carbide Corp. (1987), 14 C.P.R. (3d) 337 (F.C.A.).
44
Chapter 4 Acquisition of Rights
Compliance with section 14 avoids the requirements set out in section 12

relating to registrability. A trademark which is not registrable because it is
clearly descriptive, contrary to subsection 12(1)(b), may still be registrable if
the requirements of section 14 are satisfied.28
If the trademark applied for differs from the trademark registered in the
country of origin only by elements that do not alter its distinctive character or
affect its identity in the form under which it is registered, the mark will be
considered as the trademark so registered.29
(ii) Substantive Requirements
The requirements of subsections 14(a) and (d) are not different from the
requirements of subsection 12(1)(d) and (e), which are applicable to all
marks.30
Subsection 14(b) sets out a test for registrability which is substantially different than that of subsections 12(1)(a) to (c). The term distinctive character means that the trademark must have the qualities characteristic of a
distinctive trademark and actually distinguish the wares or services of the
owner from the wares or services of others or be adapted to distinguish the
wares or services of the owner from the wares or services of others.31
Subsection 14(c) provides that the mark must not be contrary to morality
or public order or of such a nature as to deceive the public.32
An applicant claiming the benefit of section 14 must provide such
evidence as the Registrar may require by way of affidavit or statutory declaration.33 The onus of showing that a descriptive trademark is not without distinctive character is similar to the onus under subsection 12(2).34 Evidence
showing that the mark has become distinctive of the applicants wares or
services in Canada is required.35
The fact that an applicant relied on section 14 does not prevent an
interested third party from commencing proceedings to attack the validity of
28. Pilkington Brothers (Can.) Ltd. v. International Molded Plastics Inc. (1957), 27 C.P.R. 79
(Reg. T.M.).
30. See Chapter 3, parts 6 and 7.
31. Imperial Tobacco Co. v. Philip Morris (1976), 27 C.P.R. (2d) 205 (Reg. T. M.); Fairmount Resort
Properties Ltd. v. Fairmount Hotel Management, L.P. (2008), 67 C.P.R. (4th) 404 (F.C.).
32. This may not be substantially different than the requirements of subsection 9(1)(j) which
applies to all marks, see Chapter 2 part 2(e).
34. W.R. Grace & Co. v. Union Carbide Corp. (1987), 14 C.P.R. (3d) 337 (F.C.A.); John Labatt Ltd.
v. Molson Breweries, a Partnership (2000), 5 C.P.R. (4th) 180 (F.C.A.).
35. Canadian Counsel of Professional Engineers v. Lubrication Engineers, Inc. (1992), 41 C.P.R.
(3d) 243 (F.C.A.); Boston Pizza International Inc. v. Boston Chicken Inc. (2003), 24 C.P.R.
(4th) 150 (F.C.A.).
Use or Proposed Use in Canada
the registration on the basis of lack of distinctiveness at the time those

proceedings are commenced.36 As a result, a trademark owner who has relied
on section 14 may find their registration at risk in such proceedings unless
they can show some degree of acquired distinctiveness through use in Canada.
Delay in use following registration will work against the registrant.37

A trademark is deemed to be adopted when a person or his or her predecessor
in title commenced to use the trademark in Canada.38 An application for a
39
mark may be filed on the basis of use of the trademark in Canada. The
40
requirements of the Act relating to use must be satisfied.
If the trademark has not previously been used by the applicant or his or
her predecessor in title, the mark is deemed to be adopted on the filing of an
application for registration of a trademark in Canada.41 A proposed trademark means a mark that is proposed to be used by a person for the purpose
of distinguishing or so as to distinguish wares or services manufactured, sold,
leased, hired, or performed by that person from those manufactured, sold,
leased, hired, or performed by others.42
An application for such a trademark must contain a statement that the
applicant, by itself or through a licensee, or both, intends to use such trademark in Canada.43 Use must commence after filing the application but must
occur before a registration may be obtained.
36.
37.
38.
39.
40.
41.
42.
43.
Subsection 18 (1)(b).
Boston Pizza International Inc. v. Boston Chicken Inc. (2003), 24 C.P.R. (4th) 150 (F.C.A.).
Section 3.
Subsection 16(1).
Section 4 and see Chapter 5.
Section 3.
Section 2.
Subsection 30(e).
45
CHAP T ER
5
Trademark Use
48
2. Wares
48
49
49
49
3. Services
50
51
5. Deviating Use
51
47
48
Chapter 5 Trademark Use

Trademark use is of fundamental importance under the Trade-marks Act
since rights are determined by use, for example:
a) A trademark is deemed to have been adopted when a person or its predecessor in title commenced to use the trademark in Canada.1
b) A registration gives to the owner the exclusive right to the use of the
mark in Canada in respect of the wares or services set out in the
registration.2
c) Use must be shown in order to maintain a registration which is the subject of section 45 proceedings.3
d) A plaintiff must show that it has used its mark and the defendant has
used this mark or a confusing mark in order to be successful in an
action for infringement.
Section 4 provides specific closed definitions of use in association with
wares, services, and exported wares4 which can be restrictive, particularly for
wares. Each definition refers to a trade-mark and incorporates the requirement that the trade-mark be used for the purposes of distinguishing wares
or services manufactured, sold, leased, hired, or performed by the owner
from those manufactured, sold, leased, hired, or performed by others.5
Many cases have considered whether use has been shown, particularly
in the course of proceedings decided under section 45 or in trademark
oppositions.
2. Wares
Subsection 4(1) states that 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
such 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
1.
2.
3.
4.
5.
Section 3.
Section 19.
See Chapter 10.
Section 4 and see Enterprise Rent-A-Car Co. v. Singe, (1998), 79 C.P.R. (3d) 45 (F.C.A.).
Bombardier Ltd. v. British Petroleum Co. Ltd., (1973), 10 C.P.R. (2d) 21 (F.C.A.); Canadian
Olympic Association v. Konica Canada Inc. (1991), 39 C.P.R. (3d) 400 (F.C.A.); Coca-Cola Ltd
v. Pardhan (1999), 85 C.P.R. (3d) 489 (F.C.A.).
Wares
given to the person to whom the property or possession is transferred.6

The use of the word means in the subsection suggests that the definition is
restrictive in nature.

In order to come within the subsection use must occur at the time of the
transfer of the property in or possession of such wares. The transfer of property or actual possession must occur in Canada. But if any part of the chain of
sale from manufacturer to consumer takes place in Canada this is sufficient.7
Placing an order or issuing a purchase order by itself is not sufficient to show
a transfer for the purpose of the subsection.

The subsection contemplates the normal course of trade as beginning with a
manufacturer and ending with a consumer, with a wholesaler and retailer, or
one of them, acting as an intermediary.8 However, the normal course of trade
may vary depending on the facts. For example, it is not necessary to show
a transfer to the final consumer and a transfer to an intermediary may be
sufficient.9
There must be a bona fide transaction.10 Token use such as test shipments
will not be sufficient.11 But sending of samples to develop potential sales,
if within the regular course of trade in an industry, may be sufficient.12
Notice of the association of the mark and the wares will be given to the person
to whom the property or possession is transferred if the mark is placed on the
packaging in which the wares are sold,13 or on a label attached to the wares.
6. Subsection 4(1); and see Clairol Int. Corp. v. Thomas Supply & Equipment Co. (1968), 55
C.P.R. 176 (Ex. Ct.); Cie generale des establissements Michelin-Michelin & Cie v. CAW-Canada
(1996), 71 C.P.R. (3d) 348 (F.C.T.D.).
7. Manhattan Industries Inc. v. Princeton Manufacturing Ltd. (1971), 4 C.P.R. (2d) 6 (F.C.T.D.).
9. Lin Trading Co. v. CBM Kabushiki Kaisha (1988), 21 C.P.R. (3d 417 (F.C.A.)
10. Molson Cos. Ltd. v. Halter, (1976), 28 C.P.R. (2d) 158 (F.C.T.D).
11. Ports International Ltd. v. Reg. Trade-marks [1984] 2 F.C. 119 (F.C.T.D).
12. ConAgra Foods, Inc. v. Featherstonehaugh & Co. (2002), 23 C.P.R. (4th) 49 (F.C.T.D.).
49
50
Chapter 5 Trademark Use
If the mark is not physically on the wares or their packaging, notice of

the association of the mark and the wares may be given by reproduction of
the mark on show cards, display units, or in other ways so long as notice
of the association is given at the time of the transfer of the property or
possession.14
The use of a trademark in advertising or promotional material in most
cases will not be sufficient to establish use in association with wares.15 For
example, use in a news release or in an advertisement or on a letterhead or
envelope has been found to be insufficient.16
3. Services
A trademark is deemed to be used in association with a service if it is used or
displayed in the performance or advertising of the service in Canada.17 The
word service is not defined in the Act and its meaning depends on the facts
of each case.18 A service is not restricted to those that are independently
offered to the public and a service may be ancillary to or connected with
wares.19 For example, when a company makes its coupons available to consumers so they may obtain the companys products at a reduced price, this
has been found to be use in association with a service.20 None of the restrictions relating to the use of a mark in association with wares described above
apply to the use of a mark in association with a service.21
The service must be performed in Canada. Use is not established by advertising a trademark in Canada when the performance of the service takes place
outside of Canada.22
14. Nissan Canada Inc. v. BMW Canada Inc. (2007), 60 C.P.R. (4th) 181 (F.C.A.), Gen. Mills Can.
Ltd. v. Procter & Gamble Inc. (1985), 6 C.P.R. (3d) 551 (T.M.O.B.).
15. Canadian Olympic Association v. Konica Canada Inc. (1991), 39 C.P.R. (3d) 400 (F.C.A.).
16. Molson Cos. Ltd. v. Halter (1976), 28 C.P.R. 158 (F.C.T.D.); Parker-Knoll Ltd. v. Registrar of
Trade-marks (1977), 32 C.P.R. (2d) 148 (F.C.T.D.); Plough (Canada) Ltd. v. Aerosol Fillers Inc.
(1979), 45 C.P.R. (2d) 194 (F.C.T.D.) affirmed 53 C.P.R. (2d) 62 (F.C.A.).
17. Subsection 4(2) and see Danjaq Inc. v. Zervas (1997), 75 C.P.R. (3d) 295 (F.C.T.D.).
18. Kraft Ltd. v. Canada (Registrar of Trade-marks) (1984), 1 C.P.R. (3d) 457 (F.C.T.D.).
19. Gesco Industries Inc v. Sim & McBurney (2000), 9 C.P.R. (4th) 480 (F.C.A.).
20. Kraft Ltd. v. Canada (Registrar of Trade-marks) (1984), 1 C.P.R. (3d) 457 (F.C.T.D.).
21. Gesco Industries Inc v. Sim & McBurney (2000), 9 C.P.R. (4th) 480 (F.C.A.).
22. Porter v. Don the Beachcomber (1966), 48 C.P.R. 280 (Ex. Ct.); Marineland Inc. v. Marine
Wonderland & Animal Park Ltd., [1974] 2 F.C. 558 (F.C.T.D.); Motel 6 Inc. v. No. 6 Motel Ltd.
(1981), 56 C.P.R. (2d) 44 (F.C.T.D.); Express File Inc. v. HRB Royalty Inc. (2005), 39 C.P.R.
(4th) 59 (F.C.)
Deviating Use 51

A trademark that is marked in Canada on wares or on packages in which they
are contained is, when such wares are exported from Canada, deemed to be
used in Canada in association with such wares.23 The purpose of the subsection is to protect producers who do not make local sales but export their
wares. In the absence of the subsection, a producer who subsequently used
the mark in domestic sales could sue the exporter for infringement. The subsection is not subject to subsection 4(1).24
5. Deviating Use
It has been held that the practice of departing from the precise form of a
trademark as registered is an objectionable and dangerous course of action,25
although more recent decisions of the Federal Court of Appeal have tempered this prohibition to some degree. The problem is that it can be difficult
to determine how significant the deviation must be in order to destroy the
validity of the mark. The Federal Court of Appeal has said that cautious variations can be made without adverse consequences if the same dominant features are maintained and the differences are so unimportant that an unaware
purchaser of the wares would not be mislead.26 Maintenance of the identity
and recognizability or commercial impression of the registered mark is of
vital importance.
The Federal Court of Appeal has also confirmed that the use of a trademark in conjunction with another trademark or a prefix may not be use of the
trademark but use of new mark. In the leading case, it was found that use of
the composite trademark CII HONEYWELL BULL did not constitute use of
the registered trademark BULL.27 The Court said that the practical test
to resolve a case of this nature is to compare the trademark as registered
with the trademark as used, and determine whether the differences are so
23.
24.
25.
26.
Subsection 4(3); and see Coca-Cola Ltd. v. Pardhan (1999), 85 C.P.R. (3d) 489 (F.C.A.).
Molson Companies Ltd. v. Moosehead Breweries Ltd. (1990), 32 C.P.R. (3d) 363 (F.C.T.D.).
Honey Dew Ltd. v. Rudd [1929] Ex. C.R. 83 (Ex. Ct.).
Promafil Canada Ltee. v. Munsingwear Inc. (1993), 44 C.P.R. (3d) 59 (F.C.A.); Saccone &
Speed Ltd. v. Registrar of Trade-marks (1982), 67 C.P.R. (2d) 119 (F.C.T.D.); Ivy Lea Shirt Co.
v. 1227624 Ontario Ltd. (2001), 11 C.P.R. (4th) 489 (F.C.T.D.); Marks & Clark v. Sparkles
Photo Limited [2005] FC 1012.
27. Registrar of Trade-marks v. Cie Int. pour lInformatique Cii Honeywell Bull S.A. (1985), 4
C.P.R. (3d) 523 (F.C.A.); reversing (sub nom. Cie Int. pour lInformatique Cii Honeywell Bull
S.A. v. Herridge, Tolmie) 1 C.I.P.R. 231 (F.C.T.D.) and see Nightingale Interloc Ltd. v. Prodesign
Ltd., (1984), 2 C.P.R. (3d) 535 (T.M.H.O.).
52 Chapter 5 Trademark Use
unimportant that an unaware purchaser would be likely to infer that both, in

spite of their differences, identify goods having the same origin.
The use of a variant of a registered mark can provide potential grounds for
expungement of the mark.28 To avoid these problems, a trademark should be
used in the form in which it is registered. Alternatively, a separate registration
can be obtained for the variant.
A similar sort of problem can occur if a trademark is not used as a trademark but is used as the name of the wares or service. If a trademark is widely
used by consumers as the generic name of the wares or services in issue, the
registration may become invalid on the basis that the trademark is no longer
distinctive.29
28. See Chapter 10.

29. Dubiner v. Cheerio Toys & Games Ltd. [1966] Ex. C.R. 801 Aladdin Industries Inc. v. Canadian
Thermos Products Ltd., [1969] Ex. C.R. 80, (Ex.Ct) affirmed [1974] S.C.R. 845 (S.C.C.).
CHAP T ER
6
Entitlement
1. Entitlement to Registration
54
2. Marks That Have Been Used or Made Known in Canada
55
3. Marks Registered and Used Abroad
56
4. Proposed Use Marks
57
53
54
Chapter 6 Entitlement
1. Entitlement to Registration
The Trade-marks Act contains rules for determining who is entitled to the
registration of a mark for which an application has been filed. In general
terms an applicant, who has filed an application that complies with the Act
for a mark that is registrable1 is entitled, subject to the completion of opposition proceedings,2 to secure a registration for a mark in association with the
applied for wares or services, unless at the priority date, the mark was confusing with
(a) a trademark, whether registered or not, that has been previously used
or made known in Canada by any other person;
(b) a trademark in respect of which an application for registration had
been previously filed by any other person; or
(c) a trade name3 that had been previously used by any other person.
The rules are applied on the priority date, which varies depending on the
basis on which the application is filed. Claims relating to entitlement are considered during examination, in opposition proceedings, or proceedings seeking to expunge a registration.4
The right of an applicant to secure registration of a registrable trademark
is not affected by the previous filing of an application for registration of a
confusing trademark by another person, unless the application for registration of the confusing trademark was pending at the date of advertisement of
the applicants application.5 As a result, a previously filed application will not
be taken into account if it was abandoned at the date of the advertisement of
the subsequent application.
The right of an applicant to secure registration of a registrable trademark
is not affected by the previous use or making known of a confusing trademark or trade name by another person, if the confusing trademark or trade
name was abandoned at the date of advertisement of the applicants application.6 As a result, an opponent who relies on such a confusing mark or trade
name must establish that it has not abandoned its mark or trade name at the
date of advertisement of the application.
1. See Chapter 3.
2. See Chapter 12.
3. A trade name is defined in section 2 of the Act to mean the name under which any business
is carried on, whether or not it is the name of a corporation, a partnership, or an individual.
4. See Chapter 10.
Marks That Have Been Used or Made Known in Canada 55
2. Marks That Have Been Used or Made Known

in Canada
An applicant who has filed an application for a trademark that complies with
the Act for a mark that is registrable and that the applicant or its predecessor
in title has used or made known in Canada in association with wares or services, is entitled, subject to the completion of opposition proceedings, to
secure its registration, unless at the date on which the applicant or its predecessor in title first used it or made it known, it was confusing with:
(a) a trademark that has been previously used or made known in
Canada;
been previously filed in Canada; or
(c) a trade name that had been previously used in Canada;
by any other person.
The priority date for applications based on use or making known in
Canada is the date of first use or making known not the date of the filing of
the application. The date of first use is stated in the application for each of
the general classes of wares or services described. Use of a trademark for the
purpose of making known must be prior to the date of the application for
registration and specified in the application.
The date of first use or making known is the only criteria for determining
entitlement to such applications. In a dispute between a principal and agent
or manufacturer and distributor concerning entitlement to a trademark, the
issue is whether the importer or agent, or the manufacturer or distributor, as
the case may be, was the first to use the trademark in Canada.7
An application may be opposed or attacked on the basis of previous use or
making known only at the suit of the person who first used the trademark
or made it known or his or her predecessor in title.8 In addition, such an
opponent must establish that it has not abandoned its mark or trade name at
the date of advertisement of the application.
7. Subsection 16(1); CBM Kabushiki Kaisha v. Lin Trading Co. (1985), 5 C.P.R (3d) 27 (T.M.O.B.);
affirmed (1987), 14 C.P.R. (3d) 32 (F.C.T.D.); affirmed (1988), 21 C.P.R. (3d) 417 (F.C.A);
Royal Doulton Tableware Ltd. v. Cassidys Ltd. (1984), 1 C.P.R. (3d) 214 (F.C.T.D.).
56 Chapter 6 Entitlement
3. Marks Registered and Used Abroad

An applicant who has filed an application for a trademark that complies with
the Act for a mark that is registrable and that the applicant or the applicants
predecessor in title has duly registered in or for the country of origin of the
applicant and has been used in association with wares or services is entitled,
subject to the completion of opposition proceedings, to secure its registration
in respect of the wares or services in association with which it is registered in
that country and has been used, unless at the date of filing of the application
it was confusing with
(a) a trademark that had been previously used in Canada or made known
in Canada;
been previously filed in Canada; or
(c) a trade name that had been previously used in Canada;
by any other person.9
An application should claim this ground only if the trademark was in use
in association with all of the applied-for wares or services before the date the
claim is filed in Canada.10 The use of the mark is not limited to the country of
origin of the applicant and may occur in any country.
The priority date for applications based on a mark registered and used
abroad is the date of the filing of the application or, if specific requirements
including requirements relating to timely filing are satisfied, the foreign filing
date. The applicant is entitled to obtain a registration and priority over
another person who has used or applied for the mark after the filing date.11
The term country of origin is defined by the Act to mean a country of the
Union (a member of the Paris Convention or the World Trade Organization)
in which the applicant had at the date of the application a real and effective
industrial or commercial establishment, his domicile, or was a citizen
or national.12 The name of the country of origin must be specified in the
application.
In order to support a claim under subsection 16(2) the trademark shown
in the registration in the country of origin of the applicant must be identical
in all respects with the mark of the application.
An applicant whose right to registration of a trademark is based on a
registration of the trademark in another country of the Union must, before
9.
10.
11.
12.
Subsection 16(2).
Allergan Inc. v. Lancme Parfums & Beaut & Cie (2007), 64 C.P.R (4th) 147 (T.M.O.B.).
Subsection 16(2).
Section 2.
Proposed Use Marks
the date of advertisement of the application, furnish a copy of the registration

certified by the office in which it was made, together with a translation thereof
into English or French if it is in any other language, and such other evidence
as the Registrar may require to establish fully the right to registration under
the Act. 13
When an application for the registration of a trademark has been made in
a country of the Union other than Canada and an application is subsequently
made in Canada for use in association with the same kind of wares or services
of the same or substantially the same trademark by the same applicant or the
applicants successor in title, the date of filing of the application in the other
country is deemed to be the date of filing of the application in Canada, and
the applicant is entitled to priority in Canada accordingly notwithstanding
any intervening use in Canada or making known in Canada or any intervening application or registration if
(a) the application in Canada, including or accompanied by a declaration
setting out the date on which and the country of the Union in or for
which the earliest application was filed for the registration of the same
or substantially the same trademark for use in association with the
same kind of wares or services, is filed within a period of six months
after that date, which period shall not be extended;
(b) the applicant or, if the applicant is a transferee, the applicants predecessor in title by whom any earlier application was filed in or for any
country of the Union was, at the date of the application, a citizen or
national of or domiciled in that country or had therein a real and
effective industrial or commercial establishment; and
(c) the applicant furnishes, in accordance with any request under the Act
evidence necessary to establish fully the applicants right to priority.14
4. Proposed Use Marks

An applicant who has filed an application for a proposed trademark that
complies with the Act for a mark that is registrable, is entitled, subject to the
completion of opposition proceedings and filing a declaration of use of the
trademark, to secure its registration in respect to the wares or services specified
13. Section 31(1).

14. Section 34.
57
58
Chapter 6 Entitlement
in the application, unless at the date of the filing of the application it was
confusing with:
(a) a trademark that had been previously used or made known in
Canada;
been previously filed; or
(c) a trade name that had been previously used in Canada,
by any other person.15
The priority date for applications based on proposed use in Canada is the
date of the filing of the application. The applicant is entitled to obtain a registration and priority over another person who has used or applied for the
mark after the filing date.16
An application based on proposed use in Canada must contain a statement that the applicant, by itself or a licensee, or by itself and through a
licensee, intends to use the trademark in Canada. 17 In order to satisfy the
requirements of the Act concerning use, a licensee must be an entity that is
licensed by or with the authority of the applicant to use the trademark, and
the applicant must have direct or indirect control of the character or quality
of the wares or services.18
A certificate of registration cannot be obtained until receipt of a declaration that the applicant, a successor in title or a licensee has commenced the
use of the trademark in Canada in association with the wares or services specified in the application.19 It is permissible to file a declaration which only
refers to some of the applied-for wares or services. The registration will be
restricted to the wares and services of the declaration and an additional application must be filed if it is desired to obtain a registration relating to the
remaining wares and services.
15.
16.
17.
18.
19.
Subsection 16(3).
Subsection 16(3).
Paragraph 30(e).
See Chapter 9, part 2 concerning the requirements for licenses.
Subsection 40(2).
CHAP T ER
7
Applications
1. Content
60
2. Amendment
62
3. Examination
63
4. Disclaimer
64
5. Advertisement
64
59
60 Chapter 7 Applications
1. Content
The Trade-marks Act provides that an application must contain proscribed
information.1 As the failure to conform with the requirements of the Act may
be raised as a ground of opposition2 it is important that the information is
correct. The requirements are set out below.
(a) An application must contain a statement in ordinary commercial
terms of the specific wares or services in association with which the
trademark has been or is proposed to be used.3 If the wares or services
fall into different general categories they should be grouped by category. Canada has not adopted the Arrangement of Nice Concerning the
International Classification of Goods and Services which sets out a
system for the classification of goods and services.
The Canadian Intellectual Property Office has developed a Wares
and Services Manual4 to serve as a guide for specifying wares and
services in trade mark applications. The Manual contains a representative listing of acceptable wares and services, as well as directions for
making insufficiently specific wares and services acceptable.
(b) If the trademark has been used in Canada, the application must specify the date of first use by the applicant or its predecessors in title in
Canada for each of the general classes of wares or services described in
the application.5 This date will be the applicants priority date6 and
care should be taken in determining it. If there is uncertainty concerning the date, a phrase such as as early as, may be used in conjunction
with a date which is known with certainty.
(c) In the case of a trademark that has not been used in Canada but has
been made known in Canada, the name of a country of the Union
in which it has been used by the applicant or its named predecessors in
title, if any, and the date from and the manner in which the applicant
or named predecessors in title have made it known in Canada in association with each of the general classes of wares or services described
in the application.7
(d) In the case of a trademark that is the subject in or for another country
that is a member of the Paris Convention or the World Trade
1.
2.
3.
4.
Section 30.
Paragraph 38(2)(a).
Subsection 30(a).
Currently available at the Canadian Intellectual Property Office website at http://www.cipo.
ic.gc.ca/epic/site/cipointernet-internetopic.nsf/en/h_wr00002e.html.
5. Subsection 30(b).
6. Subsection 16(1) and see chapter 6, part 2.
7. Subsection 30(c) and see chapter 4, part 2.
Content
Organization, of a registration or an application for registration by the

applicant or the applicants named predecessor in title on which the
applicant bases the applicants right to registration, particulars of
the application or registration and, if the trade mark has neither been
used in Canada nor made known in Canada, the name of a country in
which the trade mark has been used by the applicant or the applicants
named predecessor in title, if any, in association with each of the general classes of wares or services described in the application.8
(e) In the case of a proposed trademark, an application must include a
statement that the applicant, by itself or through a licensee, or by itself
and through a licensee, intends to use the trademark in Canada.9
(f) In the case of a certification mark, the application must contain particulars of the defined standard that the use of the mark is intended to indicate and a statement that the applicant is not engaged in the manufacture,
sale, leasing, or hiring of wares or the performance of services such as
those in association with which the certification mark is used.10
(g) The address of the applicants principal office or place of business in
Canada, if any, and if the applicant has no office or place of business in
Canada, the address of the principal office or place of business abroad,
and the name and address in Canada of a person or firm to whom any
notice in respect of the application or registration may be sent, and on
whom service of any proceedings in respect of the application or registration may be given or served with the same effect as if they had
been given to or served on the applicant or the registrant.11
(h) Unless the application is for the registration only of a word or words
not depicted in special form, it must include a drawing of the
trademark.12
(i) An application must include a statement that the applicant is satisfied
that it is entitled to use the trademark in Canada in association with
the wares or services described in the application.13
Where the applicant claims a color as a feature of the mark, the nature of the
claim must be described in the application.14 If the description is not clear,
the Registrar may require the applicant to file a drawing lined for color in
accordance with the regulations.15
8.
9.
10.
11.
12.
13.
14.
15.
Subsection 30(d) and see chapter 6, part 3.

Subsection 30(e).
Subsection 30(f) and see chapter, part 2(b).
Subsection 30(g).
Subsection 30(h).
Subsection 30(i).
See sections 28(1), Trade-marks Regulations SOR/96-195 as amended.
See sections 28(2), Trade-marks Regulations SOR/96-195 as amended.
61
62
Chapter 7 Applications
2. Amendment
An application for the registration of a trademark may be amended either
before or after the application is advertised,16 but there are significant limitations on the matters which may be amended. No application may be amended
to change
(a) the identity of the applicant, except after recognition of a transfer by
the Registrar;
(b) the trademark, except in respects that do not alter its distinctive character or affect its identity;
(c) the date of first use or making known in Canada of the trademark to
an earlier date, except where the evidence proves that the change is
justified by the facts;
(d) the application from one not alleging use or making known of the
trademark in Canada before the filing of the application to one alleging such use or making known; or
(e) the statement of wares or services so as to be broader than the statement of wares or services contained in the application at the time the
application was filed.17
After an application has been advertised, it may not be amended to change
(a) the trademark in any manner whatsoever;
(b) the date of first use or making known in Canada;
(c) the application from one alleging use or making known to one for a
proposed trademark;
(d) the application from one that does not allege that the trademark has
been used and registered in or for a country of the Union to one that
does so allege; or
(e) the statement of wares or services so as to be broader than the statement of wares or services contained in the application at the time of
advertisement.
Clerical errors in an application may be amended at the request of the
applicant.18
16. See sections 30, Trade-marks Regulations SOR/96-195 as amended.

18. See section 33, Trade-marks Regulations SOR/96-195 as amended.
Examination 63
3. Examination
The date of filing of an application is the date a duly completed application,
including a drawing of any design mark and the proscribed fee, is received by
the Registrar.19 The Trade-marks office then carries out a search of the register to identify similar or confusing trademarks. The application and search
results are passed to an examiner.
The application is examined and must be refused if
(a) the application does not comply with the requirements of section 30;20
(b) the trademark is not registrable;21 or
(c) the applicant is not the person entitled to registration of the trademark
because it is confusing with another trademark for which an application is pending.22
The Registrar does not consider the dates of first use or making known in
pending applications as a relevant consideration under paragraph (c). The
only issue is whether there is confusion between the applicants trademark
and a trademark for which an application is already pending. When pending
marks are confusing, the applicant with the earlier filing date or priority filing
date will be considered to be the person entitled to registration of the trademark.23 The owners of pending applications which claim prior use or making
known must assert their rights in opposition proceedings.
The Registrar must not refuse an application without first notifying the
applicant of the objections and the reasons for such objections and giving the
applicant adequate opportunity to answer the objections.24 This obligation is
satisfied by issuing examiners reports which satisfy these criteria. An appeal lies
to the Federal Court from any final decision of the Registrar of Trade-marks.25
Where the Registrar, by reason of a registered trademark, is in doubt
whether the trademark claimed in the application is registrable, the Registrar
must, by registered letter, notify the owner of the registered trade mark of the
19.
20.
21.
22.
23.
Section 25, Trade-marks Regulations, SOR/96-195 as amended.

Subsection 37(1)(a) and see part 1 of this chapter.
Subsection 37(1)(b) and see Chapter 3.
Subsection 37(1)(c) and see Chapter 6.
Canadian Intellectual Property Office, Practice Notice dated 2005-05-19 and see Unitel International Inc. v. Canada (Registrar of Trade-marks) (1999), 86 C.P.R. (3d) 467 (F.C.T.D.)
affirmed (2000), 9 C.P.R. (4th) 127 (F.C.A.); Attorney-General of Canada v. Effigi Inc. (2005),
41 C.P.R. (4th) 1 (F.C.A).
24. Subsection 37(2) and see Mr. Transmission (International) Ltd. v. Reg. T.M. [1979] 1 F.C. 787
(F.C.T.D.).
25. Section 56.
64
Chapter 7 Applications
advertisement of the application.26 This provision is typically applied when

the examiner is in doubt concerning whether the applied for mark is potentially confusing with an existing registered mark.
4. Disclaimer
The Registrar may require the applicant to disclaim the right to the exclusive
use apart from the trademark of such portion of the trademark as is not
independently registrable, but such disclaimer does not prejudice or affect
the applicants rights then existing or thereafter arising in the disclaimed
matter. The disclaimer does not prejudice or affect the applicants right to
registration on a subsequent application if the disclaimed matter has then
become distinctive of the applicants wares or services.27 The absence of a
disclaimer in an application is not a ground of opposition.28
The Canadian Intellectual Property Office has indicated that the Registrar
will generally no longer require an applicant for registration of a trademark
to enter disclaimers pursuant to the Act.29 Disclaimers will continue to be
required for eleven-point maple leaf designs.30
Despite the change of policy, voluntary disclaimers will continue to be
accepted. A disclaimer may assist in overcoming an examiners report
asserting that a mark is clearly descriptive contrary to subsection 12(1)(b) or
12(1)(e) of the Act.31 However, a disclaimer will not be accepted concerning
an assertion that the mark is deceptively misdescriptive or confusing with a
registered mark.32
5. Advertisement
Registrar will refuse an application if he is satisfied that the application does
not conform with section 30 of the Act,33 the trademark is not registrable,34

27. Section 35.
28. Sunny Crunch Foods Ltd. v. Reg. T.M. (1982), 63 C.P.R. (2d) 201 (F.C.T.D.); T.G. Bright & Co.
v. Andres Wines (1986), 12 C.P.R. (3d) 1 (F.C.A.).
29. Practice Notice, dated 2007-08-15.
30. These designs are governed by Order in Council P.C. 19651623, dated September 2, 1965.
31. T.G. Bright & Co. v. Andres Wines (1986), 12 C.P.R. (3d) 1 (F.C.A.).
32. Lake Ontario Cement v. Reg. T.M. (1976), 31 C.P.R. (2d) 103 (F.C. T. D).
33. See part 1 of this chapter.
34. See Chapter 3.
Advertisement 65
or the applicant is not entitled to the registration.35 In the absence of concerns

about these matters, the Registrar will approve the application for advertisement.36 Particulars of the application are advertised in the Trade-marks
Journal.37
Between the time a mark is scheduled to be advertised and the actual
advertisement, the Registrar may reverse the decision to advertise if facts sufficient to warrant a refusal come to the Registrars attention.38
35.
36.
37.
38.
See Chapter 6.
Subsection 37(1).
Trade-marks Regulations, section 34.
Beaver Knitwear Ltd. v. Registrar of Trade-marks (1986), 11 C.P.R. (3d) 257 (F.C.T.D.).
CHAP T ER
8
Registration
1. Allowance
68
2. Registration
69
3. Marking
69
4. Invalidity
70
5. Registration of Concurrent Rights
71
6. Term of Protection and Renewal
71
67
68 Chapter 8 Registration
1. Allowance
Under the Trade-marks Act when an application has not been opposed or it
has been opposed and the opposition has been decided in favor of the applicant, the application will be allowed1 and the mark, other than a mark based
on proposed use, registered.2
The Registrar shall not extend the time for filing a statement of opposition
with respect to any application that has been allowed.3 However, if the
Registrar has allowed an application without considering a previously filed
request for an extension of time to file a statement of opposition, the Registrar
may withdraw the application from allowance at any time before issuing
a certificate of registration and extend the time for filing a statement of
opposition.4
When an application for a mark based on proposed use is allowed, the
Registrar notifies the applicant and will register the trademark on receipt of
a declaration that the applicant, its successor in title, or licensee5 has commenced the use of the trademark in Canada in association with the wares or
services specified in the application.6 If the applicant for a proposed trade
mark fails to file a declaration of use before the later of six months after the
notice by the Registrar and three years after the date of filing of the application in Canada, the application will be deemed to be abandoned.7
An extension may be sought to extend the three-year period but the
request must be justified by objective reasons. Significant and substantive
reasons are required which clearly justify an extension that extends beyond
three years from the original deadline to file a declaration of use.8
2. Subsection 40(1). Unless the mark was filed based on proposed use there are no other requirements apart from paying the proscribed fee.
4. Subsection 39(3) and see Sadhu Singh Hamdard Trust v. Canada (Registrar of Trade-marks
(2006), 47 C.P.R. (4th) 373 (F.C), affirmed on appeal 2007 FCA 355, 62 C.P.R (4th) 245
(F.C.A.).
5. A licensee must be an entity that is licensed by or with the authority of the applicant to use the
trademark, and the applicant must have direct or indirect control of the character or quality of
the wares or services. See Chapter 9, part 2 concerning the requirements of the Act.
8. See Trade-marks Office Practice Notice dated July 22, 1998 and A. Lassonde Inc. v. Registrar of
T.M. (2003), 27 C.P.R. (4th) 316 (F.C.T.D.).
Marking 69
2. Registration
Subject to limited restrictions, the registration of a trademark in respect of
wares or services, unless shown to be invalid, gives to the owner the exclusive
right to the use throughout Canada of such trademark in respect of those
wares or services.9
The primary restriction relates to the right to make descriptive use under
section 20.10 The other restrictions relate to the concurrent right to use a
trade mark under section 21,11 restrictions imposed under section 32 of relating to marks registered under subsection 12(2)12 and the special provisions of
section 67 relating to trademarks registered or pending in Newfoundland
before April 1, 1949.13
A copy of the record of the registration of a trademark certified by the
Registrar is evidence of the facts set out therein and that the person shown as
the owner is the registered owner of the trademark.14
3. Marking
The Act is neutral concerning the use of a trademark notice. There are no
provisions of the Act that require a trademark owner to use a trademark
notice. However the use of a trade is particularly helpful.
A trademark owner may use the notification to identify an unregistered
trademark and the symbol to identify its registered trademarks. In addition
the owner may choose to use a trademark legend in conjunction with these
symbols such as registered trade mark of ABC Company. The use of
such a legend when a trademark has been licensed, combined with a statement that the use is licensed and the name of the owner, results in a statutory
presumption that the use is licensed and under the control of the owner.15
The use of such notices is very common and most sophisticated trademark
owners use such notices. This position has probably been influenced by U.S.
9.
10.
11.
12.
13.
Section 19.
See Chapter 13, part 1(a).
See part 5 of this chapter.
The registration of a trademark under the laws of Newfoundland before April 1, 1949 has
the same force and effect in the Province of Newfoundland as if Newfoundland had not
become part of Canada, and all rights and privileges acquired under or by virtue of
those laws may continue to be exercised or enjoyed in the Province of Newfoundland as if
Newfoundland had not become part of Canada.
70
Chapter 8 Registration
practice and the fact that in a suit for infringement, if a registrant fails to give
notice of registration, no profits and damages shall be recovered unless the
defendant had actual notice of the registration. There is no similar provision
in the Trade-marks Act and an infringer cannot successfully assert lack of
notice of the registration as a defence.
There are numerous advantages of using a trademark notice including the
following matters:
(a) Consumers will recognize that the trademark being used is a trademark, as opposed to some other device such as a business name.
(b) Continuous use of the trademark notice with a trademark has the tendency to increase the strength of the link between the registered trademark presented to consumers and the source of the goods they
purchase. The stronger the link, the more goodwill can be established
in association with the mark.
(c) If third parties are aware of a registered trademark, they may be more
inclined to avoid infringing it. The use of such notice serves a function
similar to a no trespassing sign to ward off competitors who may
consider the adoption of a similar mark.
(d) The use of the notice provides an additional element of confidence for
consumers as they may infer that the trademark thus endorsed carries
the weight of statutory approval.
(e) A trademark notice may help educate the public regarding the trademark use of a descriptive or suggestive word.
(f) A notice may help prevent a mark from being adopted by customers in
a generic rather than in a trademark sense.
4. Invalidity
Section 18 of the Act provides that the registration of the trademark is
invalid16 if:
(a) the trademark was not registrable at the date of registration;17
(b) the trademark is not distinctive at the time proceedings bringing the
validity of the registration into question are commenced;18
(c) the trademark has been abandoned;19 or
16.
17.
18.
19.
For a detailed discussion see Chapter 10.

Subsection 18(1)(a).
Subsection 18(1)(b).
Subsection 18(l)(c).
Term of Protection and Renewal 71
(d) subject to section 17,20 the applicant for registration was not the person
entitled to secure the registration.21
No registration of a trademark that had been so used in Canada by the registrant or his predecessor in title as to have become distinctive at the date of
registration will be held invalid merely on the ground that evidence of the
distinctiveness was not submitted to the competent authority or tribunal
before the grant of the registration.22
5. Registration of Concurrent Rights

Section 21 of the Act is directed to protecting the rights of a person who has,
in good faith, used a confusing trademark or trade name prior to the date of
filing of the application for registration of a registered trademark. In proceedings relating to a registered trademark, which has become incontestable by
virtue of the expiration of the five year period referred to in subsection 17(2),23
if the Federal 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 permit the continued use of the unregistered
trademark within that area with an adequate specified distinction from the
registered trademark.24
6. Term of Protection and Renewal

Unlike other intellectual property rights, a trademark registration may
be renewed any number of times without limitation and can be extended
indefinitely. A registration is subject to renewal within a period of 15 years
from the day of the registration or last renewal.25 Apart from the timely
payment of the prescribed renewal fee, there are no other requirements for
renewal. In particular, there is no obligation to show the mark is in use.
The Registrar is required to send a notice to the registered owner and its
representative for service, if any, stating that, if within six months after the
20.
21.
22.
23.
24.
25.

Subsection 18(1)(c).
Subsection 18(2).
Subsection 21(1).
Subsection 46(1).
72
Chapter 8 Registration
date of the notice the prescribed renewal fee is not paid, the registration will
be expunged.26 If the prescribed renewal fee is not paid within the six-month
period, which may not be extended, the registration will be expunged.27 If the
prescribed fee for a renewal is paid within the time limited for the payment,
the renewal takes effect as of the day next following the expiration of the
15-year period set out above.28

CHAP T ER
9
Assignments and Licenses
1. Assignments
74
a) Scope
74
b) Eectiveness
75
c) Distinctiveness
76
2. License
77
a) Availability
77
b) Control
78
78
73
74
Chapter 9 Assignments and Licenses
Under the Trade-marks Act it is possible to assign a trademark or to license

another person to use a mark. In both situations, care must be taken to ensure
that the mark remains distinctive of the trademark owner.
1. Assignments
a) Scope
Subsection 48(1) of the Act provides that a trademark, whether registered or
unregistered, is transferable, and deemed always to have been transferable,1
either in connection with or separately from the goodwill of the business, and
in respect of either all or some of the wares or services in association with
which it has been used.2 The subsection applies to both registered and unregistered trademarks.3
The subsection also applies to the assignment of a trademark that is the
subject of a pending application for registration. In this case, the application
will be amended to change the identity of the applicant after recognition of
the transfer by the Registrar.4 Nothing in the Act prevents the assignment of
an application relating to a mark registered and used abroad.
The subsection does not apply to trade names, which are defined by the
Act to mean the name under which any business is carried on, whether or
not it is the name of a corporation, a partnership or an individual.5 It appears
that a trade name may only be transferred with the goodwill of the business it
is associated with.6
The Act does not permit territorial assignments of trademarks within
Canada, since for the purposes of the Act, Canada is regarded as an indivisible
unit,7 subject to two exceptions relating to territorially restricted trade
marks. First, under section 21, the Federal Court may permit concurrent use
of trademarks in a defined territorial area.8 Second, where a trademark is
1. Subsection 48(1) has retroactive effect and validates a trademark whose validity may have
been destroyed through an improper assignment in the past prior to the passing of the Act.
2. Cheerio Toys & Games Ltd. v. Dubiner (1964), 44 C.P.R. 134 (Ex. Ct.); affirmed [1966] S.C.R.
206 (S.C.C.).
3. See McCurdy Enterprises Ltd. v. Shamrock Spring Water Inc (2005), 45 C.P.R. (4th) 55 (Nfld
and Lab. Sup. Ct. T.D.).
4. Sections 31(a) and 48, Trade-marks Regulations SOR/96-195 as amended.
5. Section 2.
206 (S.C.C.).
7. Great Atlantic & Pacific Tea Co. v. Reg. TM. [1945] Ex. C.R. 233 (Ex. Ct.).
Assignments 75
registered on proof of acquired distinctiveness or secondary meaning pursuant to subsection 12(2), the Registrar may restrict the registration to the
defined territorial area in Canada in which the trademark is shown to have
become distinctive.9 Nothing in the Act prevents the assignment of such territorially restricted trademarks.
b) Eectiveness
An assignment becomes effective when the assignor ceases to be entitled to
the exclusive right to use the assigned mark in association with the wares or
services referred to in the registration and such right is vested in the assignee.
However, the exclusive right that is vested is the right to use the mark as a
trade mark and not the right to use it for some other purpose. The right to
use it as a trademark is the right to use it for the purpose of distinguishing or
so as to distinguish the owners wares or services from the wares or services
of others.10
Registration is not necessary to make an assignment of a trademark effective against a third party.11 In addition, an assignee may commence an action
for infringement even though the assignment is not registered.12 Despite
these decisions, registration of an assignment is prudent. In addition registration will help ensure that notice of proceedings13 or renewal under the Act14
is brought to the attention of the assignee.
The Act does not proscribe any form of assignment. A court, in an appropriate case, may infer that an assignment or transfer took place after considering all of the relevant facts without the necessity of a written agreement.15
In addition, an assignor may be estopped from disputing the validity of the
assigned mark on the basis that it cannot derogate for its grant.16
The registrar is required to register the transfer of any registered trademark upon being furnished with satisfactory evidence of the transfer and the
9. Subsection 32(2) and see Chapter 3, part 4.

10. Wilkinson Sword (Can.) Ltd. v. Juda (1966), 51 C.P.R. 55 (Ex. Ct.).
11. Marcus v. Quaker Oats Co. of Can./Cie Quaker Oats du Canada (1985), 4 C.I.P.R. 212
(F.C.T.D.); White Consolidated Industries, Inc. v. Beam of Canada Inc. (1991), 39 C.P.R. (3d)
94 (F.C.T.D.); McCurdy Enterprises Ltd. v. Shamrock Spring Water Inc (2005), 45 C.P.R. (4th)
55 (Nfld and Lab. Sup. Ct. T.D.).
12. Wilkinson Sword (Can.) Ltd. v. Juda (1966), 51 C.P.R. 55 (Ex. Ct.).
15. Gattuso v. Gattuso Corp. Ltd., [1968] 2 Ex. C.R. 609 (Ex. Ct.); Philip Morris Inc. v. Imperial
Tobacco Ltd. (1985), 7 C.P.R. (3d) 254 (F.C.T.D.) affirmed 17 C.P.R. (3d) 289 (F.C.A.); White
Consolidated Industries, Inc. v. Beam of Canada Inc. (1991), 39 C.P.R. (3d) 94 (F.C.T.D.).
16. Cheerio Toys & Games Ltd. v. Dubiner, (1965), 48 C.P.R. 226 (S.C.C.).
76
same information concerning the address of the transferee that would be

required in an application by the transferee to register such trademark.17
c) Distinctiveness
Subsection 48(2) provides that nothing in subsection 48(1) prevents a trademark from being held not to be distinctive if, as a result of a transfer, there
subsisted rights in two or more persons to the use of confusing trademarks
and such rights were exercised by such persons. When determining whether
the registration of a trademark is invalid on the grounds that it is not distinctive, the determination is made at the time of the commencement of the proceedings, bringing the validity of the registration into question.18
Once a mark is assigned, the new owner must take the necessary steps to
cause the mark to actually distinguish its wares or services from the wares or
services of others, including those of the assignor.19 If the mark does not
become distinctive of the new owner, the validity of the registration may be
attacked on the ground that it is not distinctive.20 The function and the purpose of a trademark is to indicate the source of the goods, and by definition,
it must be and remain distinctive of a single source.21
Where, as the result of an assignment, a trademark becomes the property
of one person for use in association with some of the wares or services specified in the registration and another person for use with other such wares or
services and the transfer is registered by the Registrar, each person is deemed
to be a separate registered owner and to have a separate registration of the
trademark for use in association with the respective wares or services.22
In such a case, particular attention must be given to maintaining the distinctiveness of the assigned marks. The Registrar will not allow such a partial
transfer if the effect of having separate owners would likely cause confusion.
17.
18.
19.
20.
Subsection 48(3) and see sections 48-50, Trade-marks Regulations SOR/96-195 as amended.
Subsection 18(1)(b).
See Wilkinson Sword (Can.) Ltd. v. Juda, [1968] 2 Ex. C.R.137 (Ex. Ct.); Magder v. Brecks
Sporting Goods Co. [1976] 1 S.C.R. 527 (S.C.C.); Heinzman v. 751056 Ontario Limited (1990),
34 C.P.R. (3d) 1 (F.C.T.D.); Cross-Canada Auto Body Supply (Windsor) Limited v. Hyundai
Auto Canada, 2007 FC 580 (F.C.), 60 C.P.R. (4th) (F.C.), 2008 FCA 98, 65 C.P.R. (4th) 121
(F.C.A.).
21. Cross-Canada Auto Body Supply (Windsor) Limited v. Hyundai Auto Canada, 2007 FC 580
(F.C.), 60 C.P.R. (4th) (F.C.), 2008 FCA 98, 65 C.P.R. (4th) 121 (F.C.A.).
License 77
2. License
a) Availability
Both at common law and under the earlier legislation, a license of a trademark was fatal to its validity.23 However, the Act currently allows for a license
of a trademark subject to the conditions set out in the Act.24
Section 50 provides that, for the purposes of the Act, if an entity is licensed
by or with the authority of the owner of a trademark to use the trademark in
a country and the owner has, under the license, direct or indirect control of
the character or quality of the wares or services, then the use, advertisement,
or display of the trademark in that country as or in a trademark, trade name,
or otherwise by that entity has, and is deemed always to have had, the same
effect as such a use, advertisement, or display of the trademark in that country by the owner. The section applies retroactively.25
The use of the words in a country allows an applicant for a trademark,
based on registration and use abroad, to rely on use by a licensee abroad.
The section is not limited to trademark use as described in section 4 and is
significantly broader, as it extends to the use, advertisement or display of the
trademark . . . . as or in a trademark, trade name, or otherwise.
For the purposes of the Act, use of the mark by the licensee under the control of the owner is deemed to be use by the owner. This deemed use is only
for the purpose of the Act and the trademark owner is not deemed to have
sold the goods or provided the services for other purposes.26
The Act does not contain any limitation concerning the form of a license
other than it must be with the authority of the owner of a trademark, who
must have under the license, direct or indirect control of the character or
quality of the licensed wares or services.27 For evidentiary purposes, it is prudent that the license be in writing.
23. Bowden Wire Ltd. v. Bowden Brake Co. Ltd. (1913), 30 R.P.C. 580; 31 R.P.C. 385 (H.L.).
24. When the Act was brought into force in 1954 it provided for the licensing of trademarks
through a system of registered users and permitted use. A registered owner could permit the
use of a registered trademark by other persons subject to its control. The Act was amended
in 1993 to terminate the registered user system.
25. Eli Lilly & Co. v. Novapharm Ltd. (2000), 10 C.P.R. (4th) 10 (F.C.A.) leave to appeal to the
Supreme Court of Canada refused.
26. Mister Transmission(International) Ltd. v. Registrar of Trade-marks (1978), 42 C.P.R. (2d) 11
(F.C.T.D.).
27. See Spiros Pizza & Spaghetti House Ltd. v. Riveria Pizza Inc. (2005), 39 C.P.R. (4th) 527
(Alberta Q.B.).
78
b) Control
Control by the trademark owner of the character or quality of the licensed
wares or services is fundamental, since a license without adequate control is
not within the section and may result in the invalidity of the mark.28
Even though a related company controls another company by virtue of its
share holdings, as in a parent and wholly owned subsidiary relationship, such
control is not sufficient to comply with section 50. In cases involving such a
relationship, there must be evidence of facts from which it can be concluded
that a licensing arrangement existed and that the trademark owner had direct
or indirect control of the character or quality of the licensed wares or services
provided pursuant to that licensing arrangement.29
For the purposes of the Act, to the extent that public notice is given of the
fact that the use of a trademark is a licensed use and of the identity of the
owner, it will be presumed, unless the contrary is proven, that the use is
licensed by the owner of the trademark and the character or quality of the
wares or services is under the control of the owner.30 This presumption may
be rebutted if evidence to the contrary is presented.
The fact that a trademark owner has entered into a license does not by itself
result in the licensor owing a fiduciary duty to the licensee. The fundamental
hallmark required to establish a fiduciary duty is evidence that one party has
relinquished its own self-interest and agreed to act solely on behalf of the other
party. On its face, a contractual relationship would not be expected to lead to
a fiduciary relationship because it is negotiated and both parties look after
their own self-interests and not the interests of the opposite party.31

Subject to any agreement between the owner of a trademark and a licensee of
the trademark, the licensee may call on the owner to bring proceedings for
infringement, and, if the owner refuses or neglects to do so within two months
after being so called on, the licensee may institute proceedings for infringement in the licensees own name as if the licensee were the owner, making the
owner a defendant.32 Frequently this right is contractually removed.
28. Bowden Wire Ltd. v. Bowden Brake Co. Ltd. (1913), 30 R.P.C. 580; 31 R.P.C. 385 (H.L.) but not
in all cases; see for example Imperial Developments v. Imperial Oil Ltd. (1984), 79 C.P.R. (2d)
12 (F.C.T.D.).
29. M.C.I. Communications Corp. v M.C.I. Multinet Communications Inc. (1995), 61 C.P.R. (3d)
245 (T.M.O.B.); Cheung Kong (Holdings) Ltd. v. Living Realty Inc, (1999), 4 C.P.R. (4th) 71
(F.C.T.D.).
31. Bluefoot Ventures Inc. v. Ticketmaster (2007), CanLII 55363 (On S.C.).
CHAP T ER
10
Expungement
80
80
b) Evidence
81
c) Eect of Non-Use
83
d) The Hearing
83
e) Appeal
84
85
a) Jurisdiction
85
b) Procedure
86
87
d) Limitations
87
88
(i) Not Registrable
89
(ii) Not Distinctive
89
(iii) Abandonment
90
(iv) Entitlement
90
79
80
Chapter 10 Expungement
The purpose of section 45 of the Trade-marks Act is to provide a summary
procedure1 for trimming the register of dead wood.2 Frequently, proceedings under the section will be instituted by third parties who are prevented
from obtaining a registration for a desired mark by a registration which is
perceived not to be in use.
The section provides that the Registrar, at any time and at the written
request made after three years from the date of the registration of a trademark
by any person who pays the prescribed fee, shall, unless the Registrar sees
good reason to the contrary, give notice to the registered owner of the trademark requiring the registered owner to furnish within three months an affidavit or statutory declaration showing with respect to each of the wares or
services specified in the registration, whether the trademark was in use in
Canada at any time during the three-year period immediately proceeding the
date of the notice and, if not, the date when it was last so in use and the reason
for the absence of such use since such date.3
The Registrar may, in his discretion, issue a notice pursuant to the section
at any time. However, under the current practice, the Registrar considers that
in order to ensure compliance with Article 19 of the TRIPS Agreement no
notice should be issued prior to three years after the date of registration.4
There is no prescribed form for the written request. It can be made by
any person as there is no requirement for standing. Frequently, proceedings
are instituted by law firms on behalf of clients.5
The Registrar should not attempt to resolve any question other than
whether the registration is in use. The procedure under the section is not
intended to create or rescind substantive rights.6 For example, difficult questions of interpretation concerning the wares of the registration will not be
considered.7 Requesting that notice be given under the section should not be
1. AnheuserBusch Inc. v. Carling O Keefe Breweries of Can. Ltd. [1983] 2 F.C. 71 (F.C.A.).
2. Plough (Canada) Ltd. v. Aerosol Fillers Inc. (1979), 45 C.P.R. (2d) 194 (F.C.T.D.), affirmed 53
C.P.R. (2d) 62 (F.C.A.).
3. Section 45 and see Practice in Section 45 Proceedings in effect September 14, 2009, currently
available at the Canadian Intellectual Property Office website at http://www.cipo.ic.gc.ca/eic/
site/cipointernet-internetopic.nsf/eng/h_wr00002.html.
4. See Practice in Section 45 Proceedings, supra, part II.2.
5. Rogers, Bereskin & Parr v. Reg. T.M. (1986), 9 C.P.R. (3d) 260 (F.C.T.D.).
6. Rogers, Bereskin & Parr v. Reg. T.M. (1986), 9 C.P.R. (3d) 260 (F.C.T.D.).
7. Levi Strauss & Co. v. Registrar of Trade-marks, (2006), 51 C.P.R. (4th) 434 (F.C.); Countryside
Caners Co. v. Registrar of Trade-marks, (1981), 55 C.P.R. (2nd) 25 (F.C.T.D.).
Section 45 Proceedings
seen as an alternative to initiating proceedings in the Federal Court seeking

expungement.8
The requesting party cannot file evidence or conduct a cross examination
on the affidavit or statutory declaration of the registered owner.9 The requesting party is limited to filing written argument and taking part in an oral hearing to argue that the registration should be expunged or amended.
b) Evidence
The registered owner has three months10 within which to furnish an affidavit
or statutory declaration showing, with respect to each of the wares or services
specified in the registration, whether the trademark was in use in Canada at
any time during the three-year period immediately preceding the date of the
notice and, if not, the date when it was last so in use and the reason for the
absence of such use since that date.11
Section 45 requires an affidavit or statutory declaration not merely stating
but showing sufficient facts to demonstrate trademark use12 within the
meaning of the definition of a trade mark in section 2 and of use in section 4 of the Act.13 Multiple affidavits can be filed including affidavits sworn
by third parties.14
The evidence filed must show the use of the registered trademark in issue
not a variant of the mark.15 However, cautious variations may be accepted as
use of the registered mark without adverse consequences if the same dominant features are maintained and the differences are so unimportant that an
unaware purchaser of the wares would not be mislead.16
8. Phillip Morris Inc. v. Imperial Tobacco (1987), 13 C.P.R. (3d) 289 (F.C.T.D.).
C.P.R. (2d) 62 (F.C.A.).
10. An extension of time may be sought, see See Practice in Section 45 Proceedings, supra,
part IV.
C.P.R. (2d) 62 (F.C.A.); United Grain Growers Ltd. v. Lang Michener (2001), 12 C.P.R. (4th)
89 (F.C.A.).
13. See Chapter 5.
14. Registrar of Trade-marks v. Harris Knitting Mills Ltd. (1985), 4 C.P.R. (3d) 488(F.C.A.).
15. Reg. T.M. v. Cie Int. pour LInformatique Cii Honeywell Bull S.A. (1985), 4 C.P.R. (3d) 523
(F.C.A.); Rogers, Bereskin & Parr v. Reg. T.M. (1986), 9 C.P.R. (3d) 260 (F.C.T.D.).
16. Promafil Canada Ltee. v. Munsingwear Inc. (1993), 44 C.P.R. (3d) 59 (F.C.A.); Saccone &
Speed Ltd. v. Registrar of Trade-marks. (1982), 67 C.P.R. (2d) 119 (F.C.T.D.); Ivy Lea Shirt Co.
v. 1227624 Ontario Ltd. (2001), 11 C.P.R. (4th) 489 (F.C.T.D.); Marks & Clark v. Sparkles
Photo Limited [2005] FC 1012 and see Chapter 5, part 5.
81
82 Chapter 10 Expungement
The evidence must also describe the nature of the business and the normal
course of trade of the owner of the trademark.17 The Registrar cannot make
assumptions or be expected to know the nature of the registrants business
and its practices.18
The majority of cases have found that evidence of a single sale, whether
wholesale or retail, in the normal course of trade, can satisfy the requirements
of the section, so long as the sale follows the pattern of a genuine commercial
transaction and is not seen as being deliberately manufactured or contrived
to protect the registration of the trademark in issue.19 In addition, the provision of samples can in some circumstances be considered use in the normal
course of trade.20
Use by a licensee may be sufficient if the requirements of the Act relating
to licensing are satisfied.21 Control for the purpose of section 50 of the Act
dealing with a licensed mark will not be inferred and must be expressly
referred to.22
It is not necessary to provide an over-abundance of evidence of use of the
mark. Inferences can be drawn from the evidence as a whole.23 A registrant
must carefully consider what is required to satisfy the requirements of the
section. A bald assertion of use is not sufficient and an affidavit must disclose
sufficient facts so as to demonstrate trademark use during the three-year
period immediately preceding the date of the notice.
Because the evidence is not subject to cross-examination, at the hearing,
the Registrar is under a duty to ensure that reliable evidence has been
presented.24 If an affidavit or declaration is ambiguous, an interpretation
adverse to the registrant should be adopted.25 The use must be in a normal
course of trade as opposed to a fictitious or colorable use.26
17. S.C. Johnson & Son, Inc. v. Reg. T.M. (1981), 55 C.P.R. (2d) 34 (F.C.T.D.); Sim & McBurney v.
Majdell Manufacturing Co. (1986), 11 C.P.R. (3d) 306 (F.C.T.D.).
18. S.C. Johnson & Son, Inc. v. Reg. T.M. (1981), 55 C.P.R. (2d) 34 (F.C.T.D.).
19. Guido Berlucchi & C.S.r.l. v. Brouilette Kosie Prince, 2007 FC 245 (F.C.).
20. Lin Trading Co. v. CBM Kabushiki Kaisha, (1988), 21 C.P.R. (3d) 417 (F.C.A.).
21. See Chapter 9, part 2 and Sim & McBurney v. Netlon Ltd. (2004), 41 C.P.R. (4th) 455 (T.M.O.B.):
Marks & Clark v. Cristall U.S.A. Inc., (2007), 59 C.P.R. (4th) 475 (T.M.O.B.)
22. Farris, Vaughan, Mills & Murphy v. Kabushiki Kaisha Yaskawa Denki (2008), 68 C.P.R. (4th)
220 (T.M.O.B.).
23. Eclipse International Fashions Canada Inc. v. Shapiro Cohen (2005), 48 C.P.R. (4th) 224
(F.C.A.).
24. 88766 Canada Inc. v. Monte Carlo Restaurant Limited, 2007 FC 1174, 63 C.P.R. (4th) 391
(F.C.); Grapha-Holding Ag v. Illinois Tool Works Inc. (2008), 68 C.P.R. (4th) 180 (F.C.).
C.P.R. (2d) 62 (F.C.A.).
26. Molson Cos. Ltd. v. Halter (1976), 28 C.P.R. (2d) 158 (F.C.T.D.); Plough (Canada) Ltd. v. Aerosol Fillers Inc. (1979), 45 C.P.R. (2d) 194 (F.C.T.D.), affirmed 53 C.P.R. (2d) 62 (F.C.A.); Ports
International Ltd. v. Reg. T.M., [1984] 2 F.C. 119 (F.C.T.D.); Phillip Morris Inc. v. Imperial
Tobacco (1987), 13 C.P.R. (3d) 289 (F.C.T.D.).
Section 45 Proceedings
Where the evidence shows the trademark is being used only in respect to
some of the wares or services specified in the registration, the registration
should be amended and not expunged.27
c) Eect of Non-Use
Where by reason of the evidence furnished or the failure to furnish such evidence, it appears to the Registrar that the trademark, either with respect to all
of the wares or services specified in the registration, or with respect to any of
the wares or services, was not in use in Canada, and that the absence of use has
not been due to special circumstances that excuse the absence of use, the registration of the trademark is liable to be expunged or amended accordingly.28
The onus is on the registered owner to establish that there are special circumstances justifying non-use.
It has been said that it is impossible to state precisely what circumstances
will excuse the absence of use of a trademark. The duration of the absence of
use and the likelihood it will last a prolonged period are important factors.
However, circumstances may excuse the absence of use for a brief period of
time without excusing a prolonged absence of use. It is also essential to know
to what extent the absence of use relates solely to a deliberate decision on the
part of the owner of the trademark rather than to obstacles beyond the control of the owner. It will be more difficult to justify absence of use due solely
to a deliberate decision by the owner of the trademark.29
d) The Hearing
A Hearing Officer authorized by the Registrar30 will hear representations
made by or on behalf of the registered owner of the trademark and by or on
behalf of the person who has requested that notice be given. The Registrar
27. John Labatt Ltd. v. Rainier Brewing Co. (1984), 80 C.P.R. (2d) 228 (F.C.A.), reversing (1982)
68 C.P.R. (2d) 266 (F.C.T.D.); but see Ridout & Maybee LLP v. Omega SA. 2004 FC 1703 (FC)
where use of certain wares was sufficient evidence of use of an entire category of wares on a
plain reading of the registration.
28. Subsection 45(3) and see Practice in Section 45 Proceedings, supra, part III.3.
29. Harris Knitting Mills v. Reg. T.M. (1982), 66 C.P.R. (2d) 158 (F.C.T.D.); (1985), 4 C.P.R. (3d)
488 (F.C.A.); Smart & Biggar v. Attorney General of Canada, 2006 FC 1542 (F.C.), 58 C.P.R
(4th) 42, 2008 F.C.A. 129, 65 C.P.R. (4th) 303 (F.C.A.) and see Bereskin & Parr v. Bartlett
(2008), 70 C.P.R. (4th) 469 (T.M.O.B.) concerning the effect of illness.
83
84
will generally invite the parties to file written submissions and an oral hearing
may be requested.31
When the Registrar reaches a decision as to whether the registration of the
trademark should be expunged or amended, notice of the decision together
with written reasons must be given to the registered owner and to the person
at whose request the notice was given.32
The decision must relate only to whether the evidence supplied or the failure to supply evidence shows the mark was in use or the absence of use was
due to special circumstances and finally determines nothing else.33 The doctrine of res judicata does not apply to the decision.34
The Registrar must act in accordance with the decision if no appeal is initiated within the time limited by the Act or, if an appeal is taken, must act in
accordance with the final judgment given in the appeal.35
e) Appeal
An appeal may be made to the Federal Court from the Registrar within two
months from the date on which notice of the decision was dispatched by the
Registrar or within such further time as the Court may allow, either before or
after the expiration of the two months.36 On an appeal, evidence in addition
to that which was before the Registrar may be adduced37 and the Court may
exercise any discretion vested in the Registrar.38
Due to the nature of section 45 only the registered owner may adduce
additional evidence39 but the requesting party is entitled to cross-examine on
new affidavits filed on the appeal.40 The judgment of the Federal Court on the
appeal is filed with the Registrar.41
31. See Practice in Section 45 Proceedings, supra, parts VI and VII.

33. Broderick& Bascom Rope v. Reg. T.M. (1970), 62 C.P.R. 268 (Ex. Ct.); United Grain Growers v.
Lang Mitchener, (2001), 12 C.P.R. (4th) 89 (F.C.A.).
34. Molson Cos. Ltd. v. Halter (1976), 28 C.P.R. (2d) 158 (F.C.T.D.).
37. Subsection 56(5) and see Austin Nichols & Co. v. Cinnabon Inc. (1998), 82 C.P.R. (3d) 513
(F.C.A.); Baxter International Inc. v. P.T. Kalbe Frama TBK, 2007 FC 439 (F.C.).
38. Subsection 56(5) and see Brouillette Kosie Prince v. Orange Cove-Sanger Citrus Association,
2007 FC 1229 (F.C.) and Promotions C.D. Inc. v. Sim & McBurney 2008 FC 1071 (F.C.) for a
discussion of the appropriate standard of review on an appeal.
C.P.R. (2d) 62 (F.C.A.).
40. House of Kwong Sang Hong International Ltd. v. Borden Ladner Gervais LLP, 2001 FCA 346
(F.C.A.).
41. Section 61.
Expungement by the Federal Court

a) Jurisdiction
The Federal Court has exclusive original jurisdiction, on the application of
any person interested, to order that any entry in the register be struck out or
amended on the ground that at the date of the application the entry as it
appears on the register does not accurately express or define the existing
rights of the person appearing to be the registered owner of the mark.42
An application for expungement is not an appeal under section 56 of the Act
for which a standard of review should be identified. It is the exercise of original jurisdiction.43
In matters concerning the register the Court must consider the purity of
the register44 and the public interest.45 The Act rests on principles of fair
dealing and is sometimes said to hold the balance between free competition
and fair competition. In applying these principles the interests of the public
and other merchants as well as the interest of the trademark owner must be
considered.46
The power to amend the register is only exercised where a trademark is
otherwise open to expungement, for example, if a registration is invalid only
in respect of some wares it may be amended. There is no jurisdiction to
amend an inappropriate description47 or to order an involuntary substitution
of one registrant for another.48
The Courts of the provinces have jurisdiction in actions for infringement,
but have no jurisdiction to direct that the registration of a trademark be
expunged or amended.49
42. Subsection 57(1) and see section 20 of the Federal Courts Act, R.S.C. 1985, c. F-7 as
amended.
43. Emall.ca Inc. v. Cheap Tickets and Travel Inc., 2007 FC 243, 56 C.P.R (4th) 82 (F. C.), appeal
dismissed, 2008 FCA 50 (F.C.A.).
44. British Drug Houses, Ltd. v. Battle Pharmaceuticals, [1944] Ex. C.R. 239 (Ex. Ct.); affirmed
[1946] S.C.R. 50 (S.C.C.); General Motors Corp. v. Bellows, [1949] S.C.R. 678 (S.C.C.);
Aladdin Industries Inc. v. Can. Thermos Products Ltd. (1969), 57 C.P.R. 230 (Ex. Ct.), affirmed
[1974] S.C.R. 845 (S.C.C.).
45. British Drug Houses, Ltd. v. Battle Pharmaceuticals, [1944] Ex. C.R. 239 (Ex. Ct.); affirmed
[1946] S.C.R. 50 (S.C.C.), Aladdin Industries Inc. v. Can. Thermos Products Ltd. (1969),
57 C.P.R. 230 (Ex. Ct.), affirmed [1974] S.C.R. 845 (S.C.C).
46. Mattel, Inc. v 3894207 Canada Inc., 2006 SCC 22, 49 C.P.R. (4th) 321 (S.C.C.).
47. Omega Engineering, Inc. v. Omega SA (2006), 56 C.P.R. (4th) 210 (F.C.).
48. Royal Doulton Tableware Ltd. v. Cassidys Lte. (2006), 1 C.P.R. (3rd) 214 (F.C.T.D.).
49. Canadian Shredded Wheat v. Kellogg, [1936] O.W.N. 199 (Ont. H.C.).
85
b) Procedure
An application for expungement is made to the Federal Court50 by the filing
of an application51 or by statement of claim in an action claiming additional
relief under the Act.52 It is also possible to assert a claim for expungement by
way of counterclaim in an action for infringement brought in the Federal
Court.53
An application is heard and determined on evidence introduced by affidavit unless the Court otherwise directs.54 Any affidavits filed in support of an
application must be confined to facts within the personal knowledge of the
deponent55 and otherwise comply with the usual rules of evidence.
In such proceedings, the Court may order that any procedure permitted
by its rules and practice be made available to the parties, including the introduction of oral evidence generally or in respect of one or more issues specified in the order.56
The burden of proof in proceedings for expungement lies on the party
seeking to expunge.57 The registrant benefits from a presumption that its
registration is valid and the onus remains on the attacking party to show it
should be expunged58 but this presumption has been categorized as weakly
worded, adding little to the onus already resting, in the usual way, on the
attacking party.59 Acquiescence or laches may be advanced as a defense.60
If the respondent voluntarily cancels its registration, there may be nothing
to expunge and the application must be dismissed.61
50. Subsection 57(1) and see section 20 of the Federal Courts Act, R.S.C. 1985, c. F-7 as
amended.
51. See Part 5-Applications of the Federal Court Rules, 1998, SOR/98106.
52. Section 58.
53. Section 58.
54. Subsection 59(3) and Rule 306 of the Federal Court Rules, 1998, SOR/98106. It is inappropriate to rely on affidavits of individuals employed by the solicitors for a party concerning
contentious matters and such solicitors may be removed from the record, Cross-Canada Auto
Body Supply (Windsor) Limited v. Hyundai Auto Canada (2006), 53 C.P.R. (4th) 286
(F.C.A.).
55. Rule 81 of the Federal Court Rules, 1998, SOR/98-106 and see Canadian Tire Corp. v. P.S.
Partsource Inc. (2001), 11 C.P.R. (4th) 386 (F.C.A.).
57. Cheerio Toys & Games Ltd. v. Dubiner [1965] 1 Ex. C.R. 524 (Ex. Ct.); affirmed [1966] S.C.R.
206 (S.C.C.); Parke, Davis & Co. v. Empire Laboratories Ltd. [1964] Ex. C.R. 399 (Ex. Ct.);
affirmed [1964] S.C.R. 351(S.C.C.).
58. Cross-Canada Auto Body Supply (Windsor) Limited v. Hyundai Auto Canada, 2007 FC 580,
60 C.P.R. (4th) (F.C.), 2008 FCA 98, 65 C.P.R. (4th) 121 (F.C.A.).
59. Cheap Tickets and Travel Inc. v. Emall.ca Inc., 2008 FCA 50 (F.C.A.).
60. Carling 0Keefe Breweries of Can. Ltd. v. Labatt Brewing Co. (1982), 68 C.P.R. (2d) 1 (F.C.T.D.);
10 C.P.R. (3d) 433 (F.C.A.).
61. SC Prodal 94 SR v. Spirits International B/V. (2009), 73 C.P.R. (4th) 439 (F.C.A.).
The term person interested includes any person who is affected, or reasonably apprehends that he or she may be affected by any entry in the register, or
by any act or omission or contemplated act or omission under or contrary to
the Act, and includes the Attorney General of Canada.62
In order to have standing as a person interested, an applicant must be
affected or reasonably apprehend that they may be affected by an entry in the
register.63 The entry must stand in the way of the person seeking to expunge
it or prejudice that person.64 Typically trademark use is an important factor.
A person who alleges they have previously used the registered trademark;65
a person who was sued or threatened with infringement as result of their use
of a mark;66 or a person who alleges that their agent or distributor wrongfully
obtained a registration on the basis of purported use;67 will have standing.
d) Limitations
No registration of a trademark shall be expunged or amended or held invalid
on the ground of any previous use or making known68 of a confusing trademark or trade name by a person other than the applicant for such registration
or his predecessor in title, except at the instance of such other person or his
successor in title.69 The burden lies on that other person or his successor to
establish that he had not abandoned the confusing trademark or trade name
at the date of advertisement of the applicants application.70
In proceedings commenced after the expiry of five years from the date of
registration of a trademark, no registration shall be expunged or amended or
held invalid on the ground of the previous use or making known referred to
above, unless it is established that the person who adopted the registered
62. Section 2 and see Aladdin Industries Inc. v. Can. Thermos Products Ltd. (1969), 57 C.P.R. 230
(Ex. Ct.), affirmed [1974] S.C.R. 845 (S.C.C).
63. Fairmount Resort Properties Ltd. v. Fairmount Hotel Management, L.P. (2008), 67 C.P.R. (4th)
404 (F.C.).
64. Fairmount Resort Properties Ltd. v. Fairmount Hotel Management, L.P. (2008), 67 C.P.R. (4th)
404 (F.C.).
65. Sequa Chemicals Inc. v. United Colour and Chemicals Ltd. (1992), 44 C.P.R. (3d) 371
(F.C.T.D.).
66. Havana House Cigar & Tobacco Merchants Ltd. v. Skyway Cigar Store (1998), 81 C.P.R. (3d)
203 (F.C.T.D.).
67. Citrus Growers Association Ltd. v. William G. Branson Ltd. (1990), 36 C.P.R. (3d) 434
(F.C.T.D.).
68. See Chapter 4, part 2.
69. Subsection 17(1) and see Robert C. Wian Enterprises Inc. v. Mady (1965), 46 C.P.R. 147 (Ex. Ct.).
87
88
trademark in Canada did so with knowledge of such previous use or making

known.71 This is the only limitation prescribed by Act concerning expungement and there are no other limitation periods for bringing an application to
expunge a registered trademark.72
No person is entitled to institute any proceeding in the Federal Court calling into question any decision given by the Registrar of which such person
had express notice and from which they had a right to appeal.73 However, a
prior decision of the Registrar under section 45 is not a bar to an application
for expungement.74

Section 18 lists the grounds under which the validity of a registration of a
trademark may be attacked. The section provides that a registration of a
trademark is invalid if:
(a) the trademark was not registrable at the date of registration;75
(b) the trademark is not distinctive at the time proceedings bringing the
validity of the registration into question are commenced;76 or
(c) the trademark has been abandoned; and
(d) subject to section 17, the applicant for registration was not the person
entitled to secure the registration.77
Non-statutory grounds of invalidity have been recognized, including misappropriation of a trademark in violation of a fiduciary duty or fraudulent or
material misrepresentation for the purposes of registration.78 Depreciation of
the value of the goodwill attached to the mark or deception of the public in
71. Subsection17(2).
72. Boston Pizza International Inc. v. Boston Market Corp. (2003), 27 C.P.R. (4th) 52 (F.C.T.D.)
but see the case referred in footnote 60.
73. Subsection 57(2) and see Cafe de Brasil, S.p.A. v. Walong Marketing Inc., (2006) FC 1063, 53
C.P.R. (4th) 322 (F.C.).
74. Noxzema Chemical Co. v. Sheran Manufacturing (1968), 55 C.P.R. 147 (Ex. Ct.); Saxon Industries Inc. v. Aldo Ippolito & Co. (1982), 66 C.P.R. (2d) 79 (F.C.T.D.); Long v. Tucker [1985] 2
F.C. 534 (F.C.T.D.).
75. See Chapter 3.
76. See Chapter 2, part 2(c) and Magder v. Brecks Sporting Goods Co. [1976] 1 S.C.R. 527
(S.C.C.).
77. See Chapter 6.
78. Remo Imports Ltd. v. Jaguar Cars Limited, 2007 FCA 258, 60 C.P.R. (4th) 130 (F.C.A.) but not
for an innocent or negligent misrepresentation which is cured by amendment, Parfums de
Coeur, Ltd. v. Christopher Asta 2009 FC 21, 71 C.P.R. (4th) 82 (F.C.).
the context of a claim for passing off are not grounds of invalidity under
section 18 of the Act.79
(i) Not Registrable
A trademark that was not registrable at the date of its registration is invalid
and may be expunged.80 When it is alleged a registered trademark was not
registrable because it is confusing with a previously registered trademark, a
mere possibility of confusion is not sufficient to invalidate a registration.81
Where both parties to an action attack the registration of the other a court
is entitled to rely on the facts adopted by the unsuccessful plaintiff who alleged
that the defendants mark was confusing with the plaintiffs registered mark
and expunge its registration.82
(ii) Not Distinctive
A trademark that is not distinctive at the time proceedings bringing the validity
of its registration into question are commenced is invalid.83 The determination is made at the time when proceedings are issued. If significant time
passes, the registrant may be able to make the registration distinctive of it.84
A trademark may lose its distinctiveness if the owner allows the widespread use of the mark by rival traders. Widespread infringement of significant duration by just one trader may be sufficient.85
79. Remo Imports Ltd. v. Jaguar Cars Limited, 2007 FCA 258, 60 C.P.R. (4th) 130 (F.C.A.), paragraph 38.
80. Subsection 18(1)(a); and see Chapter 3 and Adidas (Can.) Ltd. v. Colins Inc. (1978), 38 C.P.R.
(2d) 145 (F.C.T.D.); Carling 0Keefe Breweries of Can. Ltd. v. AnheuserBusch Inc.; Carling
OKeefe Breweries of Can. Ltd. v. Labatt Brewing Co. (1982), 68 C.P.R. (2d) 1 (F.C.T.D.);
10 C.P.R. (3d) 433 (F.C.A.).
81. Remo Imports Ltd. v. Jaguar Cars Limited, 2007 FCA 258, 60 C.P.R. (4th) 130 (F.C.A.).
82. Remo Imports Ltd. v. Jaguar Cars Limited, 2007 FCA 258, 60 C.P.R. (4th) 130 (F.C.A.).
83. Subsection 18(l)(b); and see Chapter 2, part (2)(b) Consorzio del Prosciutto di Parma v. Maple
Leaf Meats Inc. (2001), 11 C.P.R. (4th) 48 (F.C.T.D.), 18 C.P.R. (4th) 414 (F.C.A.); Boston
Pizza International Inc. v. Boston Chicken Inc. (2002), 24 C.P.R. (4th) 150 (F.C.A.).
84. See Cross-Canada Auto Body Supply (Winsdor) Limited v. Hyundai Auto Canada, 2007 FC
580, 60 C.P.R. (4th) (F.C.), 2008 F.C.A. 98, 65 C.P.R. (4th) 121 (F.C.A.) where the Court considered the considerable period of time that the registrant had to make the registration distinctive of it and factually distinguished the case from previous decisions in Wilkinson Sword
(Canada) Ltd. v. Juda (1966), 51 C.P.R. 55 (Ex. Ct.) and Brecks Sporting Goods Co. v. Magder,
[1976] 1 S.C.R. 527 concerning trademarks that had been assigned from foreign parent companies to Canadian subsidiaries.
85. Auld Philips Ltd. v. Suzannes Inc (2005), 39 C.P.R. (4th) 45 (F.C.), affirmed (2005), 46 C.P.R.
(4th) 81 (F.C.A.)
89
If a trademark registration has been obtained by an agent who was using

the mark on behalf of a principal, the registration may be invalid as it is not
distinctive of the agent.86
Subsection 18(2) of the Act provides that no registration of a trademark
that has been so used in Canada by the registrant or his predecessor in title as
to have become distinctive at the date of registration shall be held invalid
merely on the ground that evidence of such distinctiveness was not submitted
to the competent authority or tribunal before the grant of the registration.
The existence of subsection 18(2) does not preclude the responding party
from invoking subsection 12(2) during expungement proceedings.87
(iii) Abandonment
The registration of a trademark is invalid if the trademark has been abandoned.88
In order to establish abandonment of a mark, an applicant must prove two
elements: the mark is no longer in use in Canada, and an intention to abandon the mark.89 The abandonment of a trademark is a question of fact to be
decided in view of the particular circumstances of each case; non-use is not
sufficient to establish abandonment, though an intention to abandon can be
inferred from a long period of non-use.90 The onus of proving abandonment
is on the attacking party.91
(iv) Entitlement
A registration of a trademark may be invalid if the applicant for registration was not the person entitled to secure the registration. This may occur if
the applicant did not satisfy the requirements of section 16.92 In addition a
86. Turban Brand Products Ltd. v. Khan (1980), 52 C.P.R. (2d) 71 (F.C.T.D.); Wilhelm Layher
GmbH v. Anthes Industries Inc. (1986), 8 C.P.R. (3d) 187 (F.C.T.D.); Citrus Growers Assn. Ltd.
v. William D. Branson Ltd. (1990), 36 C.P.R. (3d) 434 (F.C.T.D.).
87. Emall.ca Inc. v. Cheap Tickets and Travel Inc., 2007 FC 243, 56 C.P.R. (4th) 82 (F.C.) appeal
88. Subsection 18(1)(c).
89. Cross-Canada Auto Body Supply (Windsor) Ltd. et al. v. Hyundai Auto Canada (2007), 60
C.P.R. (4th) 406; J.A. & M. Cote Ltee v. B.F. Goodrich Co. (1949), 14 C.P.R. 33 (Ex. Ct.); Promafil Canada Lte v. Munsingwear Inc. (1992), 44 C.P.R. (3d) 59 (F.C.A.).
90. Tommy Hilfiger Licensing Inc. v. Produits de Qualite I.M.D. Inc. (2005), 37 C.P.R. (4th) 1
(F.C.); Omega Engineering, Inc. v. Omega SA (2006), 56 C.P.R. (4th) 210 (F.C.).
91. Western Clock Co. v. Oris Watch Co. Ltd. [1931] 2 D.L.R. 775, [1931] Ex. C.R. 64.
92. Subsection 18(1) and section 17. Also see Chapter 6.
registration may be invalid if it was obtained by the inclusion of a materially

false statement of use that was fundamental to the registration93 or on the
basis of a fraudulent misrepresentation.94
93. Unitel Communications Inc. v. Bell Canada (1995), 61 C.P.R. (3d) 12 (F.C.T.D.); WCC Containers Sales Limited v. Haul-All Equipment Ltd. (2003), 28 C.P.R. (4th) 175 (F.C.T.D.).
In such a case it may not be necessary to show either fraud or intent to deceive. The registration may be void ab initio but not in other cases where the registrant is entitled to the benefit
of section 19, Remo Imports Ltd. v. Jaguar Cars Limited, (2007), 60 C.P.R. (4th) 130, 2007
FCA 258 (F.C.A.).
94. WCC Containers Sales Limited v. Haul-All Equipment Ltd. (2003), 28 C.P.R. (4th) 175
(F.C.T.D.).
91
CHAP T ER
11
Confusing Trademarks
1. Introduction
94
94
94
97
c) Duration of Use
99
d) The Nature of the Wares, Services or Business
99
e) Famous Trademarks
100
f) Nature of the Trade
101
g) Degree of Resemblance
102
(i) Appearance
102
(ii) Sound
102
(iii) Idea
103
h) Other Circumstances
103
93
94 Chapter 11 Confusing Trademarks
1. Introduction
The Trade-marks Act provides that the word confusing, when applied as an
adjective to a trademark or trade name, means a trademark or trade name the
use of which would cause confusion in the manner and circumstances
described in the Act.1 The potential for confusion must be considered in the
following situations, among others:
(a) when a determination is being made concerning whether a proposed
mark is potentially available for use;
(b) when an examiner issues an office action asserting that the applied-for
mark is confusing with another mark;2
(c) in opposition proceedings where the opponent alleges that the applicants
mark is confusing with the opponents mark;3
(d) in an action for infringement;4
(e) in proceedings seeking the expungement of a registered trade mark.5
The Act provides that the use of a trademark causes confusion with another
trademark if the use of both marks in the same area would be likely to lead to
the inference that the wares or services associated with such trademarks are
manufactured, sold, leased, hired, or performed by the same person, whether
or not such wares or services are of the same general class.6 The use of a trademark causes confusion with a trade name and the use of a trade name causes
confusion with a trademark under corresponding conditions.7 The concluding phrase whether or not such wares or services are of the same general
class clarifies that the general class of wares and services, while relevant is
not controlling.8
1.
2.
3.
4.
5.
6.
Section 2.
See Chapter 12.
Section 20 and Chapter 13.
See Chapter 10, part 2(e).
Subsection 6(2) and see Mattel, Inc. v 3894207 Canada Inc. (2006), 49 C.P.R. (4th) 321 (S.C.C.)
and applied in Veuve Clicquot Ponsardin Maison Fonee en 1772 v. Boutiques Cliquot Lte
(2000), 7 C.P.R. (4th) 189 (F.C.T.D.), (2004), 35 C.P.R. (4th) 1 (F.C.A.), (2006), 49 C.P.R. (4th)
401 (S.C.C.).
7. Subsections 6(3) and (4).
8. Mattel, Inc. v 3894207 Canada Inc. (2006), 49 C.P.R. (4th) 321 (S.C.C.).
The purpose of trademarks is to create and symbolize linkages. A trademark is a symbol of a connection between a source of a product and the
product itself.9 Confusion can be seen as mistaken inferences about the source
of a product which take place in the marketplace.10 In this context a mistaken
inference can only be drawn if a link or association is likely to arise in the
consumers mind between the source of the wares or services of the senior
mark and the source of the wares or services of the junior mark. Establishing
the likelihood is a matter of evidence not speculation.11 If there is no likelihood of a link, there can be no likelihood of a mistaken inference, and thus no
confusion within the meaning of the Act.12
The court or the Registrar, as the case may be, must make a determination
of the effect of the marks from the perspective of a mythical consumer who
normally makes up the market.13 The point of view of the average hurried
consumer having an imperfect recollection of the marks in issue is applied.14
The reaction of a moron in a hurry or the rash, careless, or unobservant purchaser should not be considered unless there are special circumstances.15
Evidence of actual confusion is persuasive and relevant but is not necessary
to show confusion.16 Conversely, an adverse inference may be drawn from the
lack of evidence of instances of confusion in circumstances where it would
readily be available if the allegation of likely confusion were justified.17
The Act directs that in determining whether trademarks or trade names
are confusing, the court or the Registrar, as the case may be, must have regard
to all of 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;
(c) the nature of the wares, services, or business;
(d) the nature of the trade; and
9. Kirkbi AG v. Ritvik Holdings Inc. [2005] 3 S.C.R 302 (S.C.C.); Mattel, Inc. v 3894207 Canada
Inc. (2006), 49 C.P.R. (4th) 321 (S.C.C.).
11. Veuve Clicquot Ponsardin Maison Fonee en 1772 v. Boutiques Cliquot Lte (2000), 7 C.P.R.
(4th) 189 (F.C.T.D.), (2004), 35 C.P.R. (4th) 1 (F.C.A.), (2006), 49 C.P.R. (4th) 401 (S.C.C.).
13. Alticor Inc. v. Nutravite Pharmaceuticals Inc. (2005), 42 C.P.R. (4th) 107 (F.C.A.)
14. Mattel, Inc. v 3894207 Canada Inc. (2006), 49 C.P.R. (4th) 321 (S.C.C.)
16. Mr Submarine Ltd. v. Amandista Investments Limited (1986), 11 C.P.R. (3d) 425 (F.C.T.D.),
reversed (1987), 19 C.P.R. (3d) 3 (F.C.A.); Mattel, Inc. v 3894207 Canada Inc. (2006), 49 C.P.R.
(4th) 321 (S.C.C.); Canadian Tire Corp. v. Accessoires DAutos Nordiques Inc. 2006 FC 1431
(F.C.) appeal dismissed (2007), 62 C.P.R. (4th) 436 (F.C.A) relating to the use of survey evidence in this context.
95
96
Chapter 11 Confusing Trademarks
(e) the degree of resemblance between the trademarks or trade names in

appearance or sound or in the ideas suggested by them.18
As set out in the Act, the statutory factors listed above are not limiting and
different circumstances will be given different weight in a context-specific
assessment.19 The totality of the circumstances will dictate how each factor
should be treated20 and in some cases some factors will carry greater weight
than others. Each of the factors need not be given equal weight.21 However, in
many cases, the degree of resemblance between the trademarks in appearance, sound, or in ideas suggested by them is the dominant factor.22
The perspective of the average Anglophone consumer or the average
Francophone consumer, or in special circumstances the average bilingual
consumer, should be considered. But, the perspective of the average bilingual
consumer is only considered where a trademark consists of unusual or distinct words which would create confusion for someone who knew what they
meant in both English and French.23
The trademarks or trade names in question must be considered as a whole
as they are perceived by a mythical consumer who normally makes up the
market. It is not a correct approach to put the trademarks side by side or break
them up into components and make a careful comparison in order to observe
similarities and differences.24
The determination of whether two trademarks or trade names are confusing involves the exercise of personal judgment in light of all the evidence
having regard to the totality of the circumstances and statutory factors. This
is a judicial determination of a question of fact or question of mixed fact and
law25 not the exercise of discretion.26
18. Subsection 6(5) and see Cushman & Wakefield, Inc. v. Wakefield Realty Corp. (2004),
37 C.P.R (4th) 212 (F.C.A.)
19. Mattel, Inc. v 3894207 Canada Inc. (2006), 49 C.P.R. (4th) 321 (S.C.C.); Veuve Clicquot
Ponsardin Maison Fonee en 1772 v. Boutiques Cliquot Lte (2000), 7 C.P.R. (4th) 189
(F.C.T.D.), (2004), 35 C.P.R. (4th) 1 (F.C.A.), (2006), 49 C.P.R. (4th) 401 (S.C.C.).
21. Miss Universe Inc. v. Bohna (1994), 58 C.P.R. (3d) 381 (F.C.A.).
22. Beverly Bedding & Upholstery Co. v. Regal Bedding & Upholstering Ltd. (1980), 47 C.P.R. (2d)
145 (F.C.T.D.); (1982), 60 C.P.R. (2d) 70 (F.C.A.); Canadian Tire Corp. v. Accessoires DAutos
Nordiques Inc. 2006 FC 1431 (F.C.) appeal dismissed (2007), 62 C.P.R. (4th) 436 (F.C.A.).
23. Smithkline Beecham Corporation v. Pierre Fabre Medicament (2001), 11 C.P.R. (4th) 1 (F.C.A.);
Pierre Fabre Medicament v. Smithkline Beecham Corporation, 2004 FC 811 (F.C.).
24. British Drug Houses Ltd. v. Battle Pharmaceuticals Ltd. [1944] Ex. C.R. 239 (Ex. Ct.); affirmed
[1946] S.C.R. 50 (S.C.C.); Canadian Tire Corp. v. Accessoires DAutos Nordiques Inc. 2006 FC
1431 (F.C.) appeal dismissed (2007), 62 C.P.R. (4th) 436 (F.C.A.).
26. See Coca-Cola Co. v. Pepsi-Cola Co., [1938] Ex. C.R. 263 (Ex. Ct.); reversed [1940] S.C.R 17
(S.C.C.); affirmed [1942] 2 W.W.R. 257 (P.C.); Benson & Hedges v. St. Regis (1968), 57 C.P.R.
1 (S.C.C.).
The determination of whether trademarks or trade names are confusing

depends on the facts of each case. However, previously decided cases can be
helpful by illustrating the application of the statutory factors and principles
established by the courts.27
The first factor to be considered is the inherent distinctiveness of the trademarks or trade names in issue and the extent to which they have become
known.
Distinctiveness is the essence and cardinal requirement of a trademark.28
Invented, unique, or non-descriptive words tend to be more inherently distinctive than weak marks made up of common everyday words or which have
a geographic or descriptive connation.
The extent of the inherent distinctiveness of a mark will strongly influence
the ambit of protection available to the mark.29 No person is entitled to fence
in common words in the English or French language and such words cannot
be protected over a wide area.30 When a mark is inherently weak, in the
absence of acquired distinctiveness, small differences will be sufficient to distinguish it from other marks.31
Where a trademark consists of words which are common and which are
also contained in a number of other trademarks in use in the same market,
it will be less distinctive and entitled to less protection than in the case of a
strong mark.32 Trademarks consisting of initials33 or numbers34 fall within
this category and will be typically be entitled to a small ambit of protection.
Similarly, if competitors use trademarks which are similar to the trademark in issue, this will limit the degree of distinctiveness of the trademark35
27. Cochrane Dunlop Hardware Ltd. v. Capital Diversified Industries (1976), 30 C.P.R. (2d) 176
(Ont. C.A.).
29. General Motors v. Bellows, [1947] Ex. C.R. 568 (Ex. Ct.); affirmed [1949] S.C.R. 678 (S.C.C.);
Mattel, Inc. v. 3894207 Canada Inc. (2006), 49 C.P.R. (4th) 321 (S.C.C.).
30. Mattel, Inc. v. 3894207 Canada Inc. (2006), 49 C.P.R. (4th) 321 (S.C.C.).
31. Max Mara Fashion Group S.R.L. v. Provigo Distribution Inc., (2005), 46 C.P.R. (4th) 112
(F.C.).
32. Kellogg Salada Canada Inc. v. Maximum Nutrition Ltd. (1992), 43 C.P.R. (3d) 349 (F.C.A.);
Molson Cos. Ltd. v. John Labatt Ltd. (1994), 58 C.P.R. (3d) 527 (F.C.A.); Tradition Fine Foods
Ltd. v. Groupe Traditionall Inc. (2006), 51 C.P.R. (4th) 342 (F.C.); Ratiopharm Inc. v. Laboratoiries Riva Inc., (2006), 51 C.P.R. (4th) 415 (F.C.).
33. GSW Ltd. v. Great West Steel Industries Ltd. (1975), 22 C.P.R. (2d) 154.(F.C.T.D.).
34. Pizza Pizza Ltd. v. Registrar of Trade-marks (1989), 26 C.P.R. ( 3d) 355 (F.C.A.).
35. Foodcorp Ltd. v. Chalet Bar BQ (Can.) Inc. (1981), 55 C.P.R. (2d) 46 (F.C.T.D.); additional
reasons at 56 C.P.R. (2d) 14 (F.C.T.D.); Sunshine Biscuits Inc. v. Corporate Foods Ltd. (1982),
97
or may cause the mark to become non-distinctive and not entitled to

protection.36
When it is asserted that the distinctiveness of a mark is limited due to
common use, evidence of actual use of the marks must be presented before
inferences about the marketplace can be made, unless there are a large number
of existing registrations.37
If a trademark consists of a new combination of words or designs, even
though some of the components are common to the trade, the combination,
when looked at as a whole, may have some distinctiveness.38
Trademark owners must diligently protect their trademarks from piracy
or risk having their marks lose their distinctiveness and potentially their legal
protection.39 Similarly, if the owner of a trademark allows it to be used as the
name of the wares or services in question, it may lose its distinctiveness and
become generic.40
The extent to which they have become known relates to the acquired
distinctiveness of the mark.41 A mark, which is not inherently distinctive,
may acquire distinctiveness through extensive use in the marketplace which
makes the mark known to purchasers of the wares or services in issue.42
If the trademark owner owns a family of trademarks derived from an
existing mark, a mark which is a part of the family, may be entitled to a
broader ambit of protection.43
36.
37.
38.
39.
40.
41.
42.
43.
61 C.P.R. (2d) 53 (F.C.T.D.); Farside Clothing Ltd. v. Caricline Ventures Ltd. (2001), 16 C.P.R.
(4th) 482 (F.C.T.D.), affirmed (2002), 22 C.P.R. (4th) 321 (F.C.A.).
CocaCola Co. v. PepsiCola Co. of Can. Ltd. [1940] S.C.R. 17 (S.C.C.); affirmed [1942]
2 W.W.R. 257 (P.C.).
CocaCola Co. v. PepsiCola Co. of Can. Ltd. [1940] S.C.R. 17 (S.C.C.); affirmed [1942]
2 W.W.R. 257 (P.C.); Astro Dairy Products Ltd. v. Compagnie Gervais Danone, (1999),
87 C.P.R. (3d) 262 (F.C.T.D.). Typically 20 or more registrations must exist.
CocaCola Co. of Can. Ltd. v. PepsiCola Co. of Can. Ltd. [1938] Ex. C.R. 263 (Ex. Ct.); reversed
[1940] S.C.R. 17 (S.C.C.); affirmed [1942] 2 W.W.R. 257 (P.C.).
Mattel, Inc. v 3894207 Canada Inc. (2006), 49 C.P.R. (4th) 321 (S.C.C.); Veuve Clicquot
(F.C.T.D.), (2004), 35 C.P.R. (4th) 1 (F.C.A.), (2006), 49 C.P.R. (4th) 401 (S.C.C.); CochraneDunlop Hardware Ltd. v. Capital Diversified Industries Ltd. (1976), 30 C.P.R. (2d) 176 (Ont.
C.A.); Mr. Submarine Ltd. v. Amandista Investment Ltd. (1986), 11 C.P.R. (3d) 425 (F.C.T.D.);
19 C.P.R. (3d) 3 (F.C.A.).
Cheerio Toys & Games Ltd. v. Dubiner (1964), 44 C.P.R. 134 (Ex. Ct.); [1966] S.C.R. 206
(S.C.C.).
Mattel, Inc. v 3894207 Canada Inc. (2006), 49 C.P.R. (4th) 321 (S.C.C.) and see Chapter 2,
part 2(c).
McDonalds Corp. v. Yogi Yorgurt Ltd (1982), 66 C.P.R. (2d) 101 (F.C.T.D.), McDonalds Corp. v.
Silcorp. Ltd. (1989), 24 C.P.R. (3d) 207 (F.C.T.D.), 41 C.P.R. (3d) 67 (F.C.A.); McDonalds
Corp. v. Coffee Hut Stores Ltd (1994), 55 C.P.R. (3d) 463, (1996), 68 C.P.R. (3d) 168 (F.C.A.).
c) Duration of Use
The second factor to be considered is the length of time the marks in issue
have been in use.44 The duration of use is important since distinctiveness may
be acquired as result of extensive use.45 But if the trademarks in issue have
been used concurrently for a lengthy period of time and evidence of instances
of confusion is not brought forward, an inference may be drawn that confusion is not likely.46
d) The Nature of the Wares, Service, or Business

The third factor to be considered is the nature of the wares, services or business.47 The general class of wares and services, while relevant, is not controlling.48
The fact that there is an overlap in the wares or services must be considered but is not sufficient by itself to establish a likelihood of confusion.49
A statement of wares or services should be read with a view to determining
the probable type of trade or business intended to be reached rather than all
possible trades that might be covered.50 However, when there are no restrictions as to trade or price in the respective statements of wares, the two statements must be compared as listed.51
Where a trademark is inherently weak and does not have acquired distinctiveness, differences in the wares, services or businesses of a junior mark may
be sufficient to avoid the likelihood of confusion.52
If the wares or services are expensive and a mythical purchaser would
carefully consider a purchase, relatively minor differences between marks
44.
45.
46.
47.
48.
49.
50.
51.
52.
Subsection 6(5)(b).
Mattel, Inc. v 3894207 Canada Inc. (2006), 49 C.P.R. (4th) 321 (S.C.C.).
Subsection 6(5)(c); Oshawa Holdings Ltd. v. Fjord Pacific Marine Industries Ltd. (1980),
47 C.P.R. (2d) 86 (F.C.T.D.); affirmed 36 N.R. 71 (F.C.A.); Mr. Submarine v. Amandista Investments Ltd. (1987), 19 C.P.R. (3d) 1 (F.C.A.); United Artists Corp. v. Pink Panther Beauty Corp.
(1998), 80 C.P.R. (3d) 247 (F.C.A.).
Max Mara Fashion Group S.R.L. v. Provigo Distribution Inc. (2005), 46 C.P.R. (4th) 112 (F.C.).
Unisys Corp. v. Northwood Technologies Inc. (2002), 29 C.P.R. (4th) 115 (T.M.O.B.).
Mr Submarine Ltd. v. Amandista Investments Ltd. (1987), 19 C.P.R. (3d) 3 (F.C.A.); Maison
Cousin (1980) Inc. v. Cousins Submarines Inc., 2006 FCA 409, 60 C.P.R (4th) 369 (F.C.A).
Clorox Co. v. Sears Canada Inc. 33 C.P.R. (3d) 48 (T.M.O.B.), 41 C.P.R. (3d) 483 (F.C.T.D.)
49 C.P.R. (3d) 217 (F.C.A.).
99
may be sufficient to distinguish them.53 Conversely, if the wares or services

are inexpensive and purchased hurriedly, this must be considered as well.54
In an opposition, the applicants statement of wares or services and the
wares or services shown to be used by the opponent in association with its
mark govern the determination.55
e) Famous Trademarks
Where a trademark has become famous by virtue of the goodwill associated
with it, this fame may be capable of carrying the protection available to the
mark across product lines while lesser marks would be limited by the wares
or services for which they are registered.56
The totality of the circumstances will dictate how each of the statutory factors should be treated. Fame is a surrounding circumstance of importance,
and differences in the wares and services will not always be the dominant
consideration. A difference in the wares or services or the fame of the mark
do not supersede, or trump, all other factors. Each situation must be judged
in its full factual context.57
Not all famous marks will be able to make a jump across product lines and
the difference between the respective wares and services will continue to be a
significant obstacle to overcome. As observed by the Supreme Court of
Canada, luxury champagne and mid-priced womens wear are as different as
chalk and cheese.58 The fame of a mark may be quite specific because of a
very specific association with a product. But a famous mark which is widely
used may be able to transcend product line differences.59
In this context, a mistaken inference can only be drawn if a link or association is likely to arise in the consumers mind between the source of the
famous product and the source of the less well-known product. If there is no
53. General Motors Corp. v. Bellows, [1947] Ex. C.R. 568 (Ex. Ct.); affirmed [1949] S.C.R. 678
(S.C.C.).
54. General Motors Corp. v. Bellows, [1947] Ex. C.R. 568 (Ex. Ct.); affirmed [1949] S.C.R. 678
(S.C.C.).
55. Mr. Submarine Ltd. v. Amandista Investments Ltd., (1987), 19 C.P.R (3d) (F.C.A.).
57. Mattel, Inc. v 3894207 Canada Inc. (2006), 49 C.P.R. (4th) 321 (S.C.C.); Veuve Clicquot
(F.C.T.D.), (2004), 35 C.P.R. (4th) 1 (F.C.A.), (2006), 49 C.P.R. (4th) 401 (S.C.C.).
likelihood of a link, there can be no likelihood of a mistaken inference, and

therefore no confusion within the meaning of the Act.60
The consideration of future events and possibilities of diversification is
restricted to the potential expansion of existing operations. It does not include
speculation as to diversification into entirely new ventures.61
f) Nature of the Trade

The fourth factor to be considered is the nature of the trade.62 The nature and
kind of customer likely to purchase the wares or services,63 whether different
niche markets are involved,64 the channels of distribution,65 and the way in
which the trademarks are used66 are relevant in considering this factor.
Geographical proximity is also relevant and if the premises of the parties are
located close together, this may increase the prospect of confusion.67
Evidence concerning the actual channels of distribution should be considered, not speculation about future activities.68 The question in an opposition
is not whether the parties in issue sell their products in the same channels but
whether they are entitled to do so.69
If the potential purchasers of the wares or services in issue are professionals carrying on business, this may lessen the prospect of confusion.70 Similar
considerations may apply to the wholesale trade as opposed to the retail
trade.
60.
61.
62.
63.
64.
65.
66.
67.
68.
69.
70.
Mattel, Inc. v. 3894207 Canada Inc., (2006), 49 C.P.R. (4th) 321 (S.C.C.).
Subsection 6(5)(d).
General Motors v. Bellows [1947] Ex. C.R. 568 (Ex. Ct.); affirmed [1949] S.C.R. 678 (S.C.C.);
Mattel, Inc. v. 3894207 Canada Inc. (2006), 49 C.P.R. (4th) 321 (S.C.C.).
Mattel, Inc. v 3894207 Canada Inc. (2006), 49 C.P.R. (4th) 321 (S.C.C.) and see BMW Canada
Inc. v. Nissan Canada Inc. (2007), 57 C.P.R. (4th) 81 (F.C.) appeal allowed on other grounds
60 C.P.R. (4th) 181, 2007 FCA 255 (F.C.A).
McDonalds Corp. v. Coffee Hut Stores Ltd (1994), 55 C.P.R. (3d) 463, (1996), 68 C.P.R. (3d)
168 (F.C.A.)
Coca-Cola Co. v. Pepsi-Cola Co., [1938] Ex. C.R. 263 (Ex. Ct.); reversed on other grounds
[1940] S.C.R.17 (S.C.C.); affirmed [1942] 2 W.W.R. 257 (P.C.); British Drug Houses Ltd. v.
Battle Pharmaceuticals, [1944] Ex. C.R. 239 (Ex. Ct.) affirmed [1946] S.C.R. 50 (S.C.C.);
United Artists Corp. v. Pink Panther Beauty Corp. (1998), 80 C.P.R. (3d) 247 (F.C.A.).
Cartem Inc. v. Souhaits Renaissance Inc. (1982), 60 C.P.R. (2d) 1 (F.C.T.D.).
Alticor Inc. v. Nutravite Pharmaceuticals Inc. (2005), 42 C.P.R. (4th) 107 (F.C.A.).
Clorox Co. v. E.I. Dupont de Nemours and Co. (1995), 64 C.P.R. (3d) 79 (F.C.T.D.); United
Artists Corp v. Pink Panther Beauty Corp. (1998), 80 C.P.R. (3d) 247 (F.C.A.).
United Artists Corp v. Pink Panther Beauty Corp. (1998), 80 C.P.R. (3d) 247 (F.C.A.); Ratiopharm Inc. v. Laboratoiries Riva Inc. (2006), 51 C.P.R. (4th) 415 (F.C.).
101
g) Degree of Resemblance
The fifth factor to be considered is the degree of resemblance between the
trademarks or trade names in appearance or sound, or in the ideas suggested
by them. As discussed above, this may be the dominant factor.
(i) Appearance
When trademarks consist of a combination of elements, it is not a proper
approach to break them up into their elements, concentrate attention upon
the elements that are different and conclude that, because there are differences in such elements, the marks as a whole are different. Trademarks may
be similar when looked at in their totality even if differences may appear in
some of the elements when viewed separately. It is the combination of the
elements that constitutes the trademark and gives distinctiveness to it, and it
is the effect of the trademark as a whole, rather than of any part in it, that
must be considered71 as perceived by a mythical consumer and not viewed
side by side or broken into components. That is not to say that in some cases
it is still possible to focus on particular features of the marks which may have
a important influence on purchasers.72
Although the first component of a mark is often considered more important, when a word is a common, descriptive, or suggestive word, the significance of the first component decreases.73 However, if the first or main
component of a word mark is more distinctive, it may be relatively unimportant that the two marks in issue have different suffixes.74
The addition of get up or the fact that the plaintiffs mark is used with
other marks should not be relevant in an action for infringement.75
(ii) Sound
The degree of resemblance of the marks as sounded must be considered.76
The words may be quite different in appearance but if they are pronounced in
71. Canadian Tire Corp. v. Accessoires DAutos Nordiques Inc. 2006 FC 1431 (F.C.) appeal dismissed (2007), 62 C.P.R. (4th) 436 (F.C.A); British Drug Houses Ltd. v. Battle Pharmaceuticals, [1944] Ex. C.R. 239 (Ex. Ct.); affirmed [1946] S.C.R. 50 (S.C.C.).
72. United Artists Corp v. Pink Panther Beauty Corp. (1998), 80 C.P.R. (3d) 247 (F.C.A.); Vibe
Ventures LLC v. 3681441 Canada Inc. 2005 FC 1650, 45 C.P.R. (4th) 18 (F.C.).
73. Park Avenue Furniture Corp. v. Wickes/ Simmons Bedding Ltd., (1991), 37 C.P.R. (3d) 413
(F.C.A.).
74. Sealy Sleep Products Ltd. v. Simpson-Sears Ltd. (1960), 33 C.P.R. 129 (Ex. Ct.); Coca-Cola Co.
v. Pepsi-Cola Co. [1938] Ex. C.R. 263 (Ex. Ct.); reversed [1940] S.C.R. 17 (S.C.C.); affirmed
[1942] 2 W.W.R. 257 (P.C.).
75. United Artists Corp. v. Pink Panther Beauty Corp. (1998), 80 C.P.R. (3d) 247 (F.C.A.); Canadian Tire Corp. v. Automobility Distribution Inc., (2006), 51 C.P.R. (4th) 452 (T.M.O.B.).
76. Subsection 6(5)(e).
the same way, this may be an important factor.77 Pronunciation will be important when the wares or services in issue are ordered by telephone.78 Evidence
of pronunciation, including the expert opinions of individuals skilled in linguistics, is admissible in French or English.79
(iii) Idea
Similarity of idea is a factor if it would reasonably have an impact on the average purchaser.80 The same idea may be important if a link or association is
likely to arise in a consumers mind between the source of the wares or services of the senior mark and the source of the wares or services of the junior
mark.81 But a link may work against the owner of the senior mark if the link
evokes an extrinsic matter.82 Survey evidence, presented through a qualified
expert, can be used to demonstrate the idea that a mark suggests.83
h) Other Circumstances
The decision of the Trade-mark Opposition Board that disallowed the applicants application for a trademark on the basis of confusion with the opponents mark will be accorded little weight in a subsequent action by the
opponent for infringement relating to use of the same mark because the
record and burden of proof are different. The legal system is not a stranger to
different outcomes arising out of the same factual situation where different
issues were considered and different evidence is introduced.84
The intention of the owner of the junior mark is of little relevance to the
issue of confusion.85
77. British Drug Houses Ltd. v. Battle Pharmaceuticals, [1944] Ex. C.R. 239 (Ex. Ct.); affirmed
[1946] S.C.R. 50 (S.C.C.); Ultravite Laboratories Ltd. v. Whitehall Laboratories Ltd., [1964]
Ex. C.R. 913 (Ex. Ct.) reversed [1965] S.C.R. 734 (S.C.C.).
78. Mead Johnson & Co. v. G.D. Searle Co. (1967), 65 D.L.R. (2d) 56 (Ex. Ct.).
79. Ethicon Inc. v. Cyanamid of Can. Ltd. (1977), 35 C.P.R. (2d) 126 (F.C.T.D.); Pierre Fabre Medicament v. Smithkline Beecham Corporation, 2004 FC 811 (F.C.).
80. Kimberly-Clark of Can. Ltd. v. Molnlycke Aktiebolag (1982), 61 C.P.R. (2d) 42 (F.C.T.D.);
Michelin & Cie v. Astro Tire & Rubber Co. of Can. (1981), 67 C.P.R. (2d) 254 (T.M.O.B.);
affirmed 69 C.P.R. (2d) 260 (F.C.T.D.).
82. Canadian Tire Corp. v. Accessoires DAutos Nordiques Inc. 2006 FC 1431 (F.C.) appeal dismissed (2007), 62 C.P.R. (4th) 436 (F.C.A.).
84. Alticor Inc. v. Nutravite Pharmaceuticals Inc. (2005), 42 C.P.R. (4th) 107 (F.C.A.).
103
CHAP T ER
12
Opposition Proceedings
1. Introduction
106
106
106
107
108
d) Content
109
110
f) Amendments
111
3. Evidence
111
a) The Framework
111
112
113
4. The Hearing
114
5. Appeal
115
105
106 Chapter 12 Opposition Proceedings
1. Introduction
As the Supreme Court of Canada recently put it, a trademark owner is
required by law to protect its marks from piracy or risk having those marks
lose their distinctiveness.1 In this regard, a trademark owner should review
trademark applications as they are advertised in the Trade-marks Journal2 as
well as monitoring the marketplace.
Trademark oppositions can play an important role in maintaining the
distinctiveness of a registered trademark. If consideration is being given to
opposing an application, it is prudent to search for other marks owned or
applied for by the applicant since they may be relevant to the decision.
The Trade-marks Act provides that within two months after the advertisement of an application for the registration of a trademark, any person may,
on payment of the prescribed fee, file a statement of opposition with the
Registrar.3 Since the Act refers to any person an opponent is not required to
show that they would be adversely affected by registration.4
An extension of the time to file the statement of opposition may be
requested before the expiration of the two-month time limit. Care should be
taken to ensure that the request specifies the date the application was advertised in the Trade-marks Journal and that the request was received and
processed,5 or the application may be allowed which may preclude any opposition.6 When any extension of time is granted to any party, the Registrar may
thereafter grant any reasonable extension of time to any other party in which
to take any subsequent step.7
1. Mattel, Inc. v. 3894207 Canada Inc., (2006), 49 C.P.R. (4th) 321 (S.C.C.).
2. http://napoleon.ic.gc.ca/cipo/tradejournal.nsf/$$ViewTemplate+for+TMJournal+English?
OpenForm.
3. Subsection 38(1) and see Canadian Intellectual Property Office Practice Notice, Practice in
Trade-marks Opposition Proceeding in effect March 31, 2009.
4. Centennial Grocery Brokers Ltd. v. Reg. T.M., [1972] F.C. 257 (F.C.T.D.).
5. The status of the opposition should be reflected on the Canadian Intellectual Property Office
trademark database currently located at http://www.ic.gc.ca/app/opic-cipo/trdmrks.
6. Sadhu Singh Hamdard Trust v. Registrar of Trade-marks 2006 FC 171, 47 C.P.R. (4th) 373 (F.C),
affirmed on appeal 2007 FCA 355, 62 C.P.R (4th) 245 (F.C.A.).
7. Trade- marks Regulations, SOR/96-195 as amended, section 47.
Statement of Opposition 107
An extension applied for after the expiration of the above-noted time limit
or the time extended by the Registrar and before the application is allowed,
will not be granted unless the Registrar is satisfied that the failure to do the
act or apply for the extension within that time or the extended time was not
reasonably avoidable.8
The Registrar cannot extend the time for filing a statement of opposition
concerning an application that has been allowed.9 An exception applies where
an application has been allowed without considering a previously filed request
for an extension of time to file a statement of opposition. In this case the
Registrar may withdraw the application from allowance at any time before
issuing a certificate of registration and extend the time for filing a statement
of opposition.10
Once an opposition is commenced, the opposed application will not be
allowed until the opposition is decided in favour of the applicant.11
An opposition may be based on any of the following grounds:12
(i) The application does not conform to the requirements of section 30.13
This includes grounds such as
The applicant did not describe the wares or services in ordinary
commercial terms.14
The applicant did not use the mark from the date set out in the
application.15
The applicant did not use the mark in its country of origin when the
application is based on foreign registration and use. 16
8. Subsection 47(2) and see Fjord Pacific Marine Industries Ltd. v. Reg. T.M., [1975] F.C. 536
(F.C.T.D.).
13. Subsection 38(2)(a) and see Chapter 7.
14. Burrough Wellcome Inc. v. Novopharm Ltd. (1994), 58 C.P.R. (3d) 511 (F.C.T.D).
15. Canadian Schenley Distilleries Ltd. v. Can.s Man. Distillery Ltd. (1975), 25 C.P.R. (2d) 1 (F.C.T.D.);
Community Credit Union Ltd. v. Canada (Registrar of Trade-marks), 2006 FC 1119 (F.C.).
16. Allergan Inc. v. Lancme Parfums & Beaut & Cie (2007), 64 C.P.R (4th) 147 (T.M.O.B.).
The applicant could not have been satisfied it was entitled to use the
mark.17
The applicant used the mark prior to filing an application for the
mark on the basis of proposed use.18
The applicant failed to refer to a predecessor in title who used
the mark19 or a licensee.20
(ii) The trademark is not registrable.21
(iii) The applicant is not the person entitled to registration.22
(iv) The trademark is not distinctive.23
The owner of a foreign trademark who cannot satisfy the difficult requirements of showing its mark has been made known in Canada24 may oppose an
application on the basis of non distinctiveness. But in order to succeed with
such a ground of opposition, it must be shown that at the date of filing the
statement of opposition, the mark is known to some extent in Canada and the
reputation of the mark in Canada is substantial, significant or sufficiently
known so as to negate the distinctiveness of the applied for mark.25

Under the Act or as a result of case law, each ground of opposition is determined as of a specific date depending on the ground. This will also require
17. Sapodilla Co. v. Bristol-Myers (1974), 15 C.P.R. 152 (T.M.O.B.); Jones v. Dragon Tales Productions Inc. (2002), 27 C.P.R. (4th) 369 (T.M.O.B.); Mougey v. Janzen, (2007), 62 C.P.R. (4th)
230 (T.M.O.B.).
18. E. Remy Martin & Co. S.A. v. Magnet trading Corp. (HK) Ltd., (1988), 23 C.P.R (3d) 242
(T.M.O.B); Institut National des Apellations dOrigine v. Brick Brewing Co., Ltd., (1995),
66 C.P.R. (3d) 351 (T.M.O.B.); Lottery Corp. v. Western Gaming Systems Inc. (2002), 25 C.P.R.
(4th) 572 (T.M.O.B.); R. Griggs Group v. 359603 Canada Inc (2005), 47 C.P.R. (4th) 215
(T.M.O.B.); Parmalat Canada Inc. v. Sysco Corporation 2008 FC 1104, 69 C.P.R (4th)
349 (F.C.).
19. Natures Path Foods Inc. v. Jiva Manufacturing & Distributing Inc., (2007), 63 C.P.R. (4th)
64 (T.M.O.B.).
20. Alltemp Products Co. v. Bit Holder Inc. (2007), 63 C.P.R. (4th) 112 (T.M.O.B.).
21. Subsection 38(2)(b) and see Chapter 3.
22. Subsection 38(2)(c) and see Chapter 6.
23. Subsection 38(2)(d) and see Chapter 2, part 2(c) and see Muffin House Inc. v. Muffin House
Bakery Ltd. (1985), 2 C.P.R. (3d) 272 (T.M.O.B.).
24. See Chapter 4 part 2.
25. Bojangles International, LLC v. Bojangles Cafe Ltd., (2006), 48 C.P.R. (4th) 427 (F.C.) and see
Bousquet v. Barmish, (1991), 37 C.P.R. (3d) 516 (F.C. T. D.), 46 C.P.R. (3d) 510 (F.C.A).
Statement of Opposition 109
that evidence relating to the facts at the relevant material date be filed. The
material dates are as follows:
i) The date for determining compliance with section 30 is the date of
filing of the application.
ii) The date for determining grounds relating to registrability is the hearing date.26
iii) The dates for determining grounds relating to entitlement are set out
in section 16 of the Act. If the application is based on registration and
use abroad or proposed use, the relevant date is the filing date unless a
convention priority claim has also been made.27 If the application is
based on use, the relevant date is the date of first use specified in the
application.
iv) The date for determining distinctiveness is the date of filing the statement of opposition.28
d) Content
A statement of opposition should be considered as similar to a statement of
claim relating to an action in the Federal Court. It must set out the grounds
of opposition in sufficient detail to enable the applicant to reply.29 If a ground
of opposition is not properly pleaded, the Board at the hearing may refuse to
consider it.30 But in making this determination at the hearing stage, regard
must be had to the evidence filed as well as the statement of opposition.31
Before filing and serving a counter statement, an applicant may request an
interlocutory ruling to strike all or any potion of the statement of opposition.32
26. Park Avenue Furniture Corp. v. Wickes/Simmons Bedding Ltd (1991), 37 C.P.R. (3d) 413
(F.C.A.); Canadian Council of Professional Engineers v. Lubrication Engineers, Inc. (1992),
41 C.P.R. (3d) 243 (F.C.A.).
28. Re Andres Wines Ltd. and E. & J. Gallo Winery, [1976] 2 F.C. 3 (F.C.A.).
29. Subsection 38(3)(a). Massino De Beradinis v. Decaria Hair Studio, (1984), 2 C.P.R. (3d) 319
(T.M.O.B.).
30. Massino De Beradinis v. Decaria Hair Studio, (1984), 2 C.P.R. (3d) 319 (T.M.O.B.).
31. See Novopharm Ltd v. Ciba-Geigy Canada Ltd (2001), 15 C.P.R. (4th) 327 (F.C.A.); Novopharm
Ltd v. Astra AB (2002), 21 C.P.R. (4th) 289 (F.C.A.); Coastal Culture Inc. v. Wood Wheeler Inc.,
(2007), 57 C.P.R. (4th) 261 (F.C.).
32. See Notice in The Trade-marks Journal Vol. No. 2715, November 8, 2006 and see Novopharm
Ltd v. Ciba-Geigy Canada Ltd (2001), 15 C.P.R. (4th) 327 (F.C.A.); Novopharm Ltd v. Astra
AB (2002), 21 C.P.R. (4th) 289 (F.C.A.) which prompted the change in practice.
The statement of opposition must set out the address of the opponent in
Canada or the address of its principal office or place of business abroad and
the name and address in Canada of some person upon whom service may
be made.33
If the Registrar considers that the opposition is frivolous and does not
raise a substantial issue for decision, the statement of opposition will be
rejected and notice of decision given to the opponent.34 Only one valid
ground of opposition is required to satisfy the subsection. The words substantial issue are not equivalent to the words substantial likelihood that the
opponent will succeed.35
The Registrar must simply direct his or her mind to the question as to
whether the statement of opposition raises an arguable case and no evidence
will be considered.36 If the Registrar considers that the opposition raises a
substantial issue for decision, a copy of the statement of opposition must be
forwarded to the applicant.37
Within two months after the statement of opposition has been forwarded to
the applicant, the applicant must file a counter statement with the Registrar
and serve a copy on the opponent setting out the grounds on which the
applicant relies to support its application.38 An applicant can claim the benefit of section 14 in its counterstatement.39
If the applicant does not file and serve a counter statement in a timely
fashion, the applicant is deemed to have abandoned the application.40
Any statement or other material required to be served on a party in an
opposition may be served by personal service, by registered mail, by courier
or in any other manner with consent of the other party or their trademark
agent.41 The party effecting service must notify the Registrar of the manner of
33. Subsection 38(3)(b).

34. Subsection 38(4); and see Can. Tampax Corp. v. Reg. T.M. (1975), 24 C.P.R. (2d) 187
(F.C.T.D.); Pepsico Inc. v. Reg. T.M., [1976] 1 F.C. 202 (F.C.T.D).
35. Pepsico Inc. v. Reg. T.M., [1976] 1 F.C. 202 (F.C.T.D.).
36. Koffler Stores Ltd. v. Reg. T.M., (1976), 28 C.P.R. (2d) 113 (F.C.T.D.) .
38. Trade-Marks Regulations, SOR/96-195 as amended, section 41.
39. Canadian Council of Professional Engineers v. Tekla Oyj, (2008), 68 C.P.R. (4th) 228 (T.M.O.B.)
and see Chapter 4, part 3.
40. Subsection 38(7.2).
41. Trade-Marks Regulations, SOR/96-195 as amended, section 37(1) and see Practice In TradeMark Oppositions Proceedings, in effect March 31, 2009 currently at <http://www.cipo.ic.
gc.ca/eic/site/cipointernet-internetopic.nsf/eng/wr01558.html>.
Evidence
service and clearly indicate the method employed for service and the date of
such action in order that an effective date of service may be determined.42
f) Amendments
No amendment to a statement of opposition or counter statement shall be
allowed except with leave of the Registrar upon such terms as he or she may
think fit.43 The request to amend must be served on the opposite party, who
will be granted an opportunity to respond.
The practice of the Trade-marks Opposition Board is to only grant leave if
it is in the interest of justice to do so having regard to all the surrounding
circumstances including a) the stage the proceedings have reached; b) the
reasons advanced as to why the ground was not initially raised; c) the importance of the amendment sought; and d) the prejudice to be suffered by the
other party. A decision relating to leave cannot be appealed other than in the
framework of the final decision relating to the opposition,44 but an application for judicial review may be possible. 45
3. Evidence
a) The Framework
Both the opponent and the applicant are given an opportunity, in the manner
prescribed, to submit evidence and to make representations to the Registrar.46
Within four months after the service of the counter statement, the opponent
must file with the Registrar the evidence, by way of affidavit or statutory
declaration or certified copies of documents or entries relating to the register,
the opponent is relying on to support the opposition or a statement that the
opponent does not wish to submit evidence and serve the applicant with a
copy of such evidence or statement.47 The opposition will be deemed to have
42. Trade-Marks Regulations, SOR/96-195 as amended, section 37(6) and see Practice In TradeMark Oppositions Proceedings, in effect March 31, 2009 currently at <http://www.cipo.ic.
gc.ca/eic/site/cipointernet-internetopic.nsf/eng/wr01558.html>.
43. Trade-Marks Regulations, SOR/96-195 as amended, section 40.
44. Nabisco Brands Ltd./Nabisco Brands Ltee v. Perfection Foods Ltd. (1985), 8 C.I.P.R. 133
(T.M.O.B.), 12 C.P.R. (3d) 456 (F.C.T.D.); Lendingtree, LLC v. Lending Tree Corp. 2006 FC
373 (F.C.).
45. Pharmalat Canada Inc. v. Sysco Corporation 2008 FC 1104 (F.C.).
47. Trade-Marks Regulations, SOR/96195 as amended, section 41.
111
been withdrawn if the opponent does not submit either evidence or the
statement.48
If evidence or the statement is filed and served by the opponent, the
applicant has a similar time within which to file evidence in support of its
application or a statement that it does not wish to submit evidence and must
serve the opponent with a copy of such evidence or statement, as the case may
be.49 The application will be deemed to have been abandoned if the applicant
does not submit either evidence or the statement.50
Within one month after service upon the opponent of the applicants evidence, the opponent may file with the Registrar evidence strictly confined to
matters in reply and serve the applicant with a copy of the evidence.51
Every exhibit to an affidavit or declaration must be filed with the affidavit
or declaration.52 Each exhibit should be properly identified and signed.
No further evidence may be adduced by any party except with leave of the
Registrar upon such terms as the Registrar determines to be appropriate.53 If
circumstances have changed concerning the state of the register leave should
be granted.54
All evidence filed in an opposition is open to the public to inspect at the
Trademarks Office.55

In opposition proceedings, there is an initial onus on the opponent to establish the facts to support the grounds of opposition on which it relies.56 Once
this occurs, the onus of proof is on the applicant to satisfy the Registrar that
the trademark ought to be registered.57 This is a constant onus and includes
the onus, where appropriate, of showing that confusion is unlikely.
To allow an application, the Registrar must be reasonably satisfied that,
on the balance of probabilities, the applied-for mark is unlikely to create
48.
49.
50.
51.
52.
53.
54.
55.
56.
57.
Subsection 38(7.1).
Trade-Marks Regulations, SOR/96195 as amended, section 42.
Subsection 38(7.2).
Trade-Marks Regulations, SOR/96195 as amended, section 43 and see Trade-Marks Regulations, section 44 and 45 concerning additional evidence, cross-examination on affidavits and
filing and serving exhibits In Minolta-QMS, Inc. v. Cheng-Lang Tsai, 2006 FC 1249 the applicant over came the disallowance of improper reply evidence on appeal to the Federal Court.
Trade-Marks Regulations, SOR/96195 as amended, subsection 45(1).
Realestate World Services v. Realcorp Inc., (1993), 48 C.P.R. (3d) 397 (T.M.O.B.).
Wool Bureau of Can. Ltd. v. Queenswear (Can.) Ltd. (1980), 47 C.P.R. (2d) 11 (F.C.T.D.); Max
Mara Fashion Group S.R.L. v. Provigo Distribution Inc. (2005), 46 C.P.R. (4th) 112 (F.C.).
United Artists Corp. v. Pink Panther Beauty Corp. (1998), 80 C.P.R. (3d) 247 (F.C.A.).
Evidence
confusion; the Registrar need not be satisfied beyond doubt that confusion is
unlikely.58

All evidence, with the exception of certified copies, must be presented by
affidavit or statutory declaration. It is prudent to ensure that such material
complies with the Federal Court Rules since they will apply to in the event of
an appeal.59 The affidavit or declaration must be sworn or affirmed before a
commissioner for taking oaths or a notary public in the country of the person
who provides the evidence.60
Evidence dealing with the state of the register or the marketplace is frequently filed. In addition, evidence of relevant web pages, if otherwise admissible, may be considered.61 Evidence produced by the Way Back Machine
(www.archive.org) showing the state of websites in the past is generally reliable but entitled to no weight in the absence of evidence to show that Canadian
consumers visited the website in question. 62
Evidence that the marks in issue co-exist on foreign registers is not relevant63 but evidence of extensive contemporaneous use of the marks in those
countries will be relevant. 64
Evidence of colleagues, students, and employees of the agent of the parties
will not be accepted on controversial issues.65 This evidence should be presented through independent witnesses.
If an applicant wishes to rely on evidence previously filed during prosecution of the application, such as evidence pursuant to section 32 or section 14,
the opponent and the Board must be advised and the affidavits or declarations must be included as part of the applicants evidence66 which will be
subject to cross-examination.
58. Dion Neckwear Ltd. v. Christian Dior, S.A. et al (1996), 71 C.P.R. (3d) 268 (T.M.O.B.); affirmed
(2000), 5 C.P.R. (4th) 304 (F.C.T.D.); reversed (2003), 20 C.P.R. (4th) 155 (F.C.A.).
59. See Federal Court Rules, 1998, SOR/98-106 as amended.
60. See form 80 under the Federal Court Rules, 1998, SOR/98106 as amended.
61. Generation Nouveau Monde Inc. v. Teddy S.P.A. (2006), 51 C.P.R. (4th) 385 (T.M.O.B.).
62. Candrug Health Solutions Inc. Thorkelson (2007), 60 C.P.R (4th) 35 (F.C.).
63. Vivat Holdings Ltd. Levi Straus & Co. (2005), 41 C.P.R. (4th) 8 (F.C.T.D.).
64. Kellogg Co. v. Imperial Oil Ltd. (1996), 67 C.P.R. (3d) 426 (Ont. Ct. (Gen. Div.)).
65. Cross-Canada Auto Body Supply (Windsor) Ltd. v Hyundai Auto Canada, (2005), 43 C.P.R.
(4th) 21 (F.C.), affirmed 2006 FCA 133, Pernod Ricard v. Molson Canada, (2007), 60 C.P.R.
(4th) 338 (T.M.O.B.).
66. Canadian Generic Pharmaceutical Association v. Sanofi-Synthelabo Inc., (2006), 60 C.P.R.
(4th) 74 (T.M.O.B.).
113
At any time before notice requiring filing of argument, the Registrar may,
on the application of any party and on such terms as may be directed, order
the cross-examination under oath of any affiant or declarant on their affidavit
or declaration.67 If an affiant or declarant fails to attend for cross-examination,
the affidavit or declaration shall not be part of the evidence.68
4. The Hearing
Not less than 14 days after completion of the evidence, the Registrar shall give
the parties written notice that they may within one month after the date of
such notice file written argument.69 No written argument shall be filed after
the expiration of the one-month period except with leave of the Registrar.70
A copy of any argument filed is forwarded by the Registrar to every other
party together with a notice that a hearing may be requested.71
Any party who desires to present oral argument to the Registrar must give
written notice and the Registrar must send the parties written notice setting
out a hearing date.72
After considering the evidence and representations of the opponent and
the applicant, the Registrar shall refuse the application or reject the opposition and notify the parties of the decision and the reasons for the decision.73
The Registrar has no jurisdiction to deal with an issue not pleaded in the
statement of opposition74 or to ignore or amend or strike out a registration
on substantive grounds in the course of opposition proceedings.75
The Registrar also has no jurisdiction to disqualify agents and solicitors on
the grounds of alleged conflict of interest76 or to grant a stay of proceedings
on the ground of pending litigation.77 In order to obtain a stay, proceedings
must be instituted in the Federal Court which may grant such relief.78
67.
68.
69.
70.
71.
72.
73.
74.
75.
76.
77.
78.

Subsection 38(8); Hardees Food Systems Inc. v. Hardee Farms International Ltd. (1982), 63
C.P.R. (2d) 86 (F.C.T.D.).
Imperial Developments Ltd. v. Imperial Oil Ltd. (1984), 79 C.P.R. (2d) 12 (F.C.T.D.).
Bacardi & Co. v. Havana Club Holdings S.A., (2004) FCA 220 (F.C.A.).
J-Star Industries, Inc. v. Berg Equipement Co. (Canada) Ltd, (1992), 45 C.P.R. (3d) 72
(F.C.T.D.).
Anheuser-Busch Inc. v. Carling OKeefe Breweries of Can. Ltd. (1982), 45 N.R. 126 (F.C.A.).
Figgie International Inc. v. Citywide Machine Wholesale Inc. (1993), 50 C.P.R. (3d) 89
(F.C.T.D.); Royal Bank of Canada v. Canadian Imperial Bank of Commerce (1994), 57 C.P.R.
Appeal
In the absence of special circumstances, an application for Judicial Review

concerning matters which may be raised and considered by the Register will
be refused.79
5. Appeal
An appeal lies from a decision of the Registrar to the Federal Court within
two months from the date upon which notice of decision was dispatched
by the registrar or such further time as the court may allow, either before or
after the expiry of the two months.80
The appeal is made by way of notice of appeal filed with the Registrar and
the Federal Court.81 The notice of appeal must be filed with the court and
the Registrar and sent by registered mail to the registered owner of any trademark that has been referred to by the Registrar in the decision complained
of and to every other person who was entitled to notice of such decision.82
Under the Federal Court Rules, the appeal is commenced by Notice of
Application.83
On appeal evidence in addition to that adduced before the Registrar may
be adduced.84 The court may exercise any discretion vested in the Registrar.85
79.
80.
81.
82.
83.
84.
85.
(3d) 483 (F.C.T.D.). A stay will not be granted as a matter of course and requires the exercise
of judicial discretion in determining whether a stay should be ordered in the particular circumstances of the case.
Novopharm Ltd. v. Aktiebolaget Astra (1996), 68 C.P.R. (3d) 117 (F.C.T.D.) and see Lending
Tree, LLC v. Lending Tree Corp., (2005), 48 C.P.R. (4th) 355 (F.C.) affirmed 2007 FCA
70 (F.C.A.) concerning an amendment to the identity of the applicant but see Pharmalat
Canada Inc. v. Sysco Corporation 2008 FC 1104 (F.C.).
Trade-marks Act, subsection 56(1). The procedure relating to an appeal is set out part 5 of the
Federal Court Rules, 1998, SOR/98106 as amended.
Subsection 56(2).
Subsection 56(3).
The procedure relating to an appeal is set out part 5 of the Federal Court Rules, 1998, SOR/98
106 as amended. See Simpson Strong-Tie Company, Inc. v. Peak Innovations 2008 FC 52 (F.C.)
concerning the form of the notice of application.
Subsection 56(5). By virtue of section 60 of the Act, when an appeal has been made, the
Registrar must, on the request of any of the parties, transmit all documents on file relating to
the matters in question. See Austin Nichols & Co. v. Cinnabon Inc. (1997), 76 C.P.R. (3d)
45 (F.C.T.D.), 82 C.P.R. (3d) 513 (F.C.A.).
Subsection 56(5); see Beverley Bedding & Upholstery Co. v. Regal Bedding & Upholstering Ltd.
(1982), 133 D.L.R. (3d) 255 (F.C.A.); affirming 110 D.L.R. (3d) 189 (F.C.T.D.).
115
Generally a new ground of opposition will not be added by amendment in the

course of an appeal.86
The Registrars expertise must be given deference. In the absence of additional evidence, decisions of the Registrar, whether of fact, law, or discretion,
within the Registrars area of expertise, are reviewed on the standard of
reasonableness.87 But if additional evidence is adduced that would have materially affected the Registrars findings of fact or the exercise of discretion, the
judge hearing the appeal must come to his or her own conclusion as to the
correctness of the Registrars decision.88
Generally, the additional evidence must be substantial and significant.89
The more substantial the additional evidence, the closer the court may come
to making the finding of fact for itself and not be obliged to give deference to
the Registrars decision.90
A further appeal lies to the Federal Court of Appeal as of right.91 On such
an appeal, the question whether the Federal Court applied the proper standard of review to the decision of the Registrar is reviewable by the Federal
Court of Appeal on a correctness standard. 92
86. Sun World International Inc. v. Parmalat Dairy & Bakery Inc. (2007), 60 C.P.R. (4th) 291,
2007 FC 641 (F.C.) (Prothonotary) affirmed (2007), 60 C.P.R. (4th) 300, 2007 FC 861 (F.C)
but see Labatt Brewing Co. v. Benson & Hedges (Canada), (1996), 67 C.P.R. (3d) 258 (F.C.)
where new grounds on a pure question of law was added but only in reference to evidence
which was before the Registrar.
87. Mattel, Inc. v. 3894207 Canada Inc. (2006), 49 C.P.R. (4th) 321 (S.C.C.) and see Dunsmuir v.
New Brunswick, 2008 SCC 9 (S.C.C.).
88. John Labatt Ltd. v. Molson Breweries, a Partnership (2000), 5 C.P.R. (4th) 180, (F.C.A.); Canadian Tire Corp. v. Accessoires DAutos Nordiques Inc. 2006 FC 1431 (F.C.) appeal dismissed
(2007), 62 C.P.R. (4th) 436 (F.C.A.).
89. Tradition Fine Foods Ltd. v. Groupe Traditionall Inc. (2006), 51 C.P.R. (4th) 342 (F.C.).
90. Maison Cousin (1980) Inc. v. Cousins Submarines Inc., 2006 FCA 409, 60 C.P.R (4th) 369
(F.C.A).
91. Re Andres Wines Ltd. and E. & J. Gallo Winery, [1976] 2 F.C. 3 (F.C.A).
92. Canadian Tire Corp. v. Accessoires DAutos Nordiques Inc. 2006 FC 1431 (F.C.) appeal dismissed (2007), 62 C.P.R. (4th) 436 (F.C.A.) .
CHAP T ER
13
Infringement
1. Infringement
118
118
i) Section 19
118
ii) Section 20
118
120
c) Invalidity
120
121
122
122
a) Invalidity of the Plaintis Registered Trademark
122
b) Ownership
123
123
123
123
3. Depreciating the Value of the Goodwill Attached

to a Trademark
123
123
125
117
118
Chapter 13 Infringement
1. Infringement
i) Section 19
Section 19 of the Trade-marks Act provides that, subject to sections 21, 32,
and 67, the registration of a trademark in respect of any wares or services,
unless shown to be invalid, gives to the owner the exclusive right to the use
throughout Canada of the trademark in respect of those wares or services.
A breach of section 19 occurs when the infringer uses a trademark which is
identical to the registered mark in association with wares or services which
are identical to those for which the mark is registered.1
The exceptions mentioned in the section are limited. Section 21 relates the
concurrent use of confusing trademarks;2 section 32 relates to territorial restrictions applicable to registrations obtained under subsection 12(2) or section
13;3 and section 67 relates to marks registered or pending in Newfoundland
prior to April 1, 1949.
In order to succeed with a claim under the section, the following elements
must be shown by a plaintiff:
a) the ownership of a registered trademark;
b) use of the identical trademark by the defendant;
c) in association with any of the wares or services that are included in the
registration.
ii) Section 20
Section 20 provides that a registered trademark owners right to the exclusive
use of a trademark is deemed to be infringed by a person not entitled to its use
who sells, distributes, or advertises wares or services in association with a
confusing trademark or trade name. Section 6 of the Act sets out the matters
to be considered in making a determination as to whether trademarks or
trade names are confusing.4
The owner of a registered trademark may bring proceedings for infringement with respect to any confusing trademark or trade name in relation to
1. Tradition Fine Foods Ltd. v. The Oshawa Group Limited (2005), 44 C.P.R. (4th) 81 (F.C.A.);
A & W Food Services of Canada Inc. v. McDonalds Restaurants of Canada Limited (2005), 40
C.P.R. (4th) 126 (F.C.).
3. See Chapter 3, part 4 and Chapter 2, part 2(d).
4. See Chapter 11.
Infringement
any wares or services, unlike section 19, which is limited. The date for determining whether trademarks or trade names are confusing is the date the proceedings are heard.5 Section 20 is sufficiently broad to apply to both forward
and reverse confusion.6
Once a trademark owner is aware of infringing activities, proceedings
should be brought promptly. Like gardens, trademark cases frequently get
worse with neglect.7
Section 20 is also subject to exceptions. The section states that no registration of a trademark prevents a person from making:
(a) any bona fide use of his or her personal name8 as a trade name; or
(b) any bona fide use, other than as a trademark:
(i) of the geographical name of his or her place of business, or
(ii) of any accurate description of the character or quality of his or her
wares or services
in such a manner as is not likely to have the effect of depreciating the
value of the goodwill attaching to the registered trademark.9
A person seeking to take advantage of an exception must show that they were
acting in good faith. In addition, they must show that their use did not likely
have the effect of depreciating the value of the goodwill attached to the trademark in issue.
Depreciation of goodwill occurs when there is a reduction of the esteem in
which the mark itself is held or through the direct persuasion and enticement
of customers who would otherwise be expected to buy or continue to buy
goods bearing the trademark.10
Since the definition of a trademark includes a distinguishing guise,11 an
action may be brought for the infringement of a distinguishing guise pursuant to sections 19 or 20. The appeal to the eye of the respective guises will be
particularly important in determining whether infringement has occurred.
5. Alticor Inc. v. Nutravite Pharmaceuticals Inc. (2005), 42 C.P.R. (4th) 107 (F.C.A.)
6. A & W Food Services of Canada Inc. v. McDonalds Restaurants of Canada Limited (2005),
40 C.P.R. (4th) 126 (F.C.).
7. Phones4U Ltd. v. Phone4u.co.uk Internet Ltd., [2006] EWCA Civ 244 (U.K.C.A.).
8. The subsection only applies to personal names not corporate names; KayserRoth Can. (1969)
Ltd. v. Fascination Lingerie Inc, (1971), 3 C.P.R. (2d) 27 (Ex. Ct.); Visa International Service
Assn. v. Visa Motel Corp. (1984), 1 C.P.R. (3d) 109 (B.C.C.A.).
9. Bonus Foods Ltd. v. Essex Packers Ltd. (1964), 43 C.P.R. 165 (Ex. Ct.); National Hockey League
v. Pepsi-Cola Canada (1995), 59 C.P.R. (3d) 216 (B.C.C.A.).
10. Clairol International Corporation v. Thomas Supply & Equipment Co. [1968] 2 Ex. C.R. 552
(Ex. Ct.) and see part 3 of this chapter.
11. See Chapter 2, part 2(d).
119
120 Chapter 13 Infringement
In order to succeed with a claim under the section, the following elements
must be shown by the plaintiff:
(a) the ownership of a registered trademark;
(b) the absence of entitlement to the use by the defendant of the registered
trademark;
(c) the sale, distribution, or advertisement of any wares or services by the
defendant;
(d) in association with a confusing trademark or trade name.

In order to succeed in action relying on section 19 or 20, the plaintiff must
show that the defendant has used the impugned mark as a trademark. This
requires that the plaintiff show that the defendants use of the mark satisfies
the requirements of the definition of a trademark or trade name set out in
section 212 and the definition of use as required by section 4 in association
with wares or services.13
Both the intention of the defendant and recognition by the public are
relevant factors and either may be sufficient to show that the defendant has
used the impugned mark as a trademark. It is not necessary to show both, but
one or the other must be shown.14
c) Invalidity
The owner of a registered trademark benefits from a presumption that its
registration is valid and the onus remains on an attacking party to show
that it is invalid and should be expunged.15 If it is found that the plaintiffs
12. See Chapter, part 2(a).

13. See Chapter 5 and Cie gnrale des stablissements Michelin-Michelin & Cie v. CAW-Canada
(1996), 71 C.P.R. (3d) 348 (F.C.T.D.); Pepper King Ltd. v. Sunfresh Ltd (2000), 8 C.P.R. (4th)
485 (F.C.T.D.).
14. Tommy Hilfiger Licensing Inc. v. International Clothiers Inc. (2004), 32 C.P.R. (4th) 289
(F.C.A.); Tommy Hilfiger Licensing Inc. v. Produits de Qualite I.M.D. (2005), 37 C.P.R.
(4th) (F.C.).
15. Cross-Canada Auto Body Supply (Windsor) Limited v. Hyundai Auto Canada, 2007 FC 580,
60 C.P.R. (4th) (F.C.), 2008 FCA 98, 65 C.P.R. (4th) 121 (F.C.A.) but see Cheap Tickets and
Travel Inc. v. Emall.ca Inc. 2008 FCA 50 (F.C.A.) where this presumption was categorized as
weakly worded adding little to the onus already resting, in the usual way, on the attacking
party. See Chapter 10, part 2.
Infringement
trademark registration is invalid, this is a complete defense to a claim for of

infringement16

An action for infringement is based on the rights associated with the ownership
of a registered trademark available under section 19 or 20 of the Act. An action
for common law passing off, or section 7 of the Act, is based on the existence of
goodwill, a misrepresentation and resultant damage.17 While related, the causes
of action differ in a number of ways including the following:
(a) Infringement under section 19 or 20 of the Act is concerned only with
one method of passing off, restricted to the use of a registered trademark and a confusing trademark.
(b) In an action for infringement, once the plaintiff has shown use of a
registered trademark and a confusing trademark, the defendant cannot
avoid infringement by showing added matter distinguishes its wares
or services from those of the trademark owner.18
(c) In an action for the infringement, the plaintiff is entitled to rely on its
registration as evidence of ownership and its exclusive rights throughout Canada, while the plaintiff in an action for passing off must establish goodwill in the trading indicia it seeks to protect, which may be
territorially limited.19
A plaintiff may be unsuccessful with an action for infringement on the basis
that the registration was invalid, but might still succeed with a claim for
passing off on the same evidence.20 As a result, in most actions seeking
infringement, an alternative claim for passing off is pleaded.
16. Parke, Davis & Co. v. Empire Laboratories Ltd. (1963), 41 C.P.R. 121 (Ex. Ct.), affirmed 43
C.P.R. 1 (S.C.C.).
17. See Chapter 45 for a discussion of what must be shown in an action seeking relief for
passing off.
18. Meubles Domanis v. Guccio Gucci S.P.A. (1992), 43 C.P.R. (3d) 372 (F.C.A.).
19. CibaGeigy Canada Ltd. v. Apotex Inc., (1992), 44 C.P.R. (3d) 289 ( S.C.C.).
20. Parke, Davis & Co. v. Empire Laboratories Ltd., (1963), 41 C.P.R. 121 (Ex. Ct.), affirmed 43
C.P.R. 1 (S.C.C.); Tommy Hilfiger Licensing Inc. v. International Clothiers Inc. (2003), 9 C.P.R.
(4th) 39 (F.C.T.D.).
121
122 Chapter 13 Infringement

The expression grey market or gray market generally refers to goods that
are imported contrary to the wishes of the trademark owner or an authorized
importer in a specific territory. It refers to goods which, as a general rule, are
legitimately marketed in the foreign market, but whose presence in the local
market is clouded by allegations of infringement. 21
Goods originally sold by the trademark owner or on its behalf are not
infringing because they are sold in a geographical market where the trademark owner does not wish them to be sold when they are imported into
Canada.22 Similar reasoning has been applied in cases involving goods which
are exported from Canada.23
If there are material differences between the grey market goods and the
goods sold by the trademark owner in Canada, infringement may occur. For
example, if the formulation of the grey product is different from the domestic
product, the importation of the grey product may be infringing.24 In addition, the existence of notice of the difference to consumers may avoid a finding
of infringement.25

a) Invalidity of the Plainti s Registered Trademark
If is found that the plaintiffs registration is invalid this is a complete defense.
In an action in the Federal Court, a counterclaim for expungement may be
asserted or a separate application seeking expungement may be brought.26
21. Coca-Cola Ltd v. Pardhan (1999), 85 C.P.R. (3d) 489 (F.C.A.) leave to appeal to S.C.C. refused;
Re Stewart House Publishing Inc (2003), 24 C.P.R. (4th) 488 (Ont. Sup. Ct of Justice).
22. Smith & Nephew Inc. v. Glen Oak Inc. (1996), 68 C.P.R. (3d) 153 (F.C.A.) leave to appeal to
S.C.C. refused [1996] S.C.C.A. No. 433 (S.C.C.).
23. Coca-Cola Ltd v. Pardhan (1999), 85 C.P.R. (3d) 489 (F.C.A.) leave to appeal to S.C.C. refused;
Re Stewart House Publishing Inc (2003), 24 C.P.R. (4th) 488 (Ont. Sup. Ct of Justice).
24. H J Heinz Co. of Canada Ltd v. Edan Sales Inc (1991), 35 C.P.R. (3d) 213 (F. C.); Seiko Time
Can. Ltd. v. Consumers Distributing Co. (1980), 50 C.P.R. (2d) 147 (Ont. H.C.), affirmed
1 C.P.R. (3d) 1 (S.C.C.).
25. Seiko Time Can. Ltd. v. Consumers Distributing Co. (1980), 50 C.P.R. (2d) 147 (Ont. H.C.),
reversed 1 C.P.R. (3d) 1 (S.C.C.).
26. See for example WCC Containers Sales Limited v. Haul-All Equipment Ltd. (2003), 28 C.P.R.
(4th) 175 (F.C.T.D.); Remo Imports Ltd. v. Jaguar Cars Limited, (2007), 60 C.P.R. (4th) 130,
2007 FCA 258, 47 C.P.R. (4th) 1 (F.C.A.).
Depreciating the Value of the Goodwill Attached to a Trademark 123
b) Ownership
The defendant may attack the plaintiffs title to the exclusive use of the trademark registered.27
If the defendant is entitled to use the mark in issue by virtue of consent or
license, this will establish a defense.
A denial of infringement is a complete defense if successful, but the discontinuance of use is not a defense.28

Infringement must be in respect of spurious wares or services. There can be
no infringement if the trademark in question is used in association with the
plaintiffs goods.29
3. Depreciating the Value of the Goodwill

Attached to a Trademark
In addition to the right to claim infringement under section 19 or 20, section
22 makes an additional statutory right available to the owner of a registered
trademark. The section provides that no person shall use a trademark registered by any person in a manner likely to have the effect of depreciating the
27. See for example Chalet Bar B-Q (Canada) Inc. et al. v. Foodcorp Ltd. (1981), 66 C.P.R. (2d) 56,
varied (1982), 55 C.P.R. (2d) 46 (F.C.A.).
28. See for example Tommy Hilfiger Licensing Inc. v. International Clothiers Inc. (2004), 32 C.P.R.
(4th) 289 (F.C.A.).
29. See for example Seiko Time Can. Ltd. v. Consumers Distributing Co. (1980), 50 C.P.R. (2d) 147
(Ont. H.C.), reversed 1 C.P.R. (3d) 1 (S.C.C.).
124
Chapter 13 Infringement
value of the goodwill attaching thereto.30 Since the section was added to the
Act in 1954, relatively few cases have considered its application.
The cause of action set out in section 22 is subject to a discretionary power
vested in the court to decline to order the recovery of damages or profits and
permit the defendant to continue to sell wares marked with the trademark in
issue that were in its possession or under its control at the time notice was
given to it that the owner of the registered trademark complained of the use
of the trademark.31
It has been established that for the purposes of section 22, goodwill consists of reputation and connection built up by years of work or gained through
significant expenditure of money and which is identified with the goods distributed by the owner in association with the trademark.32
The value of the goodwill attaching to a registered mark may be depreciated if any of the following occur:
(a) the esteem in which the wares or services are held is reduced,
(b) direct persuasion and enticing of customers who would otherwise be
expected to buy or continue to buy goods bearing the trademark,
(c) disparagement of the mark, or
(d) the dilution of the distinctiveness or unique characteristics of a mark.
These circumstances are not exhaustive, as the courts have not yet considered
the limits of the application of the section.33
A mental association of the two marks does not necessarily give rise to a
likelihood of depreciation. There must be evidence of a likelihood of depreciation. This is a matter of evidence, not speculation. If the parties carry on
business in unrelated fields, there may be no depreciation of goodwill.34
It has been held that the verb use in section 22 is to be interpreted by
reference to the definition of the noun use in section 2 and 4.35 This means
that the application of section 22 is limited to a use which any person may
make, in association with goods or services within the meaning of section 4 of
anothers registered trademark, in such a manner as to depreciate the value of
the goodwill attaching thereto.
30. Syntex Inc. v. Apotex Inc. (1984), 1 C.P.R. (3d) 145 (F.C.A.); reversing 69 C.P.R. (2d) 264
(F.C.T.D.).
31. Subsection 22(2) and see Clairol International Corp. v. Thomas Supply & Equipment Co.
(1968), 55 C.P.R. 176 (Ex. Ct.).
32. Veuve Clicquot Ponsardin v. Boutiques Cliquot [2006] 1 S.C.R 824, 49 C.P.R. (4th) 401 (S.C.C.);
Clairol International Corp. v. Thomas Supply & Equipment Co. (1968), 55 C.P.R. 176 (Ex. Ct).
33. Veuve Clicquot Ponsardin v. Boutiques Cliquot [2006] 1 S.C.R 824, 49 C.P.R. (4th) 401 (S.C.C.);
Clairol International Corp. v. Thomas Supply & Equipment Co. (1968), 55 C.P.R. 176 (Ex. Ct.).
34. Veuve Clicquot Ponsardin v. Boutiques Cliquot [2006] 1 S.C.R 824, 49 C.P.R. (4th) 401 (S.C.C.).
35. See Chapter 5 for a discussion of trademark use.
Depreciating the Value of the Goodwill Attached to a Trademark 125
The difference between the requirements for use in association with wares
and services can lead to surprising results. For example, in a leading case it
was found that the reproduction of the plaintiff s trademark on the defendants packages was use within the meaning of section 22 but that the reproduction on the defendants brochures was not.36
Section 22 does not require a demonstration that use of both marks in the
same geographic area would likely lead to confusion. However, it does require
the plaintiff to show that the defendant has used a mark sufficiently similar to
the plaintiffs mark to evoke in the relevant universe of consumers a mental
association of the marks that is likely to depreciate the value of the goodwill
attached to the plaintiffs mark.37 The test is the likelihood of depreciating the
value of the goodwill attached to a trademark.

A claim under section 22 is quite different from a claim for infringement. In
order to succeed with a claim under the section, the following elements must
be shown:
(a) The plaintiff s registered trademark or at least its distinguishing feature was used by the defendant in connection with wares or services,
whether or not such wares or services are competitive with those of
the claimant.
(b) The plaintiff s registered trademark is sufficiently well known to have
significant goodwill attached to it. The mark does not need to be well
known or famous but goodwill must exist.
(c) The plaintiff s mark was used in a manner likely to have an effect on
that goodwill (this is referred to as linkage). Linkage requires a mental
association in the mind a reasonable buyer between the two parties
and the mark. The likelihood of such a linkage is a matter of evidence,
not speculation.
(d) The likely effect would be to depreciate the value of the goodwill
(damage). Depreciation includes lowering the value of the goodwill as
well as disparagement or tarnishing the trademark.38
36. Clairol International Corp. v. Thomas Supply & Equipment Co. (1968), 55 C.P.R. 176 (Ex. Ct.)
and see Cie gnrale des stablissements Michelin-Michelin&Cie v. CAW-Canada (1996),
71 C.P.R. (3d) 348 (F.C.T.D.) and see Chapter 5 for additional discussion of use.
CHAP T ER
14
Common Law RightsPassing O
1. Passing O
128
128
129
129
130
e) Damage
131
132
132
3. Defenses
133
133
(i) Lack of Distinctiveness
133
(ii) Concurrent Right
133
(iii) Descriptive Words or Marks
134
(iv) Geographical Words or Marks
135
(v) Functionality
135
b) Other Defenses
135
(i) Use of a Registered Trademark
135
(ii) Use of an Individuals Own Name
135
(iii) Plaintis Own Goods
136
127
128
Chapter 14 Common Law RightsPassing Off
1. Passing O
The tort has a long history. Originally passing off was similar to the tort of
deceit and required a misrepresentation concerning the origin of the goods
which was calculated to deceive purchasers and divert business from the
plaintiff to the defendant.1 This is no longer the case. The tort of passing off
has evolved to take into account changing commercial realities and is concerned with the protection of the community from the consequential damage
of unfair competition or unfair trading.2 It has also sought to protect the
interest of traders in their names and reputation.3
Canadian Courts require that three elements must be established in order
for a plaintiff to succeed in an action for passing off.4 First, the plaintiff must
establish the existence of goodwill or reputation attached to goods or services
supplied, in the mind of the purchasing public by association with identifying
get-up under which the particular goods or services are offered to the
public, so that the get-up is recognized by the public as distinctive of the
plaintiffs goods or services. The get-up may include a common law trademark or a trade description or individual features of labeling or packaging in
which the goods are offered to the public. It is the external appearance of the
goods in the form in which they are likely to be seen prior to purchase.5 This
type of goodwill is territorial in nature. The goodwill must be significant as a
claim for passing off should not be allowed to protect goodwill which any
reasonable person would consider trivial.6
Second, the plaintiff must demonstrate a misrepresentation by the defendant to the public (whether or not intentional) leading or likely to lead the
public to believe that the goods or services offered by the defendant are the
goods and services of the plaintiff.7
1. Oxford Pendaflex Can. Ltd. v. Korr Marketing Ltd. (1982), 64 C.P.R. (2d) 1 (S.C.C).
reversed [1984] 1 S.C.R. 583, 1 C.P.R. (3d) 1 (S.C.C.).
3. Kirkbi Ag et al v. Ritvik Holdings Inc. (2005), 43 C.P.R. (4th) 385 (S.C.C.).
4. Ciba-Geigy Can. Ltd. v. Apotex Inc. (1992), 44 C.P.R. (3d) 289 (S.C.C.); Kirkbi Ag et al v. Ritvik
Holdings Inc, (2005), 43 C.P.R. (4th) 385 (S.C.C.).
5. Ciba-Geigy Can. Ltd. v. Apotex Inc. (1992), 44 C.P.R. (3d) 289 (S.C.C.); Kirkbi Ag et al v. Ritvik
Holdings Inc, (2002), 20 C.P.R. (4th) 224 (F.C.) appeal dismissed 2003 F.C.A. 297 (F.C.A.),
appeal dismissed (2005) 43 C.P.R. (4th) 385 (S.C.C.).
6. Sutherland v. V2 Music Ltd. U.K., [2002] EMLR 568 (U.K.Ch. D.), Knight v. Beyond Properties
Pty Ltd., [2007] EWHC 1251 (Ch. D.).
7. Ciba-Geigy Can. Ltd. v. Apotex Inc. (1992), 44 C.P.R. (3d) 289 (S.C.C.) but see Phones4U Ltd.
v. Phone4u.co.uk Internet Ltd., [2006] EWCA Civ 244 (U.K.C.A.) for a discussion of cases
involving mere confusion which may not be enough to establish a misrepresentation.
Passing Off
The final consumer of a product must be taken into account in determining whether the tort of passing-off has occurred. In the context of prescription drugs the final consumer of the product includes physicians, pharmacists,
dentists, and patients.8
Third, the plaintiff must demonstrate that it has suffered or that it will
likely suffer damage by reason of the erroneous belief engendered by the
defendants misrepresentation that the source of the defendants goods or
services is the same as the source of those offered by the plaintiff.9
An action for passing off is different than an action for infringement of a
registered trademark.10
The plaintiff in any action for passing off must satisfy the court of the existence of goodwill or reputation attached to the goods or services supplied in
the mind of the purchasing public by association with identifying get-up
under which the particular goods or services are offered to the public, so that
the get-up is recognized by the public as distinctive of the plaintiffs goods or
services.
The plaintiff does not have to show it is the sole source of the goods or
services in question or that consumers know its name or trademark so long
as it can establish the three elements of the tort.11
It is not necessary that the plaintiff carry on business in Canada in order to
show goodwill or a reputation which may be protected by way of an action for
passing off.12

The term get-up is normally used in the context of a claim for passing-off
to mean the visible external appearance of goods in the form in which they
are presented to the public for purchase. If the goods are sold in packages,
then their get-up means the appearance of the package taken as a whole.
8. Ciba-Geigy Can. Ltd. v. Apotex Inc. (1992), 44 C.P.R. (3d) 289 (S.C.C.).
9. CibaGeigy Can. Ltd. v. Apotex Inc. (1992), 44 C.P.R. (3d) 289 (S.C.C.); Remo Imports Ltd. v.
Jaguar Cars Limited (2007), 60 C.P.R. (4th) 130, 2007 FCA 258, 47 C.P.R. (4th) 1 (F.C.A.).
11. Oxford Pendaflex Can. Ltd. v. Korr Marketing Ltd. (1982), 64 C.P.R. (2d) 1, 134 D.L.R. (3d)
271 (S.C.C).
12. Orkin Exterminating Company v. Pestco Co. of Can. (1984), 47 O.R. (2d) 265 (Ont. H.C.);
(1985), 50 O.R. (2d) 726 (Ont. C.A.); Walt Disney Productions v. Triple Five Corp. (1994), 53
C.P.R. (3d) 129 (Alta C.A.).
129
130 Chapter 14 Common Law RightsPassing Off
If they are sold or displayed unpackaged, then the get-up must relate to the
goods themselves.13
The look, the appearance, and the get-up of a product plays a crucial role in
the purchase process since they are the chief means at the plaintiff s disposal to
attract customers. The importance of visual impact is well known: what appeals
to the eye is crucial. The products appearance or its packagingshape, size or
colormay be characteristic of a particular source and have the effect making
it recognizable on its own. In the mind of the customer appearance is not always
linked to a trademark, that is, the consumer may rely on the appearance rather
than the trademark to identify the product.14
Color by itself, even when combined with size, may not be sufficient to
establish an action for passing off since it is difficult to establish it is distinctive in the sense required by the tort.15
The plaintiff does not need to establish that the totality of its get-up was
copied as the plaintiff only needs to show a misrepresentation leading or
likely to lead the public to believe that the goods or services offered by the
defendant are the goods and services of the plaintiff.16
The addition of distinctive matter may eliminate the probability of passing
off if it is sufficient to avoid the making of any misrepresentation.17 The use
of a disclaimer may assist in establishing a defense if its use would likely bring
the qualification home to all types of potential customers including those
with imperfect or partial memory.18
An action for passing off is not confined to any particular means of misrepresentation. Doing of anything which would lead customers to think that there
is a connection between the plaintiffs wares, services or business and the
13. Ciba-Geigy Can. Ltd. v. Apotex Inc. (1992), 44 C.P.R (3d) 289 (S.C.C.). For example, plaintiffs
have successfully asserted rights relating to a lemon-shaped lemon juice dispenser, Reckitt &
Colman Products Ltd. v. Borden Inc. [1990] 1 E.R. LL 873 (H.L.) or the shape and color of a
snow brush and ice scraper, Ray Plastics Ltd. v. Dustbane Products Ltd. (1990), 33 C.P.R. (3d)
219 (H.C.J.).
14. Ciba-Geigy Can. Ltd. v. Apotex Inc. (1992), 44 C.P.R. (3d) 289 (S.C.C.).
15. Prairie Maid Cereals Ltd. v. Christie, Brown & Co. (1965), 48 C.P.R. 289 (B.C.C.A); CibaGeigy Can. Ltd. v. Novopharm Ltd. (1986), 12 C.P.R. (3d) 76 (Ont. H.C.); Smith Kline and
French Can. Ltd. v. Apotex Inc. (1986), 12 C.P.R. (3d) 479 (Ont. H.C.).
16. Oxford Pendaflex Can. Ltd. v. Korr Marketing Ltd. (1982), 64 C.P.R. (2d) 1 (S.C.C).
17. Parke, Davis & Co. v. Empire Laboratories Ltd.,(1963), 41 C.P.R. 121 (Ex. Ct.), affirmed 43
C.P.R. 1 (S.C.C.); Reckitt & Colman Products Ltd. v. Borden Inc., [1990] 1 All E.R. 873 (H.L.).
18. I. N. Newman Limited v. Richard T Adlem [2005] EWCA Civ. 741 (U.K.C.A).
Passing Off
wares, services or business of the defendant, where such a connection does

not exist may be actionable.19
The use of a word or device or one of the essential particulars by which the
plaintiffs products or business is characterized may not be actionable but the
copying of this type or other accompanying indicia may, in an appropriate
case, be considered as badges of fraud.20
The plaintiff is not required to show an intention to deceive, but if intention is shown it is evidence which tends to show that a misrepresentation has
been made.21
The facts must be weighed in relation to an ordinary member of the
public and average customer. Such a customer would take ordinary care in
purchasing the goods they need, and, if desiring a particular brand, would
take ordinary precautions to see that they get it.22
The average customer will not be the same for all products and will not
have the same attitude at the time of purchase. In addition the attention and
care taken by the same person may vary depending on the product being purchased. A customer will probably not exercise the same care in selecting goods
from a supermarket shelf as they would when choosing a luxury item.23
e) Damage
The plaintiff must show that it has suffered or that it will likely suffer damage
by reason of the erroneous belief engendered by the defendants misrepresentation that the source of the defendants goods or services is the same as the
source of those offered by the plaintiff.24 The plaintiff must present evidence
concerning its claim for damages.
19. 2 For 1 Subs Ltd. v. Ventresca, (2006), 48 C.P.R. (4th) 311 (Ont. S.C.of Justice), British Sky
Broadcasting Group Plc v. Sky Home Services Limited, [2006] EWHC 3165 (U.K.Ch. D.) where
the erroneous belief induced by the misrepresentations was that the defendants activities
were authorized by the plaintiff; Irvine v. Talksport Ltd. [2002] All E.R. 414 (Ch. Div.),
affirmed [2003] All E.R. 881 (U.K.C.A.) relating to a false endorsement.
20. British Telecom plc v. One In A Million [1998] 4 All E.R. 476 (U.K.C.A.); Hughes v. Sherrif,
[1950] O.R. 206 (Ont. S.C.); [1950] O.W.N. 483 (Ont. C.A.).
21. Cadbury Schweppes Pty Ltd. v. Pub Squash Co. [1981] 1 All E.R. 213 (P.C.).
22. CibaGeigy Can. Ltd. v. Apotex Inc. (1992), 44 C.P.R. (3d) 289 (S.C.C.).
23. CibaGeigy Can. Ltd. v. Apotex Inc (1992), 44 C.P.R. (3d) 289 (S.C.C.).
24. CibaGeigy Can. Ltd. v. Apotex Inc. (1992),44 C.P.R. (3d) 289 (S.C.C.); BMW Canada Inc. v.
Nissan Canada Inc, (2007), 57 C.P.R. (4th) 81 (F.C.), 60 C.P.R. (4th) 181, 2007 FCA 255
(F.C.A); Remo Imports Ltd. v. Jaguar Cars Limited, (2007), 60 C.P.R. (4th) 130, 2007 FCA 258,
47 C.P.R. (4th) 1 (F.C.A.).
131

In an action for passing off the date for deciding whether the conduct of the
defendant is actionable is the date on which the conduct commenced.25 This
is consistent with the statutory codification of passing off contained in the
Trade-marks Act.

These subsections round out the Federal regulatory scheme concerning
trademarks and are constitutionally valid.26 The Act provides that no person
shall:
(b) direct public attention to his wares, services or business in such a way as to
cause or be likely to cause confusion in Canada, at the time he commenced so
to direct attention to them, between his wares, services or business, and the
wares, services or business of another;
(c) pass off other wares or services as and for those ordered or requested.
An action brought under section 7 of the Act the misrepresentation must be

in relation to a registered or unregistered trademark.27
The statutory cause of action under subsection 7(b) essentially codifies the
common law tort of passing off.28 The reference to the time at which public
attention is directed is similar to common law date.
The previous version of the subsection only applied to competitors. But
subsection 7(b) was revised to refer to another and there is no requirement
that the plaintiff and defendant be competitors.29
While the provisions of section 6 of the Act specifying when trade marks
or names are confusing are not strictly applicable, it is useful to consider the
25. Edward Chapman Ladies Shop Limited v. Edward Chapman Limited, (2007), 60 C.P.R (4th)
1 (B.C.C.A.); Cadbury-Schweppes Pty. Ltd. v. Pub Squash Co. Pty. Ltd., [1981] 1 All E.R.
213 (P.C.); Orkin Exterminating Co. In. v. Pestco of Canada Ltd. (1985), 5 C.P.R. (3d) 433
(Ont. C.A.).
26. Asbjorn Horgard A/S v. Gibbs/Nortac Industries Ltd. (1987), 14 C.P.R. (3d) 314 (F.C.A.);
Kirkbi Ag et al v. Ritvik Holdings Inc. (2005), 43 C.P.R. (4th) 385 (S.C.C.).
27. Kirkbi Ag et al v. Ritvik Holdings Inc. (2002), 20 C.P.R. (4th) 224 (F.C.T.D.) appeal dismissed
2003 F.C.A. 297 and (2005), 43 C.P.R. (4th) 385 (S.C.C.); WIC TV Amalco Inc. v. ITV Technologies, Inc. (2005), 38 C.P.R. (4th) 481 (F.C.A.) leave to appeal to the S.C.C. granted.
28. Kirkbi Ag et al v. Ritvik Holdings Inc, (2005) 43 C.P.R. (4th) 385 (S.C.C.).
29. Building Products Ltd. v. BP Canada Ltd. (1961), 36 C.P.R. 121 (Ex. Ct.).
Defenses 133
matters set out in that section in applying section 7(b).30 It has also been
suggested that in order to obtain trademark rights for the purpose of the subsections a trademark must be used as required by the Act including compliance with section 4 of the Act.31
Under subsection 7(c) the substitution of a competitors wares or services
as and for those ordered or requested is actionable. In order to succeed with
a claim of this nature the plaintiff must show that its wares or services are
known and ordered or requested by a specific trade name or mark.
3. Defenses
(i) Lack of Distinctiveness
If a plaintiff does not show that the get-up under which the particular goods
or services are offered to the public is recognized by the public as distinctive
of its goods or services, it will not succeed in an action for passing off.32
If a defendant uses the characteristic features of the get-up used in the
trade in which it is engaged and this may be a defense to a claim for passing off.33
(ii) Concurrent Right
If a defendant has been using the same trade mark, get up or trade name as
the plaintiff with equal claim to its independent use, it will be difficult for the
plaintiff to succeed unless it can be shown that the defendant has extended its
use to the plaintiffs area of business and beyond the area where the defendant
has carried on business.
30. Aluminum Company of Canada v. Tisco Home Building Products (1977), 33 C.P.R. (2d) 145
(F. C.T.D.); Asbjorn Horgard A/S v. Gibbs/Nortac Industries Ltd. (1987), 14 C.P.R. (3d) 314
(F. C.A.).
31. BMW Canada Inc. v. Nissan Canada Inc. (2007), 57 C.P.R. (4th) 81 (F.C.), 60 C.P.R. (4th) 181,
2007 FCA 255 (F.C.A). While the imposition of such a requirement was reasonable in that
case it may be too onerous as a general requirement.
32. See Richfield Oil Corp. v. Richfield Oil Corp. of Can. Ltd., [1955] Ex. C.R. 17 (Ex. Ct.).
206, 48 C.P.R. 226 (S.C.C.); Abbot Laboratories Ltd. v. Apotex (1998), 81 C.P.R. (3d) 85 (Ont. Ct.
Gen. Div.); Kun Shoulder Rest Inc. v. Josepk Kun Violin (1998), 83 C.P.R. (3d) 331 (F.C.T.D.)
134
Chapter 14 Common Law RightsPassing Off
(iii) Descriptive Words or Marks

The applicable principles are similar to those under the Trade-marks Act.
A descriptive word or mark is not usually capable of being protected in an
action for passing off unless it can be shown that the descriptive word or
mark has acquired a secondary meaning and associated goodwill.34
The onus of proving the acquisition of secondary meaning, which is on the
plaintiff, is a heavy one when the mark in question is a descriptive word. In
order to satisfy the onus it is not sufficient to show that mark is distinctive in
the channels of trade as, for example, to the manufacturer or wholesaler,
but it must be distinctive to probable purchasers including the ultimate
consumer.35 If, the descriptive word or mark is also the name of the goods
themselves, it will be extremely difficult for the word to acquire a secondary
meaning.36
In addition, if a plaintiff is relying on the descriptive word or mark relatively small differences in the word or mark used by the defendant should be
sufficient to avoid a misrepresentation.37
If the plaintiff s descriptive word or mark is not used as a trademark but as
the name of the type of good in issue it may be generic38 and extremely difficult to protect.39 In cases where the question is whether a particular word or
mark has been used for the purpose of distinguishing the wares of a particular
manufacturer or whether it has been used principally as a description or a
name of the wares themselves, the whole course of conduct of the plaintiff
must be considered in order to find out whether it has lost its distinctiveness
or not.40
34. Frank Reddaway & Co. Ltd. v. George Banham & Co. Ltd., [1896] A.C. 199 (H.L.); Standard
Industries Ltd. v. Rosen (1954), 24 C.P.R. 41 (Ont. H.C.).
35. Parke, Davis & Co. v. Empire Laboratories Ltd. (1963), 41 C.P.R. 121 (Ex. Ct.); affirmed 43
C.P.R. 1 (S.C.C.).
36. Can. Shredded Wheat Co. v. Kellogg Co. of Can. Ltd., [1936] O.R. 613 (Ont. C.A.); affirmed
[1938] 1 All E.R. 618 (P.C.).
37. Office Cleaning Services v. Westminster Window and General Cleaners (1946), 63 R.P.C. 39
(H.L.); Westfair Foods Ltd. v. Jim Pattison Industries Ltd. (1989), 26 C.P.R. (3d) (B.C.S.C.)
affirmed 30 C.P.R. (3d) 174 (B.C.C.A.); and see Phones4U Ltd. v. Phone4u.co.uk Internet Ltd.
[2006] EWCA Civ 244 (U.K.C.A.).
38. Burberrys v. J.C. Cording & Co. (1909), 26 R.P.C. 693 (Ch. D.).
39. Linoleum Manufacturing Co. v. Nairn (1878), 7 Ch. D. 834.
206, 48 C.P.R. 226. (S.C.C.).
Defenses 135
(iv) Geographical Words or Marks

A trader is entitled to use the name of the locality where their wares are produced or business is carried on41 unless a plaintiff can show that such word or
mark has acquired a secondary meaning in that locality and satisfy the other
requirements to show that passing off has occurred.42
(v) Functionality
Like trade marks any combination of elements which are primarily designed
to perform a function cannot be protected through a claim for passing off.43
The fact that the party seeking protection obtained a patent relating to the
article in question is evidence of functionality.44
b) Other Defenses
(i) Use of a Registered Trademark
If the alleged passing off relates to the defendants use of a registered trademark in association with the wares or services of the registration, the existence of the registration will be a defense to a claim for passing off as a result
of the rights granted under the Trade-marks Act.45
(ii) Use of an Individuals Own Name
An individual defendant has a right to use his or her own name and the
fact that confusion may occur does not constitute passing off by itself.46
41. Grand Hotel of Caledonia Springs v. Wilson, [1904] A.C. 103; Hopton Wood Stone Firms Ltd.
v. Gething (1910), 27 R.P.C. 605; General Motors of Canada v. Decarie Motors Inc. (2000),
9 C.P.R. (4th) 368 (F.C.A.).
42. Steinberg v. Belgium Glove & Hosiery Co. of Canada Ltd. (1953), 19 C.P.R. 56 (Ex. Ct ).
43. Canadian Shredded Wheat Co., Ltd. v. Kellogg Co. of Canada, Limited, [1938] 1 All. E.R. 618
(PC.), [1938] 2 D.L.R. 145; Parke, Davis & Co. v. Empire Laboratories Ltd (1963), 41 C.P.R.
121 (Ex. Ct), affirmed [1964] S.C.R. 351 (S.C.C.); Thomas & Betts, Ltd. v. Panduit Corp.
(2000), 4 C.P.R. (4th) 498 (F.C.A); Kirkbi Ag et al v. Ritvik Holdings Inc. (2005), 43 C.P.R. (4th)
385 (S.C.C).
44. Parke, Davis & Co. v. Empire Laboratories Ltd (1963), 41 C.P.R. 121 (Ex. Ct) affirmed [1964]
S.C.R. 351 (S.C.C.).
45. Molson Canada v. Oland Breweries Ltd. (2002), 19 C.P.R. (4th (F.C)) 201 (Ont. C.A.); Remo
Imports Ltd. v. Jaguar Cars Limited, (2007), 60 C.P.R. (4th) 130, 2007 FCA 258, 47 C.P.R. (4th)
1 (F.C.A.); Veuve Clicquot Ponsardin v. Boutiques Cliquot [2006] 1 S.C.R 824, 49 C.P.R. (4th)
401 (S.C.C.).
46. Edward Chapman Ladies Shop Ltd. v. Edward Chapman Ltd. (2006) 45 C.P.R. (4th) 321
(B.C. S.Ct.) affirmed (2007), 60 C.P.R. (4th) 1, 2007 BCCA 370 (B.C. C.A.).
However, if confusion occurs, which is brought to the attention of that defendant, they are under an obligation to take reasonable care to qualify the representation implied in his or her conduct so as to avoid confusion.47
(iii) Plainti s Own Goods
It is not passing off to use the plaintiffs name or mark in connection with
wares that are the plaintiffs original wares.48 But a trader cannot represent
that wares, which are the plaintiffs wares, are of a particular class or quality if
they are not. For example, it is actionable to offer wares of inferior or deteriorated quality as the plaintiffs original goods49 or the plaintiffs wares in an
materially altered form as the original.50 The fact that notice of the difference
is given to consumers at the time of sale may avoid a finding of passing off.51
47. Hurlburt Co. Ltd. v. Hurlburt Shoe Co., [1925] S.C.R. 141 (S.C.C.); Meubles Domanis v. Guccio
Gucci S.P.A. (1992), 43 C.P.R. (3d) 372 (F.C.A.).
48. Seiko Time Canada v. Consumers Distributing, [1984] 1 S.C.R. 583 (S.C.C.); Spalding v.
Gamage (1915), 32 R.P.C. 273 (H.L.).
49. Spalding v. Gamage (1915) 32 R.P.C. 273 (H.L.).
50. Westinghouse Brake & Saxby Signal Co. v. Varsity Eliminator Co. (1935), 52 R.P.C. 295.
reversed [1984] 1 S.C.R. 583, 1 C.P.R. (3d) 1 (S.C.C.).
CHAP T ER
15
Actions for Infringement and Passing O
1. Jurisdiction
139
140
140
141
3. Parties
142
a) Plainti
142
b) Licensee
143
c) Defendants
143
143
4. Pleadings
144
144
b) Particulars
144
145
a) Purpose
145
146
146
d) Irreparable Harm
147
147
148
a) Purpose
148
149
150
i) Basic Protection for the Rights of the Parties
150
ii) The Conduct of the Search
151
iii) Procedure Following the Search
152
iv) Solicitor-Client Privilege
152
v) Setting Aside the Order
153
137
138
Chapter 15 Actions for Infringement and Passing Off

7. Discovery
153
153
154
154
a) Plaintis Ownership in an Action for Infringement
154
b) Infringement
155
c) Passing O
155
11. Remedies
156
156
156
c) Prots or Damages
157
(i) Alternative Remedies
157
(ii) Assessment of Damages
157
(iii) Account of Prots
158
d) Destruction, Exportation or Other Disposition of

Oending Wares
159
e) Costs
160
Jurisdiction
The practice in actions for passing off is substantially similar to actions for
infringement, and in this chapter the two actions are dealt with together,
although they are separate and distinct causes of action.
1. Jurisdiction
Both the Federal Court1 and any court of competent jurisdiction of a province have jurisdiction to hear and determine an action for the infringement of
a trademark.2 The rights associated with a registered trademark are territorial
and a Canadian court does not have jurisdiction concerning infringement
that takes place wholly abroad. 3
A claim for passing off is also territorial in nature since it is restricted to
the area in which the plaintiff can establish the existence of goodwill. Actions
for passing off at common law may only be brought in courts of competent
jurisdiction of the provinces. The Federal Court has no statutory jurisdiction
to hear an action for passing off unless the claim is interconnected with a
claim over which the court has jurisdiction.4
Actions claiming relief under subsection 7(a) or (b) of the Trade-marks
Act, the statutory codification of passing off, may be brought in the Federal
Court or in courts of competent jurisdiction in the provinces.
A Canadian court may decline jurisdiction under the doctrine known as
forum non conveniens.5 In addition, a Canadian Court may in its discretion
stay an action on the ground that the claim is being proceeded with in another
jurisdiction.6
1. Trade- marks Act, R.S.C. 1985, c. T-13, section. 55; Federal Court Act, R.S.C. 1985, c. F-7,
section. 20.
2. Shredded Wheat Co. v. Kellogg Co. of Can. Ltd., [1936] O.R. 613 (Ont. C.A.); affirmed [1938]
2 D.L.R. 145 (P.C.). See section 11 of Courts of Justice Act, R.S.O. 1990, c. C.43.
3. Beloit Canada Lte/Ltd. et al. v. Valmet-Dominion Inc. (now Valmet Montreal Inc.) (1997),
73 C.P.R. (3d) 321. (F.C.A.); Pro Swing Inc. v. Elta Golf Inc., [2006] 2 S.C.R 612 (S.C.C.).
2003 F.C.A. 297; appeal dismissed (2005) 43 C.P.R. (4th) 385 (S.C.C).
5. Folkes v. Greensleeves Publishing Ltd (1997), 76 C.P.R. (3d) 360 (Ont. Ct. (Gen. Div.)) appeal
dismissed 85 C.P.R. (3d) 144 (Ont. C. A.)
6. Courts of Justice Act, R.S.O. 1990, c. C.43, 106 and Federal Court Act, R.S.C. 1985,
c. F-7, section. 50.
139
140
Pursuant to section 53 of the Trade-marks Act where a court7 is satisfied, on
application of any interested person, that any registered trademark or any
trade name has been applied to any wares that have been imported into
Canada or are about to be distributed in Canada in such a manner that the
distribution of the wares would be contrary to the Act, or that any indication
of a place of origin has been unlawfully applied to any wares, the court may
make an order for the interim custody of the wares, pending a final determination of the legality of their importation or distribution in an action commenced within such time as is prescribed by the order. An application for
such an order may be made by any person interested, in an action or otherwise, and either on notice or ex parte.8
Before making an order under section 53, the court may require the applicant to furnish security, in an amount fixed by the court, to answer any damages that may by reason of the order be sustained by the owner, importer or
consignee of the wares and for any amount that may become chargeable
against the wares while they remain in custody under the order.9
An application for an interim order will be considered by a court as involving
the exercise of extraordinary jurisdiction to preserve the applicants rights
pending a final determination. As a result, the court will likely apply the principles relating to the granting of interim and interlocutory injunctions.
Where in any action under section 53 the court finds that the importation
is or the distribution would be contrary to the Act, it may make an order prohibiting the future importation of wares to which the trademark, trade name
or indication of origin has been applied.10 The importation of any goods in
respect of which such an order has been made is prohibited by the Customs
Tariff.11 However, a consent or default judgment does not satisfy the requirement for a final determination required by this provision and custom officers
have refused to enforce such judgments.12
7. Section 52 provides that court means the Federal Court or the superior court of a province
in sections 53 to 53.3.
8. Subsection 53(5). Person interested is broadly defined in section 2.
9. Subsection.53(2).
11. Customs Tariff; R.S.C. 1985, c. C-54.01, section 114.
12. Adidas Sportschuhfabriken Adi Dassler KG. v. Kinney Shoes of Can. Ltd. (1971), 2 C.P.R. (2d)
227 (Ex. Ct.); Montres Rolex S.A. v. M.N.R. (1987), 17 C.P.R. (3d) 507 (F.C.T.D.); Montres
Rolex S.A. v.Balshin (1992), 45 C.P.R. (3d) 174 (F.C.A.).
Interim Proceedings

Where a court is satisfied, on application by the owner of a registered trade
mark, that any wares to which the trade mark has been applied are about to
be imported into Canada or have been imported into Canada but have not yet
been released, and that the distribution of the wares in Canada would be contrary to the Trade-marks Act, the court may make an order
(a) directing the Minister of National Revenue to take reasonable measures, on the basis of information reasonably required by the Minister
and provided by the applicant, to detain the wares;
(b) directing the Minister to notify the applicant and the owner or importer
of the wares, forthwith after detaining them, of the detention and the
reasons therefor; and
(c) providing for such other matters as the court considers appropriate.13
Such an application may be made in an action or otherwise, and either on
notice or ex parte, except that it must always be made on notice to the
Minister.14 Before making an order the court may require the applicant to
furnish security, in an amount fixed by the court, (a) to cover duties, storage,
and handling charges, and any other amount that may become chargeable
against the wares; and (b) to answer any damages that may by reason of the
order be sustained by the owner, importer or consignee of the wares.15
An application for such an order will likely be considered by a court
as involving the exercise of extraordinary jurisdiction to preserve the applicants rights pending a final determination. As a result, the court will likely
apply the principles relating to the granting of interim and interlocutory
injunctions.
The sections only applies when wares to which the trademark has been
applied are about to be imported or have been imported into Canada but
have not yet been released. It is difficult to obtain such information which
significantly restricts the application of the section.
The Canada Customs and Revenue Agency (CCRA) has published memorandum D19-43, dated May 19, 2000, setting out its requirements relating to
such applications. Representatives of the Minister have the right to make
submissions when the application is heard and may apply to the court for
directions in implementing an order that has been made.16
13.
14.
15.
16.
Subsection 53.1(1).
Subsection 53.1(2).
Subsection 53.1(3).
Subsection 53.1(4).
141
142
Unless an order made on the application provides otherwise, the Minister

shall, subject to the Customs Act and to any other Act of Parliament that
prohibits, controls or regulates the importation or exportation of goods,
release the wares without further notice to the applicant if, two weeks after
the applicant has been notified of the detention, the Minister has not been
notified that an action has been commenced for a final determination by the
court of the legality of the importation or distribution of the wares.17
Where, in an action commenced under the section, the court finds that the
importation is or the distribution would be contrary to the Act, the court may
make any order that it considers appropriate in the circumstances, including
an order that the wares be destroyed or exported, or that they be delivered up
to the plaintiff as the plaintiffs property absolutely.18 Conversely, if the court
finds that the importation was not contrary to the Act, the defendant(s) may
seek costs and any damages suffered by reason of the order.
3. Parties
a) Plainti
The statutory provisions relating to infringement have been discussed in
Chapter 13. The plaintiff in an action for infringement, with one exception
relating to a licensee, must be the owner of the registered trademark in issue.19
The assignee of a registered trademark may institute an action for infringement without registering the assignment as registration is not necessary to
make an assignment of a trademark effective against a third party.20 A plaintiff may sue for infringement of a trademark even though not a resident of
Canada.21
The plaintiff in an action for passing off must be the owner of the goodwill
in issue and have suffered or will likely suffer damage by reason of the defendants misrepresentation.22
17. Subsection 53.1(6).

19. See sections 19 and 20 and Can. Safeway Ltd. v. Man. Food & Commercial Workers, Loc. 832,
(1983), 73 C.P.R. (2d) 234 (Man. C.A.).
20. Wilkinson Sword (Can.) Ltd. v. Juda (1966), 51 C.P.R. 55 (Ex. Ct.); McCurdy Enterprises Ltd.
v. Shamrock Spring Water Inc. (2005), 45 C.P.R. (4th) 55 (Nfld and Lab. Sup. Ct. T.D.) and see
Chapter 9, part 1(b) .
21. Creamette Co. v. Famous Foods Ltd., [1933] Ex. C.R. 200 (Ex. Ct.).
22. See Chapter 14 and Glen Oak Inc. v. Smith & Nephew Inc. (1996), 68 C.P.R. (3d) 153
(F.C.A.).
Parties 143
b) Licensee
Subject to any agreement subsisting between an owner of a trademark and a
licensee of the trademark, the licensee may call on the owner to take proceedings for infringement thereof, and, if the owner refuses or neglects to do
so within two months after being so called on, the licensee may institute proceedings for infringement in the licensees own name as if the licensee were
the owner, making the owner a defendant.23
c) Defendants
The primary defendant in an action for infringement will be the owner of the
impugned mark which is being used24 to the detriment of the plaintiff.
In addition, section 20 refers to persons who sell, distribute or advertise wares
or services in association with a confusing trademark which broadens the net
particularly when combined with an allegation of inducement.
Similar considerations apply in an action for passing off although there is
more flexibility since a person may be sued if they have authorized or enabled
passing off25 or aided and abetted someone else to pass off. 26

Generally speaking, the directors or officers of a corporation are not personally liable for the infringing activities of the corporation and accordingly
should not be parties, unless they formed the corporation for the purpose of
infringing or they have directly ordered or authorized the acts complained
of. In order to find personal liability there must be circumstances from which
it is reasonable to conclude that the purpose of the director or officer was
not the direction of the manufacturing and selling activity of the company in
the ordinary course of his or her relationship to it but the deliberate, willful,
and knowing pursuit of a course of conduct that was likely to constitute
infringement or reflected an indifference to the risk of it. A broad appreciation

24. See Chapter 5.
25. Taft Broadcasting Co. v. Rogers Cable T. V. Ltd. (1974), 18 C.P.R. (2d) 94 (F.C. T.D.); Ray Plastics Ltd. v. Canadian Tire Corporation, Limited (1995), 62 C.P.R. (3d) 247 (Ont. Gen. Div.), an
appeal from this decision was settled. The decision is questionable since it resulted in a
double recovery.
26. Robert Simpson Co. Ltd. v. Simpsons-in-the-Strand Ltd. (1980), 49 C.P.R. (2d) 16 (Ont. H.C.).
144
of the circumstances of each case must be made to determine whether as a

matter of policy they call for personal liability.27
If an unfounded allegation is made against a director or an officer, a motion
to strike the relevant portion of the statement of claim may be brought.
4. Pleadings
Pleadings in an action for infringement or passing off are governed by the
rules of practice of the court in which the action is brought. A concise statement of the material facts must be pleaded to establish an arguable cause of
action assuming that the allegations in the statement of claim are true. If the
Trade-marks Act or any other statute is pleaded the sections relied upon
and the material facts giving rise to the cause of action must be pleaded.28
It is not necessary to allege that a defendant intended to violate the plaintiffs
rights in an action for infringement or passing off.
b) Particulars
The function of particulars is to enable the party requesting them to know the
nature of the case it has to meet, to prevent surprise and to limit the issues to
be tried.29 A request for particulars should not to be a fishing expedition and
should not to be ordered concerning how the issues are to be proved.30
A demand for particulars should be made before a motion is brought.31 As
a general rule, particulars will not be ordered unless it is established that they
are both necessary for pleading and are not within the knowledge of the party
seeking them, unless the pleading is, on its face, inadequate or in violation of
the rules.32
27. Mentmore Manufacturing Company Limited et al v. National Merchandising Manufacturing

Company Inc. (1978), 89 D.L.R. (3d) 195 (F.C.A.).
28. Schering Can. Inc. v. Pentagone Laboratories Ltd. (1985), 6 C.P.R. (3d) 261 (F.C.T.D.).
29. Gulf Canada Ltd. v. Tug Mary Mackin, [1984] 1 F.C. 884 (F.C.A.).
30. Embee Electronic Agencies v. Agence Sherwood Agencies, Inc., et al. (1979), 43 C.P.R. (2d) 285
(F.C.T.D.).
31. Rules of Civil Procedure, R.R.O 1990, Regulation 194 as amended, Rule 25.10; Federal Court
Rules, 1998, SOR/98106, rule 181.
32. Telemedia v. 624654 Ont. Ltd. (1987), 17 C.P.R. (3d) 355 and 570 (F.C.T.D.); Windsurfing Intl
Inc. v. Novaction Sports Inc. (1988), 18 C.P.R. (3d) 230 (F.C.T.D.).
Interlocutory Injunctions
a) Purpose
The purpose for granting an interlocutory injunction is to protect the plaintiff against injury as a result of the violation of a right for which the plaintiff
could not be adequately compensated by an award of damages.33 The interlocutory injunction preserves the status quo concerning the plaintiffs claim
until trial in such a case.
A condition precedent to the grant of an interlocutory injunction is an
undertaking from the plaintiff to assume responsibility for the damages sustained by the defendant in the event that the plaintiff is ultimately unsuccessful on the merits when the action is heard. The purpose of the undertaking is
to counterbalance the harm the wrongly enjoined defendant would suffer as
a consequence of the interlocutory injunction.34 The court may order, in
appropriate circumstances, that the plaintiff secure this undertaking by providing to the court suitable security.35
A plaintiff who successfully obtains an interlocutory injunction is under a
duty to proceed with reasonable dispatch to bring the action to trial. If the
plaintiff fails to do so, the defendant may move to dissolve the injunction.36
On the dissolution of an interlocutory injunction, the defendant is entitled
to an enquiry as to the damages sustained by reason of the injunction.37
Refusing or neglecting to obey an interlocutory injunction may constitute
contempt of court.38 A person found to be in contempt of court is subject to
fine or imprisonment.39
33. American Cyanamid v. Ethicon [1975] 1 All E.R. 504 (H.L.).

34. Rules of Civil Procedure, R.R.O 1990, Regulation 194 as amended Rule 40.03; Federal Court
Act, R.S.C. 1985, c. F-7 as amended, section 44 and see Mattel Canada Inc v GTS Acquisitions
Ltd (1998), 82 C.P.R. (3d) 57 (F.C.T.D.).
35. Nelson Burns & Co. Ltd. v. Gratham Industries Ltd. (1981), 59 C.P.R. (2d) 113 (Ont. H.C).
36. Bourganis v. Glarentzos (1978), 19 O.R. (2d) 328 (H.C.J.); Ciba-Geigy Ltd. v. Novopharm Ltd.
(1997), 77 C.P.R. (3d) 428 (F.C.T.D.).
37. Mattel Canada Inc v GTS Acquisitions Ltd (1998), 82 C.P.R. (3d) 57 (F.C.T.D.);
38. Cutter (Canada) Ltd. v. Baxter Travenol Laboratories of Canada Ltd, (1987), 14 C.P.R. (3d)
449.
39. See Ontario Rules of Civil Procedure, R.R.O. 1990, Regulation 194, as amended, Rule 60.11
and Federal Court Rules 1998, SOR/98106, Rules 466472.
145
146

A three-stage test is applied in considering whether to grant an interlocutory
injunction:40
i) A preliminary assessment must be made of the merits of the case to
ensure that there is a serious question to be tried.
ii) It must be determined whether the applicant would suffer irreparable
harm if the application were refused.
iii) An assessment must be made as to which of the parties would suffer
greater harm from the granting or refusal of the remedy pending a
decision on the merits.
An interlocutory injunction is a discretionary equitable remedy. The applicant must come to the court with clean hands41 and equitable defenses may
be raised.
Delay in commencing proceedings is an important consideration that may
preclude the grant of an interlocutory injunction.42

To determine whether a serious question to be tried has been established, it is
necessary to look at the pleadings and respective causes of action in light of
the evidence presented.43 It is not the function of the court at this stage to
attempt to resolve conflicts of evidence based on affidavits or to decide difficult questions of law.44 These issues should be dealt with at trial.
If the refusal to grant an injunction will, practically speaking, dispose
of the action, a court should require that a strong prima facie case be
established.45
40. RJR-Macdonald Inc. v. Canada (Attorney General) [1994] 1 S.C.R. 311, 54 C.P.R. (3d) 114;
American Cyanamid v. Ethicon [1975] 1 All E.R. 504 (H.L.).
41. Dableh v. Ontario Hydro (1993), 50 C.P.R. (3d) 290 (F.C.T.D.), 68 C.P.R. (3d) 129
(F.C.A.).
42. Turbo Resources Ltd. v. Petro-Can Ltd. (1989), 24 C.P.R. (3d) 1 (Fed. C.A.); Irwin Toy Ltd. v.
Marie-Anna Novelties Inc. (1986), 12 C.P.R. (3d) 145 (Ont. H.C.).
43. Turbo Resources Ltd. v. Petro-Can Ltd. (1989), 24 C.P.R. (3d) 1 (Fed. C.A.).
44. American Cyanamid v. Ethicon [1975] 1 All E.R. 504 (H.L.).
45. RJR-Macdonald Inc. v. Canada (Attorney General) [1994] 1 S.C.R. 311, 54 C.P.R. (3d) 114;
N.W.L. Ltd. v. Woods, [1979] 1. W.L.R. 129 (H.L.); Syntex Inc. v. Apotex Inc. (1985), 1 C.P.R.
(3d) 145 (Fed. C.A.).
Interlocutory Injunctions
d) Irreparable Harm
Establishing irreparable harm is essential to obtain an interlocutory injunction. The moving party must convince the court that it will suffer irreparable
harm if an interlocutory injunction is not granted.46 Irreparable refers to
the nature of the harm rather than its magnitude. It is harm which either
cannot be quantified in monetary terms or which cannot be cured, frequently
because one party cannot collect damages from the other.47
The Federal Court of Appeal has strictly required that the moving party
present evidence of irreparable harm which is clear and not speculative.48
Proof of irreparable harm cannot be inferred and it is not sufficient that such
harm might likely be suffered; it must be shown that it would be suffered.49

This test is in effect a determination of which of the two parties will suffer the
greater harm from the granting or refusal of the interlocutory injunction
pending trial.50 The factors to be taken into account include the following:
(i) where a plaintiff s recoverable damages resulting in the continuance
of the defendants activities pending trial would be an adequate
remedy that the defendant would be financially able to pay, an interlocutory injunction should not normally be granted;
(ii) where such damages would not provide the plaintiff an adequate
remedy but damages (recoverable under the plaintiff s undertaking)
would provide the defendant with such a remedy for the restriction
on his activities, there would be no ground for refusing an interlocutory injunction;
(iii) where doubt exists as to the adequacy of these remedies in damages
available to either party, regard should be had to where the balance of
convenience lies;
46. RJR-Macdonald Inc. v. Canada (Attorney General) [1994] 1 S.C.R. 311, 54 C.P.R. (3d) 114.
(S.C.C).
47. Manitoba (A.G.) v Metropolitan Stores (MTS) Ltd. (1987), 38 D.L.R (4th) 321 (S.C.C).
48. Imperial Chemical Industries PLC v. Apotex (1989), 27 C.P.R. (3d) 345, (F.C.A.); Syntex Inc. v.
Novopharm Limited,(1991), 36 C.P.R (3d) 129 (F.C.A.), leave to appeal to the S.C.C. refused
[1991] 3 S.C.R. xi; Nature Co. v. Sci-Tech Educational Inc. (1992), 41 C.P.R. (3d) 359, (F.C.A.);
Centre Ice Ltd. v. National Hockey League (1994), 53 C.P.R. (3d) 34, (F.C.A.).
49. Centre Ice and Syntex Inc. v. Novopharm Ltd. (1991), 36 C.P.R. (3d) 129, (F.C.A.).
50. Manitoba (A.G.) v Metropolitan Stores (MTS) Ltd. (1987), 38 D.L.R (4th) 321 (S.C.C); RJRMacdonald Inc. v. Canada (Attorney General) [1994] 1 S.C.R. 311, 54 C.P.R. (3d) 114.
(S.C.C.).
147
148
(iv) where other factors appear to be evenly balanced, it is prudent to take

such measures as will preserve the status quo;
(v) where the evidence on the application is such as to show one partys
case to be disproportionately stronger than the others, this factor may
be permitted to tip the balance of convenience in that partys favor
provided the uncompensatable disadvantage to each party would not
differ widely; and
(vi) other unspecified special factors may possibly be considered in the
particular circumstances of individual cases.51
If an interlocutory injunction is not ordered the defendant is frequently
ordered to keep an account of the allegedly infringing sales or may be subject to
other terms.52 A court may also order that the trial of the action be expedited.

a) Purpose
The courts, on ex parte motion by the plaintiff, where a defendant may conceal or destroy evidence, may make a mandatory order requiring the defendant to permit the plaintiff and its representatives to enter the defendants
premises to inspect articles or documents relevant to the proceeding and to
remove them or make copies in order that such evidence may be preserved.
Orders of this type are referred to as Anton Piller orders after the order
issued in the United Kingdom case of Anton Piller KG v. Manufacturing
Processes Ltd.53
Unlike a search warrant, the order does not authorize forcible entry, but
exposes the target to contempt proceedings unless permission to enter is given.
To the ordinary citizen faced on his or her doorstep with an Anton Piller order
this may be seen as a distinction without a meaningful difference.54
An Anton Piller order is an exceptional remedy which will be cautiously
granted. In addition, the granting of such an order imposes very serious
responsibilities on counsel and those who execute the order.
51. Turbo Resources Ltd. v. Petro-Can Ltd. (1989), 24 C.P.R. (3d) 1 (Fed. C.A.) summarizing what
was said in American Cyanamid v. Ethicon [1975] 1 All E.R. 504 (H.L.).
52. Beamscope Canada Inc. v. 2439-0692 Quebec Inc, (1991), 36 C.P.R. (3d) 1 (F.C.T.D.); Minnesota Educational Computing Corp. v. MECC (Software) Inc. (1992), 41 C.P.R. (3d) 186
(F.C.T.D.).
53. [1976], 1 Ch.55 (Ch. Div.).
54. Celanese Canada Inc. v. Murray Demolition Corp., (2006), 50 C.P.R. (4th) 241 (S.C.C.).
Anton Piller Orders 149
Anton Piller orders have been frequently issued in cases involving counterfeiters or pirates who are consciously flouting the rights of trademark
owners. In this context, the orders are frequently combined with an interim
injunction.

Before granting an Anton Piller order, a court must be satisfied that:55
i) There must be an extremely strong prima facie case and the plaintiff s
intellectual property right and its infringement must be clearly
shown.56
ii) The damage to the plaintiff caused by the defendants alleged misconduct, potential or actual, must be very serious.57
iii) There must be clear evidence that the defendants have in their possession incriminating documents or things and that there is a real possibility that they may destroy such material before any application inter
partes can be made.58
Because of the significant negative impact on a defendant resulting from
granting an Anton Piller order, a plaintiff seeking this type of order must
make full and fair disclosure to the court of all relevant facts.59 The affidavits
filed in support of the order should err on the side of excessive disclosure.60 If
it subsequently appears that such disclosure was not made, the order is liable
to be set aside and the plaintiff required to pay all of the defendants costs and
damages.
The plaintiff is usually required to post security for damages which may be
suffered by the defendant as a result of the inappropriate grant of such an
order.61
56. Netboard Inc. v. Avery Holdings Inc., (2005), 48 C.P.R. (4th) 241 (F.C); Castlemore Marketing
Inc. v. Intercontinental Trade (1995), 64 C.P.R. (3d) (F.C.T.D.).
58. The documents or things at risk must be vital not peripheral to the plaintiff s case Nintendo
of America Inc v. Coinex Video Games Inc. (1982), 69 C.P.R. (2d) 122 (F.C.A.).
59. Pulse Microsystems Ltd. v. SafeSoft Systems Inc. (1996), 67 C.P.R. (3d) 202 (Man. C.A.); MAI
Systems Corp. v. Banwell Computer Services Inc. (1992), 41 C.P.R. (3d) 57 (Ont. Ct. (Gen. Div.))
60. Columbia Picture Industries Inc. v. Robinson [1986] 3 All E.R. 338 (Ch. Div.).
61. Nintendo of America Inc. v. Coinex Video Games Inc. (1982), 69 C.P.R. (2d) 122 (F.C.A.).
150

The Supreme Court of Canada62 has said that safeguards for the respondents
to such an order cannot be implicit and must be specified in the Anton Piller
order. Unless and until model orders are developed by legislation or recommended by law societies pursuant to their responsibility for professional conduct, the following guidelines for preparation and execution of an Anton
Piller order will apply depending on the circumstances:
i) Basic Protection for the Rights of the Parties
(i) The order should appoint a supervising solicitor who is independent
of the plaintiff or its solicitors and is to be present at the search to
ensure its integrity. The key role of the independent supervising
solicitor is to ensure that the execution of the Anton Piller order and
everything that flows from it, is undertaken as carefully as possible
and with due consideration for the rights and interests of all involved.
He or she is an officer of the court charged with a very important
responsibility regarding an extraordinary remedy.
(ii) Absent unusual circumstances the plaintiff should be required to provide an undertaking and/or security to pay damages in the event that
the order turns out to be unwarranted or wrongfully executed.
(iii) The scope of the order should be no wider than necessary and no
material shall be removed from the site unless clearly covered by the
terms of the order.
(iv) A term setting out the procedure for dealing with solicitor-client privilege or other confidential material should be included with a view to
enabling defendants to advance claims of confidentiality over documents before they come into the possession of the plaintiff or its
counsel, or to deal with disputes that arise. Before permitting entry to
the premises by any person other than the Supervising Solicitor, the
defendant may, for a short time (not to exceed two hours, unless the
Supervising Solicitor agrees to a longer period), (a) gather together
any documents he or she believes may be privileged; and (b) hand
them to the Supervising Solicitor for an assessment of whether they
are privileged as claimed. If the Supervising Solicitor decides that any
of the documents may be privileged or is in any doubt as to their
status, he or she will exclude them from the search and retain them
pending further order of the court if in doubt as to whether they are
privileged, or return them to the defendant and retain a list of the
62. Celanese Canada Inc. v. Murray Demolition Corp. (2006), 50 C.P.R. (4th) 241 (S.C.C.).
Anton Piller Orders 151
documents if the documents are privileged. A Respondent wishing to

take legal advice and gather documents as permitted must first inform
the Supervising Solicitor and keep him or her informed of the steps
being taken.
(v) The order should contain a limited use clause (i.e., items seized may
only be used for the purposes of the pending litigation).
(vi) The order should state explicitly that the defendant is entitled to
return to court on short notice to (a) discharge the order; or (b) vary
the amount of security.
(vii) The order should provide that the materials seized be returned to the
defendants or their counsel as soon as practicable.
ii) The Conduct of the Search
(i) In general, the order should provide that the search should be
commenced during normal business hours when counsel for
the party about to be searched is more likely to be available for
consultation.
(ii) The premises should not be searched or items removed except in the
presence of the defendant or a person who appears to be a responsible employee of the defendant.
(iii) The persons who may conduct the search-and-seize evidence should
be specified in the order or should specifically be limited in number.
(iv) On attending at the site of the authorized search, plaintiff s counsel
(or the supervising solicitor), acting as officers of the court should
serve a copy of the statement of claim and the order and supporting
affidavits and explain to the defendant or responsible corporate
officer or employee in plain language the nature and effect of the
order.
(v) The defendant or its representatives should be given a reasonable
time to consult with counsel prior to permitting entry to the
premises.
(vi) A detailed list of all evidence seized should be made and the supervising solicitor should provide this list to the defendant for inspection and verification at the end of the search and before materials are
removed from the site.
(vii) Where this is not practicable, documents seized should be placed in
the custody of the independent supervising solicitor, and defendants
counsel should be given a reasonable opportunity to review them to
advance solicitor-client privilege claims prior to release of the documents to the plaintiff.
(viii) Where ownership of material is disputed, it should be provided to the
supervising solicitor or to the defendants solicitors for safekeeping.
152
iii) Procedure Following the Search

(i) The order should make it clear that the responsibilities of the supervising solicitor continue beyond the search itself to deal with matters
arising out of the search, subject of course to any party wishing to take
a matter back to the court for resolution.
(ii) The supervising solicitor should be required to file a report with the
court within a set time limit describing the execution, who was present and what was seized.
(iii) The court may wish to require the plaintiff to file and serve a motion
for review of the execution of the search returnable within a set time
limit such as 14 days to ensure that the court automatically reviews
the supervising solicitors report and the implementation of its order
even if the defendant does not request such a review.
iv) Solicitor-Client Privilege
An Anton Piller order should set out the procedure for dealing with solicitorclient privilege or other confidential material as set out above. If the plaintiffs
lawyers inadvertently obtain possession of the defendants documents which
are subject to solicitor-client privilege, they may be disqualified from continuing to act for the plaintiff in the action.
If the plaintiffs lawyers are shown to have received confidential information attributable to a solicitor relationship relevant to the matter in issue, they
bear the onus of showing there is no real risk such confidences will be used to
prejudice of the defendant. The court will infer that confidences will be shared
and that there is a risk that such confidences will be used to the prejudice of
the defendant, unless the plaintiffs lawyers can show that the public represented by a reasonably informed person would be satisfied that no use of the
information would occur. Only where there is clear and convincing evidence
to the contrary will the presumption be rebutted. The fact that the disclosure
of the confidential information was inadvertent does not affect the presumption and the onus remains on the plaintiffs lawyers.63
Disqualification of the receiving solicitors is not automatic and if a remedy
short of removal will cure the problem, it should be considered. The following factors are relevant: (i) how the documents came into the possession of
the plaintiff and its counsel; (ii) what the plaintiff and its counsel did upon
recognition that the documents were potentially subject to solicitor-client
privilege; (iii) the extent of the review of the privileged material; (iv) the contents of the solicitor-client communications and the degree to which they are
63. Macdonald Estate v. Martin [1990] 3 S.C.R. 1235; Celanese Canada Inc. v. Murray Demolition
Corp. (2006), 50 C.P.R. (4th) 241 (S.C.C.).
Delay and Acquiescence
prejudicial; (v) the stage of the litigation; and (vi) the potential effectiveness
of an ethical wall or other precautionary steps to avoid mischief.64
v) Setting Aside the Order
A defendant may move to set aside an Anton Piller order pursuant to the
terms of the order or the relevant provisions of the rules of practice of the
court involved.65 The motion may be based on an attack of any of the conditions relating to the grant of the order or the failure to make full and frank
disclosure.
7. Discovery
Discovery of documents, examinations for discovery and inspection of property are available in infringement or passing off actions under the rules of the
court in which the action is brought.66

A plaintiffs delay, that is not for a longer time than prescribed by the applicable statutory limitation, is not a bar to an action.67 Delay will be taken into
consideration in determining the availability of equitable remedies such an
injunction or an accounting of profits. In general it is the effect of delay not
the fact of delay which must be considered.
If a person consents to the use of their trademark or leads the defendant to
believe that use of the trademark is not an infringement or passing off, a
defense based on estoppel by acquiescence may be successful.68
64. Celanese Canada Inc. v. Murray Demolition Corp. (2006), 50 C.P.R. (4th) 241 (S.C.C.).
65. Ontario Rules of Civil Procedure, R.R.O 1990, Regulation 194 as amended, Rule 39.01(6) and
the Federal Court Rules, 1998, SOR/98106 rule 399.
66. Ontario Rules of Civil Procedure, R.R.O 1990, Regulation 194 as amended; Federal Court
Rules, 1998, SOR/98106.
67. Alticor Inc. v. Nutravite Pharmaceuticals Inc. (2004), 31 C.P.R. (4th) 12 (F.C.), 42 C.P.R. (4th)
107 (F.C.A.).
68. Anheuser-Busch Inc. v. Carling OKeefe Breweries of Canada Inc.(1986), 10 C.P.R. (3rd) 433
(F.C.A.); 1013579 Ontario Inc. v. Bedessee Imports Ltd. (1997), 77 C.P.R. (3d) 163 (F.C.A.).
153
154
The relevant provincial Limitations Act may provide a defense. Infringement
and passing off are continuous torts and a cause of action arises with each
repetition of the impugned activity. The assessment of damages will include
all those acts of infringement within the relevant limitation period.69
As the Trade-marks Act does not contain any limitation period, the determination of the applicable limitation depends on where the infringement
occurred and the court in which the proceedings are instituted. If an action is
brought in a court in Ontario the Ontario Limitations Act, 2002 70 will apply.
Under this Act unless otherwise provided, a proceeding shall not be commenced in respect of a claim after the second anniversary of the day on which
the claim was discovered.71
If an action is brought in the Federal Court, section 39 of the Federal
Courts Act72 applies. If the cause of action arises in a specific province the
limitation provisions of that province will apply. If the cause of action arises
otherwise than in a province, an action must be brought within six years after
the cause of action arose. The words otherwise than in a province have been
interpreted to mean that in an action for passing off if the alleged confusion
is not limited to a province than the six-year limitation of section 39
applies.73

a) Plainti s Ownership in an Action for Infringement
Evidence of the plaintiffs ownership and use of a registered trademark and
the use of a confusing trademark is sufficient to establish a prima facie case.74
Filing a certified copy of a trademark registration may be sufficient to show
ownership.75
69. See, e.g., Limitations Act, 2002, S.O. 2002, Chapter 24, Schedule B as amended; section 4 and
see, Mastini v. Bell Telephone Co. of Can. (1971), 18 D.L.R. (3d) 215 (Ex. Ct.).
70. S.O. 2002, Chapter 24, Schedule B as amended.
71. Limitations Act, 2002, S.O. 2002, Chapter 24, Schedule B as amended; sections 4 and 5.
72. Federal Courts Act, R.S.C. 1985, c. F-7.
2003 F.C.A. 297; appeal dismissed (2005), 43 C.P.R. (4th) 385 (S.C.C). The limitation issue
was not considered on appeal.
74. See Chapter 13.
75. Subsection 54.
Evidence at Trial 155
b) Infringement
In leading evidence of infringement, at a minimum all that need be shown is
that the alleged infringing trademark has been used as a trademark and is
identical to or confusing with the plaintiffs registered trade mark.76
Expert evidence may be led with respect to pronunciation of the trademark or how many persons would be aware of the mark.77
Evidence obtained by public surveys is acceptable so long as the survey is
both reliable (in the sense that if the survey was repeated it would likely produce the same result) and valid (in the sense that the right questions have
been put to the right pool of respondents in the right way, in the right circumstances to provide the information sought).78
Evidence may be presented concerning each of the statutory factors set out
in subsection 6(5) of the Act.79 Voluminous evidence to show the extent to
which the plaintiffs trademark has become known is typically presented.
In order to show confusion for the purpose of the Act it is not necessary
to show actual consumer confusion but evidence of such confusion is persuasive.80 Conversely, an adverse inference may be drawn from the lack of evidence of instances of confusion in circumstances where it would readily be
available if the allegation of likely confusion was justified.81
c) Passing O
The plaintiff in an action for passing off must establish
a) the existence of goodwill or reputation attached to the goods or services supplied in the mind of the purchasing public by association
with identifying get-up under which the particular goods or services
are offered to the public, so that the get-up is recognized by the public
as distinctive of the plaintiff s goods or services;
b) a misrepresentation by the defendant to the public (whether or not
intentional) leading or likely to lead the public to believe that the goods
76. See Chapter 13.

79. See Chapter 11.
80. Mr Submarine Ltd. v. Amandista Investments Limited (1986), 11 C.P.R. (3d) 425 (F.C.T.D.),
reversed (1987), 19 C.P.R. (3d) 3 (F.C.A.) and see Mattel, Inc. v 3894207 Canada Inc. (2006),
49 C.P.R. (4th) 321 (S.C.C.).
156
or services offered by the defendant are the goods and services of the
plaintiff; and
c) that it has suffered or that it will likely suffer damage by reason of the
erroneous belief engendered by the defendants misrepresentation
that the source of the defendants goods or services is the same as the
source as those offered by the plaintiff.82
In addition, evidence may be led to show that certain features are common
to the trade, how articles or services are described by potential purchasers,
and the characteristics and education of prospective purchasers.83
11. Remedies
Where a court is satisfied, on application of any interested person, that any
act has been done contrary to this Act, the court may make any order that it
considers appropriate in the circumstances, including an order providing for
relief by way of injunction and the recovery of damages or profits and for the
destruction, exportation or other disposition of any offending wares, packages, labels, and advertising material and of any dies used in connection
therewith.84
The relief granted to a successful plaintiff in a common law passing off
action is similar to that granted in an action for infringement of trademark,
namely, an injunction, damages or an account of the profits made by the
defendant and destruction or delivery up for defacement of all falsely marked
articles.
In an action for infringement or relying on subsection 7(b) or (c) of the Act,
if a plaintiff establishes at trial that infringement has occurred, the plaintiff is
prima facie entitled to an injunction subject to any applicable equitable
defenses. Similar considerations apply to a claim for common law passing off.
82. Reckitt & Colman Products Ltd. v. Borden Inc., [1990] 1 All E.R. 873 (H.L.); CibaGeigy Can.
Ltd. v. Apotex Inc. (1992), 44 C.P.R. (3d) 289 (S.C.C.); and see Chapter 14.
83. Smith Kline & French Can. Ltd. v. Novopharm Ltd. (1982), 62 C.P.R. (2d) 36 (Ont. H.C.).
84. Section 53.2.
Remedies
For example, long and unexplained delay by the plaintiff when fully aware of
its legal rights may deprive a plaintiff of a permanent injunction.85
A person who breaches an obligation contained in an injunction is guilty
of contempt of court.86 A person found to be in contempt is subject to imprisonment, fine, additional orders of the court, sequestration of assets, and further orders for costs.87 Imprisonment for even a willful breach may be
suspended in order to give the offending party a further opportunity of complying with terms of the injunction.
Contempt proceedings must be conducted in accordance with the principles of fundamental justice including the right to be presumed innocent until
proven guilty beyond a reasonable doubt and to have a reasonable time to
prepare a defense and to call witnesses.88 A person alleged to have committed
a contempt cannot be compelled to testify.89
c) Prots or Damages
(i) Alternative Remedies
A successful plaintiff in an action for infringement is entitled to the recovery
of damages or profits made by the defendant.90 The plaintiff must elect for
one or the other before judgment or an order for a reference is made.91 In an
action quia timet nominal damages may be granted.92
(ii) Assessment of Damages
The general rule in relation to economic torts is that the measure of damages is to be, so far as possible, that sum of money which will put the injured
85. Institut National des appellations dorigine des vins & eaux-de-vie v. Andres Wines Ltd. (1987),
60 O.R. (2d) 316, 16 C.P.R. (3d) 385 (Ont. H.C.), affirmed 30 C.P.R. (3d) 279 (Ont. C.A.).
86. Federal Court Rules, 1998, SOR/98-106 rule 466(b); Rules of Civil Procedure, R.R.O 1990,
Regulation 194 as amended, rule 60.11(1).
87. Federal Court Rules, 1998, SOR/98-106 rule 472; Rules of Civil Procedure, R.R.O. 1990, Regulation 194 as amended, rule 60.11(5). See Apotex Fermentation Inc. v. Novopharm Ltd [1998]
2 W.W.R. 725 (Man Q.B.) for a general discussion of factors relevant to the imposition of a
substantial fine.
88. R. v. B.E.S.T. Plating Shoppe Ltd. (1987), 59 O.R. (2d) 145 (Ont. C.A.).
89. Federal Court Rules, 1998, SOR/98106 rule 470(2) and see Vidotron Lte. v. Industries
Microlec Produits lectroniques Inc. (1992), 45 C.P.R. (3d) 1. (S.C.C.).
90. Section 53.2; 3925928 Manitoba Ltd. v. 101029530 Saskatchewan Ltd. (2005), 44 C.P.R.
(4th)161 (F.C.).
91. Beloit Canada Lt6e v. Valmet Oy (1987), 16 C.P.R. (3d) 92 (Fed. C.A.); 3925928 Manitoba Ltd.
v. 101029530 Saskatchewan Ltd. (2005), 44 C.P.R. (4th)161 (F.C.).
92. Hughes v. Sherrif [1950] O.R. 206 (Ont. S.C.); 12 C.P.R. 79 (Ont. C.A.).
157
158
party in the same position as he or she would have been in if they had not sustained the wrong.93 The plaintiff can recover loss which is foreseeable, caused
by the wrong and not excluded from recovery by public or social policy.94
There are two essential principles in determine the amount of damages to
be awarded: first, that the plaintiff has the burden of proving its loss; and
second, as the defendant is the wrongdoer, damages should be liberally
assessed but with the object of compensating the plaintiff not punishing the
defendant. Damages are typically not capable of being mathematically ascertained by an exact figure.95
Any injury to the plaintiffs reputation, goodwill, or trade is relevant and
may be taken into consideration.96 A reduction in sales may have a direct
effect on the amount of damages to be awarded but it does not necessarily
follow that the reduced sales were caused by the infringement.97 Where the
plaintiff would not have made the sales made by the defendant, the principle
of royalty may be applied in assessing the quantum of damages.98
Damages may be presumed from interference and confusion.99 If the
amount of damages cannot be proved, nominal damages may be awarded.100
(iii) Account of Prots
If the plaintiff elects for an account of profits the damages suffered are irrelevant.101 The right to an account of profits or damages extends to the date of
judgment or of the account.102
By analogy to cases involving patent infringement, the plaintiff is only
entitled to that portion of the infringers profit which is causally attributable
to the infringement.103 This is consistent with the general law that it is essential that the losses awarded are only those which, on a common sense view of
causation, were caused by the breach.104
93.
94.
95.
96.
97.
98.
99.
100.
101.
102.
103.
104.
Allied Signal Inc. v. Dupont Canada (1998), 78 C.P.R. (3d) 129 (F.C.T.D.).
Gerber Garment v. Lectra Systems Ltd. [1997] R.P.C. 443 (U.K.C.A).
Allied Signal Inc. v. Dupont Canada, (1998), 78 C.P.R. (3d) 129 (F.C.T.D.).
David Dixon & Son Ltd. v. Cornwall Pants & Clothing Co. (1942), 2 C.P.R. 81 (Ont. S.C.).
Allied Signal Inc. v. Dupont Canada, (1998), 78 C.P.R. (3d) 129 (F.C.T.D.).
Allied Signal Inc. v. Dupont Canada, (1998), 78 C.P.R. (3d) 129 (F.C.T.D.); Lightning Fastener
Co. v. Colonial Fastener Co., [1936] Ex. C.R. 1 (Ex. Ct.); [1937] S.C.R. 36 (S.C.C.).
Marc-Aurele v. Ducharme (1976), 34 C.P.R. (2d) 155 (Fed. T.D.).
Louis Vuitton Malletier S.A. v. 486353 B.C. Ltd. 2008 BCSC 799 (B.C. S.C.)
3925928 Manitoba Ltd. v. 101029530 Saskatchewan Ltd. (2005), 44 C.P.R. (4th)161 (F.C.).
Dubiner v. Cheerio Toys and Games Ltd. [1966] Ex. C.R. 801 (Ex. Ct.).
Schmeiser et al. v. Monsanto Canada Inc., (2004), 31 C.P.R. (4th) 161 (S.C.C); Lubrizol Corp.
v. Imperial Oil Ltd. (1996), 71 C.P.R (3d) 26 (F.C.A.).
Cadbury Schweppes Inc. v. FBI Foods Ltd. [1999] 1 S.C.R. 142, 83 C.P.R. (3d) 289 (S.C.C).
Remedies
The preferred means of calculating profits is what has been termed the
value-based or differential profit approach, where profits are allocated
according to the value contributed to the defendants wares by the infringement. A comparison should be made between the defendants profit attributable to the infringement and the profit if the best non-infringing option was
used.105
An account of profits is an equitable remedy and subject to equitable
defenses. The absence of clean hands106 or delay107 may be sufficient to deny
the remedy.
In cases involving an account of profits, the courts have imposed a requirement to pay compound interest on profits to reflect the fact that the original
profits retained or made would be used as the infringing activities progressed.108
Frequently, a court will order that an account of profits be determined on
a reference. On a reference, the referee may order that the parties be examined for discovery and order the production for inspection and copying by a
party of any document or other material relevant to the matters in issue. In
addition, the attendance of witnesses to give evidence at a reference may be
enforced by subpoena.109
d) Destruction, Exportation or Other Disposition

of Oending Wares
Under section 53.2 of the Act, a court may make any order that it considers
appropriate in the circumstances, including an order for the destruction,
exportation or other disposition of any offending wares, packages, labels, and
advertising material and of any dies used in connection therewith.110 Orders
of this nature are discretionary and subject to equitable defenses. The breach
of an order may be punished as a contempt of court.
105.
106.
107.
108.
Schmeiser et al. v. Monsanto Canada Inc., (2004), 31 C.P.R. (4th) 161(S.C.C).

Dableh v. Ontario Hydro (1993), 50 C.P.R. (3d) 290 (F.C.T.D.), 68 (3d) 129 (F.C.A.).
Invacare Corp. v. Everest & Jennings Canadian Ltd. (1987), 14 C.P.R. (3d) 156 (F.C.T.D.).
Teledyne Industries Inc. v. Lido Industrial Products Ltd. (1982), 68 C.P.R. (2d) 204 (F.C.T.D.)
and Wellcome Foundation Ltd. v. Apotex Inc., (1997), 82 C.P.R. (3d) (F.C.T.D.).
109. Federal Court Rules,1998, SOR/98-106 rule 153 to 164 ; Rules of Civil Procedure, R.R.O 1990,
Regulation 194 as amended, rule 54 and 55.
110. See Cheerio Toys and Games Ltd. v. Dubiner (1964), 48 C.P,R. 226 (Ex. Ct.); affirmed [1966]
S.C.R. 206 (S.C.C.); Cheerio Toys and Games Ltd. v. Cheerio Yo-Yo & Bo-Lo Co. (1964),
43 C.P.R. 111 (Ex. Ct.); Thurston Hayes (Hays) Developments Ltd. v. Horn Abbot Ltd. (1985),
5 C.P.R. (3d) 124 (Fed. C.A.); reversing in part 4 C.P.R. (3d) 376 (Fed. T.D.) concerning
similar orders made before the section was added to the Act.
159
160 Chapter 15 Actions for Infringement and Passing Off
There is little case law dealing with the making of orders requiring that
infringing goods be exported but in some cases such an order may be in the
interest of all of the parties to an action.
With the exception of orders for exportation, similar orders have been
commonly made in actions for passing off.111
e) Costs
The granting of costs is in the discretion of the court112 but frequently costs
follow the event and the successful party is entitled to an order in its favor.
Reference should be made to the practice and procedure of the court involved
concerning the awarding of costs113 and the effect of offers to settle.114
111. Cheerio Toys & Games Ltd. v. Cheerio Yo-Yo & Bo-Lo Co. (1964), 43 C.P.R. 111 (Ex. Ct.);
Noshery Ltd. v. Penthouse Motor Inn Ltd. (1969), 61 C.P.R 207 (Ont. H.C.).
112. Ontario Rules of Civil Procedure, O. Reg. 560/84, r. 57.01 and Federal Court Rules, 1998,
C.R.C.1978, vol. VI, c. 663, r. 344.
113. Rules of Civil Procedure, R.R.O 1990, Regulation 194 as amended, rule 57 and Federal Court
Rules,1998, SOR/98-106 rule 400404.
114. Rules of Civil Procedure, R.R.O 1990, Regulation 194 as amended, rule 49 and Federal Court
Rules,1998, SOR/98-106 rule 419422.
CHAP T ER
16
Domain Names
1. The Internet
162
2. Domain Names
163
163
163
c) .ca Domain Names
165
165
166
4. The UDRP
167
a) History
167
168
169
169
e) Bad Faith
170
f ) Procedure
172
5. The CDRP
173
a) History
173
173
174
175
e) Bad Faith
176
f ) Procedure
177
177
178
161
162 Chapter 16 Domain Names
1. The Internet
To reach another person on the Internet you have to type an address into
your computera name or a number. That address, which consists of an
Internet Protocol (IP) number, has to be unique so computers know where to
find each other. Alpha-numeric domain names were introduced as a mnemonic for IP numbers.
Domain names are the alpha-numeric text strings to the right of the @
in an email address or immediately following the two slashes in a web address.
The domain name designates an IP number consisting of a network address
and a host ID on a TCP/IP network.
A domain name has three parts. For example, in the address www.oup.
com, the .com is the Top Level Domain or (TLD) or root identifier, oup
is the Second Level Domain (SLD) or host. Additional references can be
added to specify a location on the host server. References of this sort are
treated as a third or higher-level domain.
The host portion of a domain name may be generic or descriptive. It is
unclear whether a domain is a form of intangible intellectual property
although it is clear that in practice they are treated as if they were.1
The legacy root, the most widely used list of TLDs, is currently made up of
21 generic TLDs (gTLDs) and 250 two-letter country code TLDs (ccTLDs).
Currently the TLDs are exclusively in Roman characters. The gTLDs include
three-letter TLDs .com, .net, .org, .edu, .gov, .int, .mil., .biz, and. pro and fourletter TLDs including .arpa, .info, .name, .aero, and .coop as well as .museum.
The ccTLDs are derived from the International Organization for Standards
(IOS) Standard 3166 and include .ca for Canada and .us for the United States
among others.
Some gTLDs are open and allow anyone to register as many available
domain names as they wish without restrictions. Other gTLDs are restricted
and a registrant must meet certain specifications. For example, .name is limited to individuals, and .pro is limited to accredited lawyers, doctors, and
accountants. The ccTLDs follow a similar pattern; many ccTLDs are unrestricted although some are restricted and require a local presence or specific
legal documentation. Canadas ccTLD, the .ca domain, is restricted.
The Internet Corporation for Assigned Names and Numbers (ICANN) is
a non-profit corporation, created in 1998 to oversee a number of Internetrelated tasks previously performed directly on behalf of the U.S. Government
by other organizations. ICANNs tasks include responsibility for managing
the assignment of domain names and IP addresses. ICANN coordinates these
unique identifiers across the world.
1. George Vona, Sex in the Courts: Kremen v. Cohen and the Emergence of Property Rights in
Domain Names (2006) 19 I.P.R. 393.
Domain Names
In 1999, it was decided that ICANN should add new gTLDs to the root
and that there should be an initial rollout of new gTLDs, followed by an evaluation period. This was done throughout 2000 and .coop, .aero, and .biz.
were introduced. After evaluation, further sponsored TLDs was introduced
during 2003 and 2004 which included, among others, .mobi, and .travel.
ICANN has announced a new community developed policy that will
enable potential applicants to self-select strings, consisting of any word or
phrase of 3 to 63 characters in length, that are either the most appropriate for
their customers or potentially the most marketable. The strings may use nonRoman characters such as Chinese, Arabic, or Cyrillic characters. It is
expected that applicants will apply for targeted community strings as well as
some generic strings. ICANN is engaged in finalizing the process to introduce these new gTLDs.2 When introduced, this expansion of gTLD has the
potential to widen the scope of the Internet. Trademark owners have expressed
concerns that the policy may give rise to trademark abuse, consumer confusion, and a heavier enforcement burden. ICANN is attempting to address
these concerns.
2. Domain Names
In general terms the registration system is first come, first served and there is
no assessment of registrability or entitlement or opposition proceedings.
However, the practice has developed of allowing trademark owners the initial
opportunity, at the launch of a new gTLDs, of obtaining domains which
reflect their trademarks for a limited period of time. This is referred to as a
Sunrise Period.

Registrants who wish to register in the.com,.org, or.net domains or other gTLD
domains must do so through a registrar who has been accredited by ICANN.
Accredited registrars must enter into a written registration agreement with
2. Draft Applicant Guidebook: What You Told Us, 18 February 2009 at http://icann.org/en/
announcements/announcement-3-18feb09-en.htm.
163
an applicant for a domain name which includes provisions dealing with the
following matters:
(a) The applicant shall provide to Registrar accurate and reliable contact
details and promptly correct and update them during the term of the
Registered Name registration;
(b) The applicant shall represent that, to the best of the applicants knowledge and belief, neither the registration of the Registered Name nor
the manner in which it is directly or indirectly used infringes the legal
rights of any third party;
(c) An applicants willful provision of inaccurate or unreliable information, its willful failure promptly to update information provided to
Registrar, or its failure to respond for over fifteen (15) calendar days to
inquiries by Registrar concerning the accuracy of contact details associated with the applicants registration shall constitute a material
breach of the Registered Name Holder-registrar contract and be a
basis for cancellation of the Registered Name registration;
(d) The applicant shall agree that its registration of the Registered Name
shall be subject to suspension, cancellation, or transfer pursuant to any
ICANN-adopted specification or policy.3
ICANNs agreements with accredited registrars and with gTLD registry operators require compliance with various specifically stated procedures and also
with consensus policies. There are a number of consensus policies including the Uniform Domain Name Dispute Resolution Policy.4
Under the Expired Domain Deletion Policy all ICANN-accredited registrars must delete domain names by the conclusion of the 45-day automatic
renewal period that follows expiration of a domain name, unless the registrant has consented to have the domain name renewed. Names deleted continue to be subject to a further 30-day hold period designed to allow registrars
to restore names which were deleted accidentally or without the intent of the
registrant.5
Under the Inter-Registrar Transfer Policy, gaining registrars must use a
clear standardized form as well as obtaining reliable evidence of the identity
of the registrant or administrative contact that has requested the transfer.6
3. This obligation is implemented through ICANNs Registrar Accreditation Agreements see

Accreditation Agreement at http://www.icann.org/registrars/ra-agreement.
4. See http://www.icann.org/en/general/consensus-policies.htm and see part 4 of this chapter.
5. See complete policy at http://www.icann.org/en/registrars/eddp.htm.
6. See complete policy and related dispute resolution policy at http://www.icann.org/en/
transfers/.
Domain Names
ICANN has indicated that if a registrar fails to adhere to any terms of the
Registrar Accreditation Agreement, ICANN may pursue all remedies available to it under that Agreement including termination of accreditation.7
c) .ca Domain Names

In order to obtain a registration in the.ca domain, applicants must satisfy the
Canadian presence requirements.8 An applicant must have a connection with
Canada. The following individuals and entities, among others, are permitted
to apply for the registration of, and to hold and maintain the registration of,
a .ca domain name: a Canadian citizen, a permanent resident or a corporation incorporated under the laws of Canada or a province or the owner of a
trademark registered in Canada, but in such case an application is limited to
a .ca domain name consisting of or including to the exact word component of
the registered mark.9
The Canadian Internet Registration Authority (CIRA) is a not-for-profit
Canadian corporation that is responsible for operating the .ca ccTLD.
An applicant must use a CIRA certified registrar to effect the registration and
agree to be subject to the CIRA domain name dispute resolution policy.
A domain name that is registrable under the Trade-marks Act10 and is used as
a trademark11 may be protected as a trademark.12 Due to the requirements for
use specified in the Act, this means that marks of this type must be registered
in association with services.13
7.
8.
9.
10.
See policy concerning enforcement at http://www.icann.org/compliance/.

See registration rules at http://www.cira.ca.
See registration rule 2.1 at http://www.cira.ca.
See Chapter 3, and see Black v. Molson Canada (2002), 21 C.P.R. (4th) 52 (Ont. S.C.J.);
Candrug Health Solutions Inc. v. Thorkelson, (2007), 60 C.P.R (4th) 35 (F.C.), 2008 FCA 100
(F.C.A.) appeal allowed but on consent; and Emall.ca Inc. v. Cheap Tickets and Travel Inc.,
2007 FC 243, 56 C.P.R (4th) 82 (F. C.), appeal dismissed, 2008 FCA 50, 68 C.P.R. (4th) 381
(F.C.A.).
11. See Chapter 5.
12. ITV Technologies Inc. v. WIC Television Ltd. 2003 F.C. 1056, 40 C.P.R. (4th) 121 appeal dismissed 2005 FCA 96 (F.C.A.).
13. See Pro-C Ltd. v. Computer City Inc. (2001), 55 O.R. (3d) 577 (Ont. C.A.) and Tesco Stores
Limited v. Elogicom, [2006] EWHC 403 (U.K. Ch. D.) where it was found that the defendants
use of a confusing domain name linked to the plaintiff s website was a service consisting of
the provision of a pathway through the Internet.
165
166
Chapter 16 Domain Names
The operation of the Internet raises jurisdictional issues concerning which
particular court should hear any applicable disputes. The courts of specific
countries typically have specific rules for determining when jurisdiction will
be exercised and rules or policies concerning when the jurisdiction of the
courts of other countries will be respected.
The concept of jurisdiction was initially based on the royal prerogative.
It was generally accepted that each ruler only had power within the territorial
confines of their country. Generally jurisdiction remains territorial.
It has been difficult to apply the concept of jurisdiction to the Internet,
since, as it is frequently said, the Internet knows no boundaries. When trademarks or copyright material are reproduced on a website, it must be determined which court has jurisdiction with respect to any disputes.
The Supreme Court of Canada has established that the applicability of
national laws to communications that have international participants depends
on whether there is a sufficient connection between Canada and the communication for Canada to apply its laws consistent with the principles of order
and fairness that ensure security of cross-border transactions with justice.14
The Court has said that the real and substantial connection test is the
appropriate way to prevent overreaching and to control the exercise of jurisdiction over extra territorial and transnational transactions.15 The test
reflects the underlying reality of the territorial limits of law under the international legal order and respect for the legitimate actions of other states
inherent in the principle of international comity.
For Internet related matters, relevant connecting factors include the situs
of the content provider, the host server, the intermediaries, and the end user.
The weight to be given to any particular factor will vary with the circumstances and the nature of the dispute.16 The Court has recognized that where
Canada is the country of transmission or the country of reception, this is a
sufficient connection for taking jurisdiction.17
14. Society of Composers, Authors and Music Publishers of Canada v. Canadian Association of
Internet Providers, 2004 SCC 45, 32 C.P.R. (4th) 1 (S.C.C.); Morguard Investments Ltd. v. De
Savoye [1990] 3 S.C.R. 1077.
Internet Providers, 2004 SCC 45, 32 C.P.R. (4th) 1 (S.C.C.); Tolofson v. Jensen [1994] 3 S.C.R.
1022.
Internet Providers, 2004 SCC 45, 32 C.P.R. (4th) 1 (S.C.C.).
Internet Providers, 2004 SCC 45, 32 C.P.R. (4th) 1 (S.C.C.).
The UDRP 167
As a result, the real and substantial connection test is applied to disputes

relating to e-commerce18 although some Canadian courts before this decision applied the approach that has been developed in American jurisprudence.19
The courts have accepted a click wrap agreement which provides that all
disputes were governed by the laws of a particular state and specifies the
venue for any legal proceedings can be effective.20
4. The UDRP
a) History
Since 1999, domain name registration agreements have required that an
applicant submit to an administrative dispute resolution policy limited to
cases of abusive registration of domain names. The policy is referred to as the
Uniform Domain Name Dispute Resolution Policy21 (UDRP).
The UDRP policy is included in domain name registration agreements
entered into with applicants and sets out the terms and conditions applicable
to a dispute between the registrant and a third party relating to the registration and use of a domain name.22 The policy applies to the gTLDs (e.g., .biz,
.com, .info, .mobi, .name, .net, .org), and to the ccTLDs that have adopted the
UDRP Policy on a voluntary basis.
18. UniNet Technologies Inc. v. Communication Services Inc. (2005), 39 C.P.R. (4th) 1 (B.C.C.A.)
Disney Enterprises Inc. v. Click Enterprises Inc. (2006), 49 C.P.R. (4th) 87 (Ont. Sup. Ct of
Justice); Desjean v. Intermix Media, Inc., 2006 FC 1395, 57 C.P.R (4th) 314 (F.C.), 2007 FCA
365 (F.C.A.).
19. Braintech Inc. v. Kostich (1999), 171 D.L.R. (4th) 46 (B.C.C.A.); Pro-C Ltd. v. Computer
City, Inc. (2000), 7 C.P.R. (4th) 193 (Ont. Sup. Ct.), reversed on other grounds, 14 C.P.R. (4th)
441 (Ont. C.A.); Easthaven, Ltd. v. Nutrisystems.com Inc. (2001), 14 C.P.R. (4th) 22 (Ont.
Sup. Ct.).
20. Rudder v. Microsoft Corp (1999), 2 C.P.R. (4th) 474 (Ont. Sup. Ct); Kanitz v. Rogers Cable Inc.
(2002), 58 O.R. (3d) 299 (Ont. Sup. Ct.).
21. See http://www.icann.org/dndr/udrp/policy.htm.
22. WIPO publishes material relating to the UDRP which is very helpful See the Guide to the
UDRP at http://arbiter.wipo.int/domains/guide/index.html., Model Complaint and Filing
guidelines at http://arbiter.wipo.int/domains/complaint/index.html., and Index of WIPO
Panel Decisions at http://arbiter.wipo.int/cgi-bin/domains/search/legalindex?lang=eng.
168
A registrant is required to submit to a mandatory administrative proceeding
in the event that a complainant asserts that:
(i) the domain name is identical or confusingly similar to a trademark or
service mark in which the complainant has rights;
(ii) the registrant has no rights or legitimate interest in the domain name;
and
(iii) the domain name has been registered and is being used in bad
faith.23
The complainant must prove each of these elements are present24 by filing
evidence to substantiate them. If a complainant owns a registered trademark,
this will satisfy the threshold requirement of having trademark rights.25
The place of registration of the trademark or the goods and/or services it is
registered for are irrelevant when finding rights in a mark.26 Federal registration of a mark in Canada or the United States is prima facie evidence of the
complainants rights in the mark but registration on the Supplemental
Register in the United States is not sufficient.27
A complainant may rely on a common-law trademark, but in such a case
it must be shown that the mark has become a distinctive identifier associated
with the complainant or its goods and services. Evidence of secondary
meaning must be presented including the duration and amount of sales in
association with the mark, the nature and extent of advertising, consumer
surveys, and media recognition. Generic terms that are not distinctive and
do not function as a trademark will not support a complaint under the
UDRP.28
The UDRP does not specifically protect personal names; however, where
an unregistered personal name is being used for trade or commerce, the
23. UDRP Policy Paragraph 4(a).

24. UDRP Policy Paragraph 4(a); Nintendo of America, Inc. v. Pokemonplanet.net WIPO case no.
D2001-1020; Shell International Petroleum Company Limited v. Alfred Donovan WIPO case
no. D2005-0538.
25. WIPO Overview, Section 1.1 www.wipo.-int/amc/en/domains/search/overview. See Uniroyal
Engineered Products, Inc. v. Nauga Network Services, WIPO case no. D2000-0503. See also
Consorzio del Formaggio Parmigiano Reggiano v. La casa del Latte di Bibulic Adriano, WIPO
case no. D2003-0661.
26. WIPO Overview, Section 1.1. See Thaigem Global Marketing Limited v. Sanchai Aree, WIPO
case no. D2002-0358.
27. Chiapetta v. Morales, WIPO case no. D2002-1103; Oil Changer, Inc. v. Name Administration,
Inc., WIPO case no. D2005-0530.
28. Coming Attractions v.ComingAttractions.com, NAF, case No. FA0003000094341; The Carphone Warehouse Limited v. Navigation Catalyst Systems Inc. WIPO case no. D2008-0483.
The UDRP 169
complainant can establish common law trademark rights in the name.

Personal names that are included in a registered trademark can be protected
under the UDRP.29
The UDRP applies to the most direct and obvious forms of abusive registration, leaving all other cases to the courts.30 The summary nature of the
proceedings is not intended to resolve complicated factual issues or matters
of credibility.
The complainant must establish that the impugned domain name is
identical or confusingly similar to a trademark or service mark in which it has
rights.
Generally, when a domain name is registered before trademark rights are
established, the registration of a domain name will not be found to be in bad
faith because the registrant could not have contemplated the complainants
non-existent right.31
In UDRP cases the panelists apply the policy criteria and it is not necessary
to make out a case of trademark infringement. In these cases the addition of
a non-distinctive prefix or suffix, such as e to designate electronic, will
receive little weight.32
Website content is irrelevant in determining whether the domain name is
confusingly similar.33 The test for confusing similarity is directed at the
trademark and the domain name. However, website content may be relevant
when considering bad faith.

For the purpose of such proceedings any of the following circumstances, in
particular but without limitation, if found by the Panel to be proved based on
29. WIPO Overview, Section 1.6.at www.wipo.-int/amc/en/domains/search/overview.

30. Stephen Cleeve v. Domains by Proxy Inc./Consumer Protection, WIPO case no. D2007-731,
Your Golf Travel Limited v. Hardelot Holidays Limited, WIPO case no. D2007-1058.
31. Stephen Cleeve v. Domains by Proxy Inc./Consumer Protection, WIPO case no. D2007-073,
and see WIPO Overview 1.4 at www.wipo.-int/amc/en/domains/search/overview.
32. General Electric Co. v. Online Sales Inc., WIPO case no. D2000-0343, Ticketmaster Corp. v.
Brown, WIPO case no. D2001-0716, Sun Microsystems, Inc. v. Telmex Mgmt. Sers. NAF case
no. FA0206000114621 (Aug. 2002), Canadian Tire Corporation, Limited v. Mike Rollo WIPO
case no. D2002-1069.
33. AT&T Corp. v. Amjad Kausar, WIPO case no. D2003-327, and see WIPO Overview 1.2 at
www.wipo.-int/amc/en/domains/search/overview.
170
its evaluation of all evidence presented, shall demonstrate rights or legitimate

interests to the domain name
(i) before any notice of the dispute, use of, or demonstrable preparations
to use, the domain name or a name corresponding to the domain
name in connection with a bona fide offering of goods or services; or
(ii) the respondent (as an individual, business, or other organization) has
been commonly known by the domain name, even if no trademark or
service mark rights have been acquired; or
(iii) making a legitimate noncommercial or fair use of the domain name,
without intent for commercial gain to misleadingly divert consumers
or to tarnish the trademark or service mark at issue.34
Generally panelists require a complaint to make out an initial prima facie
case that the respondent lacks rights or legitimate interest. Once this is done
the burden shifts to the respondent to show rights or legitimate interest.35
Using a domain name that is a misspelling of the complainants trademark
to divert traffic to a competitive website is not a legitimate interest.36 A pattern of other infringing activity tends to show a lack of legitimate interest as
well as bad faith.37 The defence of laches has no application under the UDRP
policy38 but delay may make it more difficult to show lack of legitimate interest and bad faith.39
e) Bad Faith
For the purpose of such proceedings the following circumstances, in particular but without limitation, if found to be present, are evidence of registration
and use of a domain name in bad faith:
(i) circumstances indicating that the registrant has registered or acquired
the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant,
who is the owner of the trademark or service mark or to a competitor
34. UDRP Policy Paragraph 4(c).

35. See WIPO Overview 2.1 at www.wipo.-int/amc/en/domains/search/overview.
36. Ticketmaster Corp. v. Woofer Smith WIPO case No. D2003-0346; Canadian Tire Corporation,
Limited v. C.C.C., Kevin Lyan, WIPO case no. D2006-1049
37. Budget Rent-a-Car Corp. v. John Zuccarini WIPO case No. D2000-1020; Sun Microsystems,
Inc. v. Talmex Management Services NAF case no. FA0206000114621.
38. Those Characters From Cleveland Inc. v. User51235, WIPO case no. D2006-0950
39. WWF-World Wide Fund for Nature aka WWF International v. Moniker Online Services LLC,
WIPO case no. D2006-0975, Geoffrey Inc. v. Not The Usual, WIPO case no. D2006-0882.
The UDRP 171
of that complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name;40 or
(ii) the registrant has registered the domain name in order to prevent the
owner of the trademark or service mark from reflecting the mark in a
corresponding domain name, provided that the registrant has engaged
in a pattern of such conduct; or
(iii) the registrant has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the registrant has intentionally attempted
to attract, for commercial gain, Internet users to its web site or other
on-line location, by creating a likelihood of confusion with the complainants mark as to the source, sponsorship, affiliation, or endorsement of the registrants web site or location or of a product or service
on the registrants web site or location.41
UDRP decisions have expanded the definition of bad faith through precedent. The lack of active use of the domain name does not preclude a finding
of bad faith and passive holding of a domain name may constitute bad faith
use.42 The panel will examine all the circumstances of the case to determine
whether respondent is acting in bad faith. Examples of circumstances that
tend to show bad faith include the fact that the complainants trademark is
well known; no response to the complaint; concealment of identity including false or inaccurate contact information; and the impossibility of conceiving a good faith use of the domain name. Panels draw inferences concerning
bad faith by considering all the circumstances relating to the registration.43
Finally, where a complainant owns a United States registered trademark
and the respondent was located in the United States as well, some cases have
found that the registration was constructive notice sufficient to constitute
bad faith registration and use.44
The prevailing view is that good faith registration followed by bad faith
use is not covered by the UDRP Policy.45
40. Panels have referred to without prejudice communications as evidence of bad faith,
McMullan Brothers v. Web Names Limited, WIPO case no. D2004-0078; Advance Magazine
Publishers Inc. v. Marcellod Dusso, WIPO case no. D2001-1049; and see WIPO Overview 3.6
at www.wipo.-int/amc/en/domains/search/overview.
41. Nokia Corporation v. Phonestop, WIPO case no. D2001-1237, Canadain Tire Corporation,
Limited v. Mike Rollo WIPO case no. D2002-1069.
42. Telstra v. Nuclear Marshmallows, WIPO case no. D2000-0003.
45. Elders Limited v. Private Company, WIPO case no. D2007-1099.
f) Procedure
The complainant selects an administrative dispute resolution service provider from a listed maintained by ICANN by submitting the complaint to
that provider.46 The selected provider will administer the proceeding, except
in cases of consolidation, and select a single Administrative Panel to determine the dispute unless either of the parties elects to have a three-member
panel. In the event of multiple disputes between the registrant and complainant, either may petition to consolidate the disputes before a single
Administrative Panel. This petition shall be made to the first Administrative
Panel appointed to hear a pending dispute between the parties. This
Administrative Panel may consolidate before it any or all such disputes in its
sole discretion, provided that the disputes being consolidated are governed
by the UDRP Policy adopted by ICANN.47
All fees charged by the service provider are the responsibility of the complainant except if the registrant chooses to expand the number of arbitrators
from one to three, the fees will be split evenly.48
The remedies available to a complainant pursuant to any proceeding
before an Administrative Panel are limited to requiring the cancellation of
the impugned domain name or the transfer of the domain name registration
to the complainant.49 If other relief such as damages or an injunction is
required, an action must be brought in a court with jurisdiction.
The UDRP requirements do not prevent the respondent or the complainant from submitting the dispute to a court of competent jurisdiction for independent resolution before the UDRP proceeding is commenced or after such
proceeding is concluded.50
If it is decided that the domain name should be canceled or transferred,
the registrant is given 10 business days before the decision is implemented
to commence legal proceedings against the complainant, if so advised.51
Such proceedings must be instituted either in the jurisdiction in which the
registrar is located, provided that the registrant contractually submitted to
46. UDRP Policy Paragraph 4(d).

47. UDRP Policy Paragraph 4(f) and see Fulham Football Club (1987) Limited et al. v. Domains
by Proxy Inc. WIPO case no. D2009-0331.
48. UDRP Policy Paragraph 4(g).
49. UDRP Policy Paragraph 4(I) and see Canadian Tire Corporation, Limited v. Digi Real Estate
Foundation, WIPO case no. D2006-117 concerning the transfer of a co-branded trademark
but see Toronto-Dominion Bank v. TM Watchdog, (2005) 47 C.P.R. (4th) 171 (C.I.R.A.) where
cancellation was ordered in similar circumstances.
50. UDRP Policy Paragraph 4(k).
51. UDRP Policy Paragraph 4(k).
The CDRP 173
jurisdiction there, or the location of the registrant as shown in the registrars

WHOIS database.52
While most arbitrations are not precedent-based, UDRP decisions typically cite other UDRP decisions. Panels consider it desirable that their decisions be consistent with prior panel decisions dealing with similar fact
situations.53 However, there are a multitude of decisions and no appeals.
5. The CDRP
a) History
CIRA has developed and adopted its own domain name dispute resolution
policy, the CIRA Domain Name Dispute Resolution Policy (CDRP).54 While
the CDRP appears to be have been modeled after the UDRP policy, there are
differences between the two.
Paragraph 3.1 of the CDRP provides that a registrant must submit to a proceeding if a complainant asserts in a complaint submitted in compliance with
the policy and the resolution rules that
(a) the registrants dot-ca domain name is Confusingly Similar to a Mark
in which the complainant had Rights prior to the date of registration
of the domain name and continues to have such Rights;
(b) the registrant has no legitimate interest in the domain name as
described in CDRP; and
(c) the registrant has registered the domain name in bad faith as described
in the CDRP.
The complainant must establish elements a) and c) on a balance of probabilities and provide some evidence that the registrant has no legitimate interest
52. See Black v. Molson Canada (2002), 21 C.P.R. (4th) 52 (Ont. S.C.J.) where the UDRP decision
was reviewed on the basis of correctness but compare with Pankajkumar Patel v. Allos Therapeutics Inc. an unreported decision of the UK High Court of Justice, Chancery Division,
dated June 13, 2008 where the Court refused to intervene unless the complainant could show
a cause of action relating to the domain name ordered to be transferred.
54. Online at http://www.cira.ca/en/cat-dpr-policy.html.
174
in the domain name.55 The complainant must also satisfy the Canadian presence requirements or the proceedings must relate to a trademark registered
in Canada.56
If the trademark is registered before the domain name, the complainant
need not demonstrate distinctiveness or use to establish rights.57 In all other
cases, the mark or business name must have been used prior to registration of
the impugned domain name and proof of such use must be submitted.58
The terms Confusingly Similar, Mark,59 and Rights are defined in CDRP
in a detailed fashion.
A domain name is confusingly similar to a mark if the domain name so
nearly resembles the mark in appearance, sound, or the ideas suggested by
the mark as to likely to be mistaken for the mark.60 Like decisions decided
under the UDRP, the addition of a non-distinctive prefix, suffix or generic
term, such as e to designate electronic, will receive little weight.61 The
suffix ca is not considered in the determination.62
By analogy an approach similar to that applied under section 9 of the
Trade-marks Act has been adopted in the majority of cases.63 Under this section, courts consider whether a person, on first impression having only an
imperfect recollection of the official mark, would likely be confused by the
impugned mark.64
55. See CDRP paragraph 4.1.

56. See CDRP paragraph 1.4. See Six Continents Hotels, Inc. v. Virgin Enterprises Ltd. (2005), 42
C.P.R. (4th) 364 (C.I.R.A.).
57. 911979 Alberta Inc. v. Morin (2006), 51 C.P.R. (4th) 128 (C.I.R.A.).
58. See Cheap Tickets & Travel Inc. v. Emall.ca Inc. (2003), 25 C.P.R. (4th) 105 (C.I.R.A.); Globe
Media International Corp. v. Dawn Internet Telephony Systems Inc, (2006), 53 C.P.R. (4th) 258
(C.I.R.A.); Government of Canada v. Bedford (2003), 27 C.P.R. (4th) S.C.C. (C.I.R.A.). An attack
directed at the legitimacy of an assignment of a trademark was not considered since the resolution of the attack required consideration by a forum capable of receiving evidence and assessing issues of creditability. Clover Gift. Inc. v. Morrison (2005), 43 C.P.R. (4th) 380 (C.I.R.A.).
59. See Wrigley Canada Inc. v. Brain Wave Holdings Inc. (2006), 52 C.P.R. (4th) 124 (C.I.R.A.)
licensee of an unregistered mark entitled to rely on the claim of a predecessor in title to the
complainants licensor.
61. See Canadian Broadcasting Corp. v. Quon (2003), 25 C.P.R. (4th) 591 (C.I.R.A.).
63. Government of Canada v. Bedford (2003), 27 C.P.R. (4th) 522 (C.I.R.A.); Canadian Thermos
Products Inc. v. Fagundes (2006), 50 C.P.R. (4th) 296 (C.I.R.A.); Choice Hotels International,
Inc. v. Cox (2006), 54 C.P.R. (4th) 222 (C.I.R.A.).
64. Big Sisters Assn. v. Big Brothers of Canada (1996), 75 C.P.R. (3rd) 177 (F.C.T.D.); Canadian
Olympic Association v. Technique Ltd. (1999), 3 C.P.R. (4th) 298 (F.C.A.); Glaxo Group
The CDRP 175
Some panels have concluded that the registrants domain was not confusingly similar when the claimants trademark was made up of a word which
was descriptive and generic in nature.65
The complainant must provide some evidence that the registrant has no legitimate interest in the domain name as described in paragraph 3.6 of the
CDRP.66 The registrants legitimate interest can trump the complaints right
to seek a transfer.67
Paragraph 3.6 sets out an exhaustive list of criteria for the determination.
It is as follows
The Registrant has a legitimate interest in a domain name if, and only if, before
the receipt by the Registrant of notice from or on behalf of the Complainant,
that a Complaint was submitted:
(a) the domain name was a Mark, the Registrant used the Mark in good faith
and the Registrant had Rights in the Mark;
(b) the Registrant used the domain name in Canada in good faith in association with any wares, services, or business and the domain name was clearly
descriptive in Canada in the English or French language of: (i) the character
or quality of the wares, services, or business; (ii) the conditions of, or the
persons employed in, production of the wares, performance of the services,
or operation of the business; or (iii) the place of origin of the wares, services,
or business;
(c) the Registrant used the domain name in Canada in good faith in association
with any wares, services, or business and the domain name was understood
in Canada to be the generic name thereof in any language;
(d) the Registrant used the domain name in Canada in good faith in association with a non-commercial activity including, without limitation, criticism, review, or news reporting;
(e) the domain name comprised the legal name of the Registrant or was a
name, surname, or other reference by which the Registrant was commonly
identified; or
(f) the domain name was the geographical name of the location of the
Registrants non-commercial activity or place of business.
Limited v. Defining Presence Marketing Group (Manitoba) (2004), 35 C.P.R. (4th) 528,
BCICAC case no. 0020 (CIRA).
65. Air Products Canada Ltd. v. Index Quebec Inc. (2003), 30 C.P.R. (4th) 212 (C.I.R.A.); Thrifty,
Inc. v. Malaker (2006), 50 C.P.R. (4th) 459 (C.I.R.A.).
66. See Diners Club International Ltd. v. Planet Explorer Inc. (2004), 32 C.P.R. (4th) 377
(C.I.R.A.).
67. See Diners Club International Ltd. v. Planet Explorer Inc. (2004), 32 C.P.R. (4th) 377
(C.I.R.A.).
176

In paragraphs 3.6 (b), (c), and (d), use by the Registrants includes, but is
not limited to, use to identify a web site.
As noted above, the paragraph expressly deals with good faith use of domains
names which are descriptive, generic, or a name or surname, or use with a
non-commercial activity including, without limitation, criticism, review, or
news reporting.
e) Bad Faith
Bad Faith is restrictively defined and is narrower than the enumerated factors of the UDRP. Paragraph 3.7 of the CDRP is as follows.
For the purposes of paragraph 3.1(c), a Registrant will be considered to have
registered a domain name in bad faith if, and only if:
(a) the Registrant registered the domain name, or acquired the Registration, primarily for the purpose of selling, renting, licensing, or otherwise transferring
the Registration to the Complainant, or the Complainants licensor or
licensee of the Mark, or to a competitor of the Complainant or the licensee
or licensor for valuable consideration in excess of the Registrants actual costs
in registering the domain name, or acquiring the Registration;68
(b) the Registrant registered the domain name or acquired the Registration in
order to prevent the Complainant, or the Complainants licensor or licensee
of the Mark, from registering the Mark as a domain name, provided that the
Registrant, alone or in concert with one or more additional persons, has
engaged in a pattern of registering domain names in order to prevent persons who have Rights in Marks from registering the Marks as domain
names;69 or
(c) the Registrant registered the domain name or acquired the Registration primarily for the purpose of disrupting the business of the Complainant, or the
Complainants licensor or licensee of the Mark, who is a competitor of the
Registrant.
Paragraph 3.7(c) requires a finding of bad faith if the registration of the

domain name was primarily for the purposes of disrupting the business of the
Complainant, who is a competitor of the Registrant. To date, panelists have
68. See for example Canadian Broadcasting Corp. v. Quon (2003), 25 C.P.R. (4th) 519
(C.I.R.A.).
69. Viacom International Inc. v. Harvey Ross Enterprises, Ltd. (2003), 29 C.P.R (4th) 243 (C.I.R.A.);
Canadian Broadcasting Corp. v. Quon (2003), 25 C.P.R. (4th) 519 (C.I.R.A.).
The CDRP 177
been unable to agree on the appropriate interpretation of the word

competitor.70
Showing actual bad faith by positive evidence can be quite difficult, particularly given the limited scope of the inquiry in CDRP proceedings. As a
result, panels typically take into consideration all of the surrounding circumstances and draw inferences to determine whether bad faith has been
shown.71
f) Procedure
Three panelists must be appointed unless the respondent defaults in which
case only one panelist is required. The procedures and remedies available are
roughly similar to those under the UDRP.

Under this policy, the personal information of individual domain name registrants, including registrant name, home address, phone number, and e-mail
address, is automatically protected as private. Full registration information
for corporate domain name holders is accessible and individual registrants
may choose to make their information accessible.
Under specific, limited circumstances certain registrant contact information may be disclosed in situations arising from child endangerment offenses,
intellectual property disputes (e.g., cybersquatting), threats to the Internet,
and identity theft.
In CDRP proceedings where the Registrants identity is not published in
the public WHOIS database, the Complainant has a right to make a further
70. See Canadian Thermos Products Inc. v. Fagundes (2006), 50 C.P.R. (4th) 296 (C.I.R.A.) but
see Microsoft Corp. v. Microscience Corp. (2005), 41 C.P.R. (4th) 565 (C.I.R.A.), Thrifty, Inc. v.
Malaker (2006), 50 C.P.R. (4th) 459 (C.I.R.A.) and Choice Hotels International, Inc. v. Cox,
(2006), 54 C.P.R. (4th) 222 (C.I.R.A.) where a respondent who earned fees by directing Internet users to the websites of direct competitors of the complainant was found be a competitor
as well, but see Internet Movie Database, Inc. v. 384128 Canada Inc., (2005), 46 C.P.R. (4th)
223 (C.I.R.A.).
71. Canadian Broadcasting Corp. v. Quon (2003), 25 C.P.R. (4th) 519 (CIRA); Google Inc. v.
Fraser (2005), 42 C.P.R. (4th) 560 (C.I.R.A.); The Co-operators Group Ltd. v. Artbravo Inc,
(2006), 47 C.P.R. (4th) 460 (C.I.R.A.); Caseware International Inc. v. Lee (2006), 51 C.P.R.
(4th) 231 (C.I.R.A.); Honest Eds Limited v. Imbrogno (2006), 58 C.P.R. (4th) 168 (C.I.R.A.);
Abelsoft Corp. v. Fish (2008), 65 C.P.R. (4th) 174 (C.I.R.A.), but not all cases see Microsoft
Corporation v. Microscience Corporation, unreported decision dated July 19, 2005 (C.I.R.A.).
submission to the Panel, including adducing further evidence, limited to the issue
of the Registrants legitimate interest (or lack thereof ) in a domain name.72

Actions brought in the courts have been successful in enjoining activities that
would be covered by the UDRP or CDRP. For example, where a defendant
systematically registered domain names containing the brand names of wellknown companies, presumably with the intention of selling them back to the
brand owners, an action for passing off succeeded.73
But proceedings in the courts do not include all cases covered by the UDRP
or CDRP. For example, to successfully assert a claim for trademark infringement, the plaintiff must show trademark use by the defendant.74 Such use
is frequently not present in a case involving cybersquatting. In addition,
a claim for passing off is likely restricted to well known trademarks.
Finally, there is no Canadian equivalent of the U.S. Anticybersquatting
Consumer Protection Act.
72. Paragraph 11.1 CIRA Domain Name Dispute Resolution Rules.

73. British Telecom plc v. One In A Million [1998] 4 All E.R. 476 (U.K.C.A.) and see Saskatoon
Star Phoenix Group Inc. v. Noton (2001), 12 C.P.R. (4th) 4 (Sask. Q. B.); Law Society of British
Columbia v. Canadian Domain Name Exchange Corp. (2002), 22 C.P.R. (4th) 88 (B.C. S.C.);
Rolls-Royce plc v. Fitzwilliam (2002), 19 C.P.R. (4th) 1 (F.C.T.D.); United Food and Commercial Workers International Union v. Sharyn Sigurdur 2005 BCSC 1904 (B.C.S.C.); D.& A.s Pet
FoodN More Ltd. v. Seiveright, 2006, 48 C.P.R. (4th) 282 (F.C.); Inform Cycle Ltd. v. Rebound
Inc., 2006 ABQB 825 (Alberta Q.B, Master), appeal dismissed 2007 ABQB 319 (Alberta Q.B.)
concerning vicarious liability in this context and 67 C.P.R. (4th) 151 (Alberta Q.B.) for assessment of damages.
74. See Chapter 13.
CHAP T ER
17
Copyright: Basic Concepts
1. Introduction
180
a) Acquisition
180
b) Originality
181
c) Fixation
182
d) Compilations
183
e) Derivative Works
183
179
180 Chapter 17 Copyright: Basic Concepts
1. Introduction
Under the Copyright Act1 there are a number of basic concepts which apply
to all types of protected works. For convenience of reference they will be discussed in this chapter.
a) Acquisition
Copyright protection in Canada does not depend on registration or other
formal steps2 but subsists automatically without any act other than the creation of an original work that satisfies the points of attachment or conditions
set out in the Act. Registration is permissive but helpful if it is likely an action
will be brought for infringement.3
Copyright protection extends to authors of works who are Canadian
nationals as well as to the nationals of other countries. As a party to the Berne
Convention, the Agreement establishing the World Trade Organization
(WTO) and the Agreement on Trade-Related Aspects of Intellectual Property
Rights, including trade in Counterfeit Goods (TRIPS), which was annexed to
the Agreement establishing the WTO, Canada is bound to give protection to
the nationals of other countries.
Copyright subsists in Canada, in every original literary, dramatic, musical,
and artistic work if any one of the following conditions is met:
(a) in the case of any work, whether published or unpublished, including
a cinematographic work, the author was, at the date of the making of
the work, a citizen or subject of, or a person ordinarily resident in, a
treaty country;4
(b) in the case of a cinematographic work, whether published or unpublished, the maker, at the date of the making of the cinematographic
work,
(i) if a corporation, had its headquarters in a treaty country, or
(ii) if a natural person, was a citizen or subject of, or a person ordinarily resident in, a treaty country; or
(c) in the case of a published work, including a cinematographic work,
(i) in relation to making copies available to the public, the first publication in such a quantity as to satisfy the reasonable demands of
1.
2.
3.
4.
See R.S.C. 1985, c. C-42 as amended; section 5.

Gribble v. Manitoba Free Press Ltd. [1932] 1 D.L.R. 169, [1931] 3 W.W.R. 570 (Man. C.A.).
See Chapter 26.
The definition of treaty country in section 2 of the Copyright Act includes countries which are
a party to the Berne Convention or a WTO Member.
Introduction
the public, having regard to the nature of the work, occurred in a

treaty country, or
(ii) in relation to the construction of an architectural work or the
incorporation of an artistic work into an architectural work, the
first publication occurred in a treaty country.5
The first publication described above is deemed to have occurred in a treaty
country notwithstanding that it occurred previously elsewhere, if the interval
between those two publications did not exceed 30 days.6 Under the Act publication is defined to mean in relation to works, the making of copies of the
work available to the public, among other things.7
b) Originality
Copyright subsists only in original works. The originality required by the Act
relates to the expression of thought in which the work is presented, however,
a work does not have to be creative in the sense of being novel or unique.
What is required to attract copyright protection in the expression of an idea
is an exercise of skill and judgment. Skill in this context means the use of an
individuals knowledge, developed aptitude, or practiced ability in producing
the work. Judgment means the use of ones capacity for discernment or ability to form an opinion or an evaluation by comparing different possible
options in producing the work. The exercise of skill and judgment will necessarily involve intellectual effort.8
Such an exercise must not be so trivial that it could be characterized as a
purely mechanical exercise. The skill and judgment involved in simply changing the font of a work to produce another work would be too trivial to merit
copyright protection as original work.9 Similarly, a work which is a slavish
copy of an earlier work will not be entitled to copyright as it is not original.10
However, a work which is substantially derived from pre-existing material
may be the proper subject-matter of copyright if sufficient skill and judgment
have been exercised.11
5.
6.
7.
8.
Section 5. This subsection applies after September 1, 1997.

Subsection 5(1.1). This subsection applies after September 1, 1997.
Section 2.2.
The Law Society of Upper Canada v. CCH Canadian Limited (2004), 30 C.P.R. (4th) 1 (S.C.C.).
This case changed the requirements for originality and previously decided cases must be read
subject to it.
9. The Law Society of Upper Canada v. CCH Canadian Limited (2004), 30 C.P.R. (4th) 1 (S.C.C.).
10. University of London Press v. University Tutorial Press, [1916] 2 Ch. 601; Ladbroke (Football)
Ltd. v. William Hill (Football) Ltd. [1964] 1 All E.R. 465 (H.L.).
11. Interlego A.G. v. Tyco Industries Plc. [1989] A.C. 217 (P.C.).
181
182
Chapter 17 Copyright: Basic Concepts
The amount of skill and judgment required cannot be defined in precise

terms and each case must be decided on its own facts.12 In addition, the type
of work in issue may influence the determination; for example, a photograph
is typically considered in different terms than other works.13
While the owner of copyright in the protected work is entitled to the specific rights set out in the Act, they are not entitled to a monopoly. Another
person may produce the same work so long as they do so independently and
their work is original in the sense in which that word is used in the Act.14
Copyright does not extend to schemes, systems, or methods,15 since copyright is confined to the expression of ideas.16 It is not an infringement of
copyright to use the ideas of another or to publish information derived from
another, as long as there is no copying of the expression in which the ideas or
the information have previously been presented.17 However, such actions
may be in breach of another obligation such as a breach of confidence, etc.
c) Fixation
To be entitled to copyright, a work must be expressed in material form, capable of identification, and have a character of reasonable substance or permanence.18 For example, a persons oral statements in an interview or
conversation are not typically recognized in that form as literary creations
and do not attract copyright protection.19
12. Interlego A.G. v. Tyco Industries Plc. [1989] A.C. 217 (P.C.).
13. Viceroy Homes Ltd. v. Ventry Homes Inc. (1991), 34 C.P.R. (3d) 385 (Ont.Ct.)(Gen. Div.),
(1996), 69 C.P.R. (3d) 459 (Ont. C.A.).
14. Ladbroke (Football) Ltd. v. William Hill (Football) Ltd. [1964] 1 All. E.R. 465 (H.L.).
15. Canadian Admiral Corporation Ltd. v. Rediffusion Inc. et al. [1954] Ex. C.R. 382, 20 C.P.R. 75
(Ex. Ct.).
16. Commercial Signs v. General Motors Products of Canada Ltd. et al. [1937] O.W.N. 58 (H.C.J.),
[1937] 2 D.L.R. 310, aff d [1937] 2 D.L.R. 800 (Ont.C.A.); Moreau v. St. Vincent, [1950] Ex.
C.R. 198, 12 C.P.R. 32, [1950] 3 D.L.R. 713; Stevens v. Robert Simpson Co. Ltd. et al. (1964),
41 C.P.R. 204 (Ont. C.A.).
17. Deeks v. Wells [1931] O.R. 818 (Ont. H.C.), [1931] 4 D.L.R. 533, [1933] 1 D.L.R. 353
(Ont.C.A.).
18. Canadian Admiral Corporation Ltd. v. Rediffusion Inc. et al. [1954] Ex. C.R. 382, 20 C.P.R.
75.
19. Gould Estate et al. v. Stoddart Publishing Co. Ltd. (1996), 74 C.P.R. (3d) 206 (Ont. Gen. Div.)
affirmed (1998), 80 C.P.R. (3d) 161 (Ont. C.A.).
Introduction
d) Compilations
The Act provides that a compilation means
a) a work resulting from the selection or arrangement of literary, dramatic,
musical, or artistic works or parts thereof, or
b) a work resulting from the selection or arrangement of data.20
A compilation containing two or more of the categories of literary, dramatic,
musical, or artistic works is deemed to be a compilation of the category
making up the most substantial part of the compilation.21 The mere fact that
a work is included in a compilation does not increase, decrease, or otherwise
affect the protection conferred by the Act in respect of the copyright in the
work or the moral rights in respect of the work.22
Copyright protects originality of form or expression. A compilation takes
existing material and casts it in a different form. The arranger may not have
copyright in the individual components. A part of the compilation by itself may
be entitled to copyright while other parts of the work are not. However, the
arranger may have copyright in the form represented by the compilation. It is
not the several components that are the subject of the copyright, but the over-all
arrangement of them, which the plaintiff through his industry has produced.23
e) Derivative Works
The Act does not refer expressly to derivative works, but a work that is derived
from pre-existing material may be protected by copyright if sufficient skill
and judgment has been directed to its creation.24
The owner of copyright is entitled to the rights set out in the Act which
include the right to make works derived from the owners work. If another
individual wishes to make a derivative work, they will require the consent
of the owner to do so, unless the work is in the public domain. For example,
the owner of copyright in a literary work is entitled to produce and publish a
translation of the work. While a separate copyright may subsist in the translation, if sufficient skill and judgment has been exercised, in the absence of
consent, the derivative translation will infringe the rights of the author of
the original literary work.
20.
21.
22.
23.
Section 2.
Subsection 2.1(1).
Subsection 2.1(2).
The Law Society of Upper Canada v. CCH Canadian Limited (2004), 30 C.P.R. (4th) 1 (S.C.C.),
Slumber-Magic Adjustable Bed Co. (1984), 3 C.P.R. (3d) 81 (B.C.S.C.).
24. Interlego A.G. v. Tyco Industries Plc., [1989] A.C. 217 (P.C.).
183
CHAP T ER
18
Literary, Dramatic, Musical, and Artistic Works
1. Introduction
186
2. Literary Works
186
186
186
187
3. Dramatic Works
188
188
189
190
4. Musical Works
191
191
191
5. Artistic Works
192
192
193
194
i) Denitions
194
ii) Non-InfringementDesigns of Eye Appealing Features

Applied to Useful Articles
195
iii) Non-InfringementUseful Article Features
197
185
186 Chapter 18 Literary, Dramatic, Musical, and Artistic Works
1. Introduction
Historically, copyright protection was made available to the authors of original literary, dramatic, musical, and artistic works and subsequently extended
to other neighboring rights that border traditional copyright. This chapter
deals with the works subject to traditional copyright protection.
2. Literary Works
The Act provides that a literary work includes tables, computer programs,
and compilations of literary works.1 The use of the word includes and the
categories of works which follow are illustrative and do not exclude the ordinary meaning of the term literary work. The definition covers a wide field
and includes all works that are expressed in print or writing irrespective of
whether their quality or style is high.2
The sole distinguishing characteristic of a literary work is that it is in print
or writing not its quality as literature or art.3 The Act contains no requirements relating to the literary value or merit of a literary work.4
The Act provides that a computer program means a set of instructions or
statements, expressed, fixed, embodied, or stored in any manner, that is to be
used directly or indirectly in a computer in order to bring about a specific
result.5 There are three distinct elements of the definition. First, there must
be a set of instructions or statements. Second, the set of instructions or
statements must be: a) expressed; b) fixed; c) embodied; or d) stored in any
manner. This portion of the definition ensures the protection of programs in
a wide variety of media. Finally, the set of instructions or statements must
be used, directly or indirectly, in a computer in order to bring about a specific
result. Programs consisting of source or object code come within this element
of the definition.
1.
2.
3.
4.
5.
Section 2.
University of London Press v. University Tutorial Press [1916] 2 Ch. 601.
Apple Computer Inc v. Mackintosh Computers Ltd., [1988] 1 F. C. 673 (F.C.A.).
University of London Press v. University Tutorial Press, [1916] 2 Ch. 601.
Section 2.
Literary Works
There are two specific exemptions from what would otherwise constitute
infringement of the copyright in a computer program. First, the making by a
person, who owns a copy of a computer program, which copy is authorized by
the owner of the copyright, of a single reproduction of the copy by adapting,
modifying, or converting the computer program or translating it into another
computer language, if the person proves that the reproduced copy is:
(i) essential for the compatibility of the computer program with a particular computer;
(ii) solely for the persons own use; and
(iii) destroyed immediately after the person ceases to be the owner of the
copy
does not constitute infringement.6
Second, the making by a person, who owns a copy of a computer program,
which copy is authorized by the owner of the copyright, of a single reproduction of the copy or reproduction referred to above for backup purposes does
not constitute infringement, if the person proves that the reproduction is
destroyed immediately when the person ceases to be the owner of the copy of
the computer program.7

Copyright in a literary work means the sole right to:
a) produce or reproduce the work or any substantial part in any material
form whatever,
b) to perform the work or any substantial part in public,
c) if unpublished, to publish the work or any substantial part of it,
and includes the sole right,
d) to produce, reproduce, perform, or publish any translation of the
work,
e) in the case of a novel or other non-dramatic work to convert it into a
dramatic work, by way of performance in public or otherwise,
f) to make any sound recording, cinematograph film or other contrivance
by means of which the work may be mechanically reproduced or
performed,
g) to reproduce, adapt, and publicly present the work as a cinematographic
work,
6. Section 30.6(1).
7. Section 30.6(2).
187
h) to communicate the work to the public by telecommunication,

i) in the case of a computer program that can be reproduced in the ordinary course of its use, other than by a reproduction during its execution
in conjunction with a machine, device or computer, to rent out the
computer program
and to authorize such acts.8
3. Dramatic Works
The Act provides that a dramatic work includes:
(a) any piece for recitation, choreographic work, or mime, the scenic
arrangement or acting form of which is fixed in writing or otherwise,
(b) any cinematographic work, and
(c) any compilation of dramatic works.9
A choreographic work, is defined to include any work of choreography,
whether or not it has any storyline.10
The Act provides that cinematographic work includes any work
expressed by any process analogous to cinematography, whether or not
accompanied by a soundtrack. Section 11.1, which sets out the term of protection for cinematographic works, excludes cinematographic works in which
the arrangement or acting form or the combination of incidents represented
give the work a dramatic character.
Subparagraph a) of the definition set out above includes piece for recitation and mime as being included as dramatic works when their scenic
arrangement or acting form is fixed in writing or otherwise. Apart from this
inclusion the concept of dramatic work is undefined.
The playing of a sporting event such as a football game is not protected by
a dramatic copyright because of the unpredictability of such events and the
lack of certainty.11 However, the television broadcast of the event would be a
cinematographic work which is now included in the definition of dramatic
work.
8.
9.
10.
11.
Section 3.
Section 2.
Section 2.
FWS Joint Sports Claimants v. Copyright Board (1991), 36 C.P.R. (3d) 483 (F.C.A.).
Dramatic Works
Scenic or stage effects may be protected as part of a drama, but only in

exceptional circumstances would they be protected on their own. The Act
grants specific statutory rights and there should be certainty concerning those
rights in order to avoid injustice to the rest of the world.12
The use of made up facial contortions, and comic business and gags consisting of variations introduced into a work by an actor and changed from
time to time without being reduced to any permanent form, are not the subject of copyright.13
A character from a work may be entitled to copyright if the character is
sufficiently clearly delineated in the work which is also subject to copyright
and the character is distinctive14 or perhaps widely known and recognized.15
While the idea of a dramatic work is not protected, the arrangement or
acting form or the combination of incidents represented, if fixed in writing or
some other method, may be protected apart from the language in which they
are expressed.16
As noted above, cinematographic works are included in the definition of a
dramatic work. One of the points of attachment or conditions set out in the
Act relating to the subsistence of copyright in a cinematographic work relates
to the status of the maker.17 Maker means in relation to cinematographic
work, the person by whom the arrangements necessary for the making of the
work are undertaken.18 The maker may be a corporation.19 The concept of a
maker is different from the concept of an author and an assessment using
traditional principles applicable to dramatic works must be made to determine who is the author of a cinematographic work.
The Act defines a sound recording as meaning a recording, fixed in any
material form, consisting of sounds, whether or not of a performance of a
12. Kantel v. Grant, Nisbet & Auld Ltd. [1933] Ex. C.R. 84; Green v. Broadcasting Corp. of N.Z.
[1989] 2 All E.R. 1056 (P.C.)
13. Tate v. Fullbrook, [1908] 1 K.B. 821; Tate v. Thomas, [1921] 1 Ch. 503 (C.A.).
14. Ann of Green Gables Licensing Authority Inc. v. Avonlea Traditions Inc. (2000), 4 C.P.R. (4th)
289 (Ont. S. C. J.).
15. Preston v. 20th Century Fox Canada Ltd. (1990), 33 C.P.R. (3d) 242 (F.C.T.D.) affirmed
(1993), 53 C.P.R. (3d) 407 (F.C.A.).
16. Corelli v. Grey (1913) 29 T.L.R 570 (Ch. D.) aff d 30 T.L.R. 116 (U.K.C.A.), and see Kelly v.
Cinema Houses Ltd. [1932] Macg. Cop. Cas. 362 (U.K.C.A.).
17. Subsection 5(1) of the Act.
18. Section 2 and see Re F.G.(Films) Ltd. [1953] 1 W.L.R. 483 (Ch. D.); Adventure Film Productions Ltd v. Tulley (October 14, 1982), The Times.
19. Paragraph 5(1)(b) of the Act.
189
work, but excludes any soundtrack of a cinematographic work where it

accompanies the cinematographic work.20
A cinematograph film may itself be an original work entitled to copyright.
Frequently, a film will be a derivative work, in that it is derived from an existing literary or dramatic work, however it will still be entitled to copyright
protection even if it infringes copyright in the work it is derived from.
There may be separate and independent copyrights in a dramatic work,
the script for a film adapted from such work, and a cinematographic work
produced from the script.

Copyright in a dramatic work means the sole right to:
form whatever,
and includes the sole right
work,
e) to convert the work into a novel or other non-dramatic work,
f) to make any sound recording, cinematograph film or other contrivance
performed,
work,
h) to communicate the work to the public by telecommunication,
The cinematographic rights set out in item f ) and g) above are separate
from the other applicable rights in the work and may be separately dealt with
and assigned.22
20. Section 2.
21. Section 3.
22. Tate v. Thomas, [1921] 1 Ch. 503.
Musical Works
4. Musical Works
The Act provides that a musical work means any work of music or musical
composition, with or without words, and includes any compilation thereof.
Unlike the definitions of literary work or dramatic work, the definition of
a musical work is exhaustive.
A new arrangement or adaptation of an existing work may be protected by
copyright so long as the new work is sufficiently original. The principles used
to determine whether a compilation of unoriginal material is entitled to protection are applicable.23
The rights of an adapter or arranger may be subordinate to the rights of
the original composer so long as the original composers copyright is still
subsisting.24 This is because the original composer has the sole right to reproduce the work or any substantial part in any material form whatever, which is
likely broad enough to include a new arrangement or adaptation.

Copyright in a musical work means the sole right to
form whatever,
work,
e) to make any sound recording, cinematograph film, or other contrivance
performed,25
work,
23. See Chapter 17, part (b) and The Law Society of Upper Canada v. CCH Canadian Limited
(2004), 30 C.P.R. (4th) 1 (S.C.C.).
24. ZYX Music GmbH v. King [1995] 3 All E.R. 1 (Ch. D.) appeal dismissed [1997] 2 All E.R. 129
(U.K.C.A.).
191
h) to communicate the work by telecommunication, and

i) to rent out a sound recording in which the work is embodied,26
The right to perform a work or any substantial part in public, which is
frequently referred to as the performing right, exists side by side with the
traditional right to make copies of a work. The performing right is limited to
performing the work in public. Anyone may perform a work in private.28
The Act provides that performance means any acoustic or visual representation of the a work, . . . including a representation made by means of any
mechanical instrument, radio receiving set, or television receiving set. The
definition covers any acoustic representation and the fact that it goes on to
add that it includes a representation made by means of any mechanical instrument, etc., does not limit the generality of the word any.29
5. Artistic Works
The Act provides that artistic work includes paintings, drawings, maps,
charts, plans, photographs, engravings, sculptures, and works of artistic
craftsmanship, architectural works, and compilations of artistic works.30
The Act31 also provides that
architectural work means any building or structure or any model of a
building or structure.
engravings includes etchings, lithographs, woodcuts, prints, and other
similar works, not being photographs;
photograph includes a photo-lithograph and any work expressed by any
process analogous to photography;32 and
sculpture includes casts and models.
26.
27.
28.
29.

Section 3.
Mellor v. Australian Broadcasting Commission, [1940] 2 All E.R. 20 (Austr.J.C.P.C.).
Canadian Cable Television Assoc. v. Copyright Board (1993), 46 C.P.R. (3d) 359 (F.C.A.), leave
to appeal to the Supreme Court of Canada refused (1993), 51 C.P.R. (3d) v.
30. Section 2.
31. Section 2.
32. Canadian Admiral Corporation Ltd. v. Rediffusion Inc. et al., [1954] Ex. C.R. 382, 20 C.P.R. 75.
Artistic Works 193
It is a question of fact in any particular case whether the work which is

being considered is a painting.33 The term drawing is very broad and presumably would include any two-dimensional work in which shapes are
depicted by lines.
The term works of artistic craftsmanship unlike other definitions makes
specific reference to the intrinsic quality of the specific type of work. It has
been difficult to give meaning to the words artistic craftsmanship and the
case law is unsettled.34
The phrase artistic work, with the exception works of artistic craftsmanship, is used as a generic description of works which find expression in
a visual medium as opposed to works of literary, musical, or dramatic expression. It is used in the same fashion as literary in the definition of literary
work. As a result, a work can be protected as an artistic work irrespective of
its artistic merit or aesthetic value.35
Copyright in artistic works does not extend to ideas, conceptions or methods, but is confined to their expression in material form.36

Copyright in an artistic work means the sole right to:
a) produce or reproduce the work or any substantial part of the work in
any material form whatever;
b) if unpublished, to publish the work or any substantial part of it;
c) to convert the work into a dramatic work, by way of performance in
public or otherwise;
d) to reproduce, adapt, and publicly present the work as a cinematographic
work;
e) to communicate the work by telecommunication;
33. Merchandising Corporation of America Inc. v. Harpbond Ltd. [1983] F.S.R. 32 (U.K.C.A.);
Mansell v. Star Printing & Publishing Co. of Toronto Ltd., [1937] 3 All E.R. 912, [1937] A.C.
872, [1937] 4 D.L.R. 1. (Ont.- J.C.P.C.)
34. DRG Inc. v. Datafile Ltd.(1987), 18 C.P.R. (3d) 538 (F.C.T.D.), (1991), 35 C.P.R. (3d) 243
(F.C.A.); Eldon Industries Inc. et al. v. Reliable Toy Co. Ltd. et al. [1966] 1 O.R. 409, 54 D.L.R.
(2d) 97 (Ont. H.C.J.).
35. DRG Inc. v. Datafile Ltd. (1987), 18 C.P.R. (3d) 538 (F.C.T.D.), (1991), 35 C.P.R. (3d) 243
(F.C.A.).
36. Kenrick & Co. v. Lawrence & Co. (1890), 5 Q.B. 99 (Q.B.D.); Canadian Admiral Corporation
Ltd. v. Rediffusion Inc. [1954] Ex. C.R. 382, 20 C.P.R. 75.
f) to present at a public exhibition, for a purpose other than sale or hire, a

work created after June 7, 1988, other than a map, chart, or plan,

The Industrial Design Act provides that design means features of shape,
configuration, pattern, or ornament and any combination of those features
that, in a finished article, appeal to and are judged solely by the eye.38 It is well
established that to be entitled to registration, a design must be original and
there must be some substantial difference between the new design and preexisting designs. The protection available under the Industrial Design Act is
for a maximum of 10 years,39 which is significantly shorter than that available
for copyright.
The boundary between copyright and industrial design protection has
been difficult to determine for artistic works. Sections 64 and 64.1 of the
Act attempt to determine the boundary. Subsections 64(2) and 64(3) apply
only to designs created after June 8, 1988.40
i) Denitions
Subsection 64(1) of the Act contains the following definitions which apply to
sections 64 and 64.1:
article means anything that is made by hand, tool, or machine;
design means features of shape, configuration, pattern, or ornament and
any combination of those features that, in a finished article, appeal to
and are judged solely by the eye;
useful article means an article that has a utilitarian function and includes
a model of any such article;
utilitarian function, in respect of an article, means a function other than
merely serving as a substrate or carrier for artistic or literary matter.41
37.
38.
39.
40.
Section 3.
Industrial Design Act, R.S.C. 1985, c. I-9, section.2 and see Chapter 33.
See Chapter 33.
Subsection 64(4) of the current Act provides that the Copyright Act, R.S.C. 1985, c. C-42 and
the Industrial Design Act, R.S.C. 1985, c. I-9, as they read immediately before June 8, 1988,
as well as the rules made under them, continue to apply in respect of designs created before
that date.
Artistic Works 195
Similar definitions are contained in the Industrial Design Act.42

Under section 64 the concept of a design is applicable only to finished
articles which are useful, and the section does not apply to works such as
sculptures. The words in a finished article in the definition of design contained in section 64 only mean in a physical embodiment, as opposed to a
mere scheme or preliminary conception of an idea.43
Sections 64 and 64.1 only apply to useful articles which are defined to
mean articles, including models, which have a utilitarian function, that is a
function other than merely serving as a substrate or carrier for artistic or literary matter. An article such as a poster does not come within the sections.
ii) Non-Infringement Designs of Eye Appealing Features Applied
to Useful Articles
Subsection 64(2) provides that where copyright subsists in a design applied to
a useful article, or in an artistic work from which the design is derived and, by
or under the authority of the person who owns the copyright in Canada or
elsewhere:
a) the article is reproduced in a quantity of more than fifty; or
b) where the article is a plate,44 engraving, or cast, the article is used for
producing more than fifty useful articles,
it is not an infringement of the copyright or the moral rights for anyone
c) to reproduce the design of the article or a design not differing substantially from the design of the article by:
(i) making the article; or
(ii) making a drawing or other reproduction in any material form of
the article; or
d) to do with an article, drawing or reproduction that is made as described
in paragraph (c) anything that the owner of the copyright has the sole
right to do with the design or artistic work in which the copyright
subsists.45
42. S.C. 1988, c. 15, s. 18, 19.

43. Milliken & Company et al. v. Interface Flooring Systems (Canada) Inc. (1998), 83 C.P.R. (3d)
470 (F.C.T.D.), affirmed (2000) 5 C.P.R. (4th) 209 (F.C.A.).
44. Section 2 of the Act provides that plate includes (a) any stereotype or other plate, stone,
block, mould, matrix, transfer, or negative used or intended to be used for printing or reproducing copies of any work, and (b) any matrix or other appliance used or intended to be used
for making or reproducing sound recordings, performers performances or communication
signals.
Subsection 64(2) restricts protection for eye-appealing features of useful

articles since it provides that actions which would otherwise constitute
infringement are not actionable.46 The limitation applies only to useful articles which have a utilitarian function, that is a function other than merely
serving as a substrate or carrier for artistic or literary matter.47 The section
does not preclude protection under the Industrial Design Act.
The section expressly applies to an artistic work from which the design is
derived. If a drawing or plan portrays the design, the section will apply to a
design derived from that work. Since a model of a useful article is included in
the definition of useful article, a similar result would apply to a design of a
model.
If it is shown that the events set out in either paragraphs 64(2)(a) or 64(2)(b)
have occurred, paragraphs 64(2)(c) and 64(2)(d) apply. A defendant may
reproduce the design of the article or a design not differing substantially from
the design of the article by making the article, or making a drawing or other
reproduction in any material form of the article, or otherwise doing anything
that the owner of the copyright has the sole right to do. If the events set out in
paragraphs 64(2)(a) or 64(2)(b) have not occurred, the copyright in the work
is unaffected. The burden of proof in an action pleading that the subsection
applies will be on the defendant. The intentions of the owner of the copyright
are not relevant in determining whether the above described paragraphs
apply.
Subsection 64(2) does not apply in respect of copyright in an artistic work
in so far as the work is used as and for:
a) a graphic or photographic representation that is applied to the face of an
article;
b) a trademark or a representation thereof or a label;48
c) material that has a woven or knitted pattern or that is suitable for piece
goods or surface coverings or for making wearing apparel;49
d) an architectural work that is a building or a model of a building;
e) a representation of a real or fictitious being, event, or place that is
applied to an article as a feature of shape, configuration, pattern, or
ornament;
f) articles that are sold as a set, unless more than fifty sets are made; or
g) such other work or article as may be prescribed by regulation.50
46. The subsection does not effect the subsistence of copyright, Magasins Greenberg Lte v.
Imports-Export Ren Derby (Canada) Inc. (1995), 61 C.P.R. (3d) 133 (F.C.T.D.).
47. Pyrrha Design Inc. v. 623735 Saskatchewan Ltd (2004), 30 C.P.R. (4th) 310 (F.C.), 2004 FCA
423 (F.C.A.).
48. Specialty Sprts Ltd. v. Kimpex International Inc. (1997) 72 C.P.R. (3d) 538 (F.C.T.D.).
49. Crocs Canada Inc. v. Holey Sales Holdings Ltd. 2008 FC 188 (F.C.).
Artistic Works 197
iii) Non-InfringementUseful Article Features

Section 64.1 provides that the following acts do not constitute infringement
of the copyright or moral rights in a work:
a) applying to a useful article features that are dictated solely by a utilitarian function of the article;
b) by reference solely to a useful article, making a drawing or other reproduction in any material form of any features that are dictated solely by a
utilitarian function of the article;
c) doing with a useful article having features described in paragraph (a),
or with a drawing or reproduction made as described in paragraph (b),
anything that the owner of the copyright has the sole right to do with
the work; and
d) using any method or principle of manufacture or construction.51
Section 64.1 deals with the application to a useful article of features which are
dictated solely by a utilitarian function of the article. The application to a
useful article of features which are dictated solely by a utilitarian function of
the article does not constitute infringement of the copyright or moral rights
in the work from which they are copied.52 The process of reverse engineering
from a useful article to create a drawing or other reproduction, in any material form, of any features that are dictated solely by a utilitarian function of
the article, does not constitute infringement.53
Section 64.1 does not affect copyright or moral rights in a record, perforated roll, cinematograph film, or other contrivance by means of which a
work may be mechanically reproduced, performed, or delivered.54
51.
52.
53.
54.
Subsection 64.1(1).
Paragraph 64.1(1)(a).
Paragraph 64.1(1)(b).
Subsection 64.1(2).
CHAP T ER
19
Neighboring Rights
1. Introduction
200
200
200
201
(i) Rights Associated with a Performers Performance
201
(ii) Contracting Out
203
(iii) Points of Attachment
203
204
204
(i) Entitlement
204
(ii) The Points of Attachment
205
(iii) The Amount of the Royalty
206
(iv) Performers Rights and Rights under Part I of the Act
206
3. Sound Recordings
206
206
b) The Rights Associated with a Sound Recording
207
209
4. Broadcasters Communication Signal
209
209

209
199
200 Chapter 19 Neighboring Rights
1. Introduction
Before 1994, a performers performance was not protected, presumably due
to the ephemeral nature of a performance. With the use of sound recordings
and broadcasting, performances could be fixed and reproduced for distribution to the public. As a result, it was agreed internationally that they should
be protected. These rights are referred to as neighboring rights since the
rights conferred are close to or neighbor traditional copyright.
Protection of neighboring rights goes side by side with the protection of
authors. Neighboring rights are nearly always derivative because they are
dependent upon a pre-existing work.
Canadas adoption of the Agreement on Trade-Related Aspects of
Intellectual Property Rights (TRIPS), obligated Canada to legislate to provide standards of protection for performers, producers of sound recordings,
and broadcasting organizations consistent with the Rome Convention, 1961.
As a result, the Copyright Act was amended.
The rights granted to performers, producers of sound recordings, and
broadcasting organizations, although different from those available to an
author under section 3, are included in the definition of copyright in the
Act. As a result, the general provisions of the Act, such as those dealing with
infringement, are applicable to these rights.
The Copyright Act contains the following definitions of performance and
performers performance1
performance means any acoustic or visual representation of a work, performers performance, sound recording, or communication signal, including a
representation made by means of any mechanical instrument, radio receiving set, or television receiving set.
performers performance means any of the following when done by a
performer:
(a) a performance of an artistic work, dramatic work or musical work,
whether or not the work was previously fixed in any material form, and
whether or not the works term of copyright protection under this Act
has expired,
1. Section 2.
Performers Rights
(b) a recitation or reading of a literary work, whether or not the works term
of copyright protection under this Act has expired, or
(c) an improvisation of a dramatic work, musical work, or literary work,
whether or not the improvised work is based on a pre-existing work.
The definition is restricted and is linked to artistic, dramatic, musical, or

literary works and is limited to individuals who perform such works. As a
result, the performers of variety and circus acts2 or athletes participating in
sporting events will not be protected.3
The word performer is not defined in the Act, but presumably is the
individual who gave the performance. If a performance is given by more than
one performer, each individual involved in giving the performance is entitled
to the rights provided under the relevant sections of the Act.4

The Act provides that Rome Convention country means a country that is a
party to the International Convention for the Protection of Performers,
Producers of Phonograms, and Broadcasting Organisations, done at Rome
on October 26, 1961.5 The United States of America is not currently a member
of the Rome Convention.
(i) Rights Associated with a Performers Performance
Section 15 of the Act provides that, subject to the existence of specific points
of attachment or connecting factors, a performer has a copyright in a
performers performance consisting of the sole right to do the following in
relation to the performers performance or any substantial part thereof:
(a) if it is not fixed,
(i) to communicate it to the public by telecommunication,
(ii) to perform it in public, where it is communicated to the public by
telecommunication otherwise than by communication signal,
and
(iii) to fix it in any material form,
2. If the act was protected as a choreographic work the result would be different.
3. See Guide to the Rome Convention (Geneva: WIPO, 1981).
4. Experience Hendrix LLC v. Purple Haze Records Ltd. [2005] EWHC 249 (U.K.Ch.), appeal
dismissed [2007] EWCA Civ 501 (U.K.C.A.).
5. Section 2.
201
(b) if it is fixed,
(i) to reproduce any fixation that was made without the performers
authorization,
(ii) where the performer authorized a fixation, to reproduce any
reproduction of that fixation, if the reproduction being reproduced was made for a purpose other than that for which the performers authorization was given, and
(iii) where a fixation was permitted under one of the exceptions to
infringement, or for private use, to reproduce any reproduction
of that fixation, if the reproduction being reproduced was made
for a purpose other than one permitted under the exceptions to
infringement or for private use , and
(c) to rent out a sound recording of it,
and to authorize any such acts.6
The right to communicate the performers performance to the public by
telecommunication is not limited to communications taking place at the time
of the performers performance.7
The right to perform performers performance in public only applies
where it is communicated to the public by telecommunication8 otherwise
than by communication signal.9 Presumably this means the right is limited
to transmission by wire or the like such as through a cable television system
or the like.
The right to fix the performers performance is not limited and the performance can be fixed in any material form.
A performer is not entitled to the sole right to reproduce the fixation of the
performers performance since the copyright owner in the underlying work
is already entitled to the sole right to make a sound recording of the work
pursuant to subsection 3(1)(d). However, the performer has rights with
respect to sound recordings or other fixations which were not authorized by
the performer, or which exceed the authorization given or go beyond the
exceptions contained in the Act.
The right to rent out a sound recording of the performers performance
exists concurrently with the rental right available to the maker of a sound
recording.10
6. Section 15 in force September 1, 1997

7. See sections 2.3 and 2.4 and subsection 3(1)(f) and (1.1).
8. Section 2 provides that Telecommunication means any transmission of signs, signals,
writing, images, or sounds or intelligence of any nature by wire, radio, visual, optical, or other
electromagnetic system.
9. Section 2 provides that communication signal means radio waves transmitted through
space without any artificial guide for reception to the public.
10. See part 3 of this chapter.
Performers Rights
(ii) Contracting Out

Nothing in section 15 prevents the performer from entering into a contract
governing the use of the performers performance for the purpose of broadcasting, fixation, or retransmission.11
Where a performer authorizes the embodiment of the performers performance in a cinematographic work, the performer may no longer exercise, in
relation to that performers performance, the copyright referred to in subsection 15(1).12
(iii) Points of Attachment
The rights available relating to a performers performance under section 15
subsist only if prescribed points of attachment are satisfied. The rights will
only be available if the performers performance:
(a) takes place in Canada or in a Rome Convention country;
(b) is fixed in
(i) a sound recording whose maker, at the time of the first fixation,
(A) if a natural person was a Canadian citizen or permanent resident of Canada within the meaning of the Immigration and
Refugee Protection Act, or a citizen or permanent resident of a
Rome Convention country, or
(B) if a corporation, had its headquarters in Canada or in a Rome
Convention country, or
(ii) a sound recording whose first publication in such a quantity as to
satisfy the reasonable demands of the public occurred in Canada
or in a Rome Convention country; or
(c) is transmitted at the time of the performers performance by a communication signal broadcast from Canada or a Rome Convention
country by a broadcaster that has its headquarters in the country of
broadcast.13
First publication is deemed to have occurred in Canada or a Rome Convention
country, as the case may be, notwithstanding that it in fact occurred previously elsewhere, if the interval between the two publications does not exceed
30 days.14
11. Section 16.

12. Subsection 17(1) and see subsection 17(2) concerning the enforcement of performers rights
to collect residuals under Guild agreements between organizations such as ACTRA and
producers.
203

Pursuant to subsection 26(1) of the Act, where a performers performance
takes place on or after January 1, 1996 in a country that is a WTO Member, the
performer has, as of the date of the performers performance, a copyright in
the performers performance, consisting of the sole right to do the following in
relation to the performers performance or any substantial part thereof:
(a) if it is not fixed, to communicate it to the public by telecommunication
and to fix it in a sound recording, and
(b) if it has been fixed in a sound recording without the performers authorization, to reproduce the fixation or any substantial part thereof,
and to authorize any such acts.15
These rights are more limited to the rights available for Canada and Rome
Convention countries under the Act.
The provisions of the Act relating to the assignment and licenses of copyright16 apply to a performers right under section 26.17 However, notwithstanding an assignment of a performers right under section 26, the performer,
as well as the assignee, may
(a) prevent the reproduction of any fixation of the performers performance, or any substantial part of such a fixation, where the fixation
was made without the performers consent or the assignees consent;
(b) prevent the importation of any fixation of the performers performance, or any reproduction of such a fixation, that the importer knows
or ought to have known was made without the performers consent or
the assignees consent.18

(i) Entitlement
Where a sound recording has been published, the performer and the maker are
entitled, so long as prescribed points of attachment or connecting factors exist,
to be paid equitable remuneration for its performance in public or its communication to the public by telecommunication, except for any retransmission.19
15.
16.
17.
18.
19.
See subsections 26(2)(4) concerning transitional provisions.

Subsections 13(4) to (7).
Subsection 26(6).
Subsection 26(7).
Section 19(1).
Performers Rights
For the purpose of funding this entitlement, a person who performs a

published sound recording in public or communicates it to the public by
telecommunication is liable to pay royalties:
(a) in the case of a sound recording of a musical work to the collective
society authorized to collect them,20 or
(b) in the case of a sound recording of a literary work or dramatic work to
either the maker of the sound recording or the performer.21
Performance in public or communication to the public by telecommunication of a sound recording triggers the right to be paid royalties. The person
liable is the person who engages in these activities.22
The royalties to be paid are divided so that the performer or performers
receives in aggregate 50 percent and the maker or makers receive in aggregate
50 percent.23
The right to remuneration conferred on performers under section 19 terminates 50 years after the end of the calendar year in which the performers
performance was first fixed in a sound recording or its performance occurred
if it was not fixed in a sound recording.24
(ii) The Points of Attachment
The right to remuneration applies only if:
(a) the maker was, at the date of the first fixation, a Canadian citizen or
permanent resident of Canada within the meaning of the Immigration
and Refugee Protection Act, or a citizen or permanent resident of a
Rome Convention country, or, if a corporation, had its headquarters in
one of the foregoing countries; or
(b) all the fixations done for the sound recording occurred in Canada or
in a Rome Convention country.25
If the maker of a sound recording was a United States citizen or a corporation
with headquarters in the United States, the right of remuneration will not be
available since the United States is not a Rome Convention country. However,
if all the fixations done for the sound recording occurred in Canada or a
20. See Chapter 32.

21. Subsection 19(2)
22. NRCC Statement of Royalties, Tariff No. 3 Use and supply of Background Music (20032009),
(2006), 52 C.P.R. (4th) 189 (Copyright Board).
24. Subsections 23(1) and (2) which subsections apply whether the fixation, performance or
broadcast occurred before or after September 1, 1997, subsection 23(3).
25. Subsection 20(1) paragraphs (a) and (b).
205
Rome Convention country, remuneration will be available notwithstanding

the domicile of the maker.
If so requested by a party to the North American Free Trade Agreement,
the right to remuneration may be extended by the Minister of Industry to
performers or makers from Mexico or the United States whose sound recordings embody dramatic or literary works.26 In addition, the Minister may also
extend reciprocity to countries other than Rome Convention countries
through statements published in the Canada Gazette.27
Where Canadian nationals do not receive remuneration in a Rome
Convention country similar to what they receive in Canada, the Minister may,
by a statement published in the Canada Gazette, limit the scope and duration
of the protection for the sound recordings of the nationals of that country.28
(iii) The Amount of the Royalty
The amount of the royalty is determined by the submission of proposed tariffs to the Copyright Board.29
(iv) Performers Rights and Rights under Part I of the Act
Section 90 of the Act provides that no provision of the Act relating to
(a) copyright in performers performances, sound recordings or communication signals, or
(b) the right of performers or makers to remuneration
shall be construed as prejudicing any rights conferred by Part I of the Act
relating to traditional copyright and the authors moral rights or, in and of
itself, as prejudicing the amount of royalties that the Board may fix in respect
of those rights.
3. Sound Recordings
The Act provides that sound recording means a recording, fixed in any
material form, consisting of sounds, whether or not of a performance of a
26.
27.
28.
29.
Subsection 20(3).
Section 22.
Subsection 20(2) and see regulation SOR/99143 effective March 23, 1999.
See Chapter 32 part 4 concerning the process relating to the determination.
Sound Recordings
work, but excludes any soundtrack of a cinematographic work where it

accompanies the cinematographic work.30 The definition does not require
that the sounds be musical or have any meaning.
The owner of the copyright in the musical or literary work is entitled to the
sole right to make any sound recording by means of which the work may be
mechanically reproduced or performed31 and in the case of a musical work,
to rent out a sound recording in which the work is embodied,32 and to authorize any acts.33 As a result, only the author of the original work may make or
authorize the making of a sound recording by means of which the work may
be mechanically reproduced or performed.
A sound recording is frequently a derivative work, in that it is derived
from an existing musical or literary work. Sound recordings of this type are
entitled to separate copyright protection, but the rights of the owner of the
copyright in the sound recording are subordinate to the rights of the original
copyright owner so long as those rights subsist.34
The first owner of the copyright in a sound recording is the maker.35
The Act provides that maker means the person by whom the arrangements
necessary for the first fixation of the sounds are undertaken.36
b) The Rights Associated with a Sound Recording37

Section 18 sets out the rights associated with a sound recording which are as
follows:
(1) Subject to subsection (2), the maker of a sound recording has a copyright
in the sound recording, consisting of the sole right to do the following in
relation to the sound recording or any substantial part thereof:
(a) to publish it for the first time;
(b) to reproduce it in any material form; and
(c) to rent it out,
and to authorize any such acts.
30. Section 2. The soundtrack of a cinematographic work will be protected as part of the cinematographic work.
31. Section 3 (1) (d).
32. Section 3 (1) (i).
33. Section 3.
34. Fly By Night Music v. Record Wherehouse (1975), 20 C.P.R. (2d) 263 (F.C.T.D.); ZYX Music
GmbH v. King [1995] 3 All E.R. 1 (Ch. D.).
35. Section 24.
36. Section 2.
37. These rights apply after September 1, 1997.
207
Subsection 18(2) of the Act sets out specific points of attachment or connecting factors which must be satisfied in order for the rights under subsection 18(1) to be available. The subsection is as follows:
(2) Subsection (1) applies only if
(a) the maker of the sound recording was a Canadian citizen or permanent
resident of Canada within the meaning of subsection 2(1) of the
Immigration and Refugee Protection Act, or a citizen or permanent resident of a Berne Convention country, a Rome Convention country or a
country that is a WTO Member, or, if a corporation, had its headquarters in one of the foregoing countries,
(i) at the date of the first fixation, or
(ii) if that first fixation was extended over a considerable period,
during any substantial part of that period; or
(b) the first publication of the sound recording in such a quantity as to
satisfy the reasonable demands of the public occurred in any country
referred to in paragraph (a).
The first publication of a sound recording is deemed to have occurred in a

country referred to in the above subsection notwithstanding that it in fact
occurred previously elsewhere, if the interval between those two publications
does not exceed thirty days.38
The right to rent out a sound recording is subject to section 2.5.
Subsection 2.5(1) provides that an arrangement, whatever its form, constitutes a rental of a sound recording if, and only if,
(a) it is in substance a rental, having regard to all the circumstances; and
(b) it is entered into with motive of gain in relation to the overall operations of the person who rents out the sound recording.
A person who rents out a sound recording with the intention of recovering
no more than the costs, including overhead, associated with the rental operations, does not by that act alone have a motive of gain in relation to the rental
operations.39
The rights granted by the Act to the maker of a sound recording, do not
include the right to perform the underlying work in public or the right to use,
or authorize the use, of a sound recording for the purpose of performing the
underlying work in public.40

40. Tl Mtropole Inc. v. Bishop [1990] 2 S.C.R. 467.
Broadcasters Communication Signal 209

Pursuant to subsection 19(1) where a sound recording has been published,
the performer and maker are entitled, subject to satisfying specific points of
attachment, to be paid equitable remuneration for its performance in public
or its communication to the public by telecommunication, except for any
retransmission.41
4. Broadcasters Communication Signal42

The Act provides that broadcaster means a body that, in the course of operating a broadcasting undertaking, broadcasts a communication signal in
accordance with the law of the country in which the broadcasting undertaking is carried on, but excludes a body whose primary activity in relation to
communication signals is their retransmission.43 Communication signal
means radio waves transmitted through space without any artificial guide, for
reception by the public.44

Subsection 21(1) sets out the rights available to broadcasters. It provides
that:
Subject to subsection (2), a broadcaster has a copyright in the communication
signals that it broadcasts, consisting of the sole right to do the following in relation to the communication signal or any substantial part thereof:
(a) to fix it,
(b) to reproduce any fixation of it that was made without the broadcasters
consent,
(c) to authorize another broadcaster to retransmit it to the public simultaneously with its broadcast, and
41.
42.
43.
44.
Subsection 19(1) and see part 2(d) of this chapter.

The rights available under the Act apply after September 1, 1997.
Section 2.
Section 2.

(d) in the case of a television communication signal, to perform it in a
place open to the public on payment of an entrance fee, and to authorize any act described in paragraph (a), (b) or (d).
Subsection 21(2) sets out the points of attachment which must be in existence
in order for copyright to be available:
(2) Subsection (1) applies only if the broadcaster
(a) at the time of the broadcast, had its headquarters in Canada, in a country that is a WTO Member or in a Rome Convention country; and
(b) broadcasts the communication signal from that country.
Where a Rome Convention country or a country that is a WTO Member does

not grant the right mentioned in paragraph (1)(d), the Minister may, by a
statement published in the Canada Gazette, declare that broadcasters that
have their headquarters in that country are not entitled to that right in
Canada.45
The term communication signal is limited to radio waves transmitted
through space without any artificial guide. The right to communicate a work
to the public by telecommunication is substantially broader 46 as telecommunication is defined to mean any transmission of signs, signals, writing,
images, or sounds or intelligence of any nature by wire, radio, visual, optical,
or other electromagnetic system.47
The Act further restricts rights available to broadcasters as a result of the
compensation system with respect to retransmission of works by a cable
retransmission system or similar system. The rights do not extend to cable
retransmission or other systems which fall outside the definition of communication signal.
Section 31 provides that it is not an infringement of copyright for a retransmitter48 to communicate to the public by telecommunication any literary,
dramatic, musical, or artistic work if:
(a) the communication is a retransmission of a local or distant signal;
(b) the retransmission is lawful under the Broadcasting Act;
45.
46.
47.
48.
Subsection 21 (3).
Subsection 3(1)(f).
Section 2.
Subsection 31(1) of the Act provides that retransmitter means a person who performs a
function comparable to that of a cable retransmission system, but does not include a new
media retransmitter; and new media retransmitter means a person whose retransmission
is lawful under the Broadcasting Act only by reason of the Exemption Order for New Media
Broadcasting Undertakings issued by the Canadian Radio-television and Telecommunications Commission as Appendix A to Public Notice CRTC 1999197, as amended from time
to time.
Broadcasters Communication Signal 211
(c) the signal is retransmitted simultaneously and without alteration,

except as otherwise required or permitted by or under the laws of
Canada
(d) in the case of the retransmission of a distant signal, the retransmitter
has paid any royalties, and complied with any terms and conditions,
fixed under this Act; and
(e) the retransmitter complies with the applicable conditions, if any,
referred to in paragraph 3(b).
For the purpose of this provision, signal is defined to mean a signal that
carries a literary, dramatic, musical, or artistic work and is transmitted for
free reception by the public by a terrestrial radio or terrestrial television
station.
The subsistence of copyright in a communication signal does not effect
any other copyright subsisting in the material which is broadcast, such as the
copyright in a film or a sound recording. The owners of copyright in these
works will have rights which are independent of the copyright in the communication signal. However, a broadcasters communication signal relating
to a live event, such as a football game or the like which may not be protected
by copyright, will be protected by the broadcasters copyright.
The first owner of the copyright in a communication signal is the broadcaster which broadcasts the signal.49
49. Section 24.
CHAP T ER
20
Moral Rights
214
214
3. The Right to Be Associated with the Work or to

Remain Anonymous
215
4. Waiver
215
216
213
214 Chapter 20 Moral Rights
Moral rights means the rights described in subsection 14.1(1)1 of the
Copyright Act. Subsection 14.1(1) states that the author of a work has, subject
to section 28.2, the right to the integrity of the work and, in connection with
an act mentioned in section 3, the right, where reasonable in the circumstances, to be associated with the work, as its author by name or under a
pseudonym, and the right to remain anonymous. Since section 14.1 refers to
a work, moral rights are restricted to literary, dramatic, musical, or artistic
works and do not apply to a performers performance, a sound recording, or
a communication signal.
Subsection 28.2(1) provides that the authors right to the integrity of a
work is infringed only if the work is, to the prejudice of the honor or reputation of the author, distorted, mutilated, or otherwise modified or used in
association with a product, service, cause, or institution.
Neither section 14.1 or section 28.2 contain any specific provisions with
respect to works of joint authorship. Presumably moral rights are available to
joint authors but the Act provides no clear direction.
The legislation bringing into force the sections dealing with moral rights
provides that those rights subsist in respect of the work, even if the work was
created before June 8, 1988 when the sections came into force.2 However,
remedies available for infringement of moral rights under the current sections
may only be obtained where the infringement occurred after June 8, 1988.3

The right to control the use of a work in association with a product, service,
cause, or institution does not require a change in the physical appearance of
a work and the association of the work with a specific product, service, cause,
or institution by itself may be sufficient.
The right of integrity is dominated by the requirement that an author
alleging infringement of the right show prejudice to his or her honor or reputation. The Act does not state on what basis the determination of whether
there is prejudice of the honor or reputation of the author is to be made. It has
been suggested that the determination should be made on an objective basis,4
1.
2.
3.
4.
Section 2.
S.C. 1988, c. 10 (4th Supp.), s. 23.
S.C. 1988, c. 10 (4th Supp.), s. 23(2) and see s. 23(3) for further transitional limitations.
Prise de parole Inc. v. Gurin diteur Lte, (1995), 66 C.P.R. (3d) 257, appeal dismissed 73
C.P.R. (3d) 557 (F.C.A.).
Waiver 215
but there is some support for the view that the authors judgment, so long as
it is reasonably exercised, should be considered.5
In the case of a painting, sculpture, or engraving, the prejudice is deemed
to have occurred as a result of any distortion, mutilation, or other modification of the work.6 The presumption only applies to an author of a painting,
sculpture, or engraving, and the author of other types of work must show
prejudice.
A change in the location of a work, the physical means by which a work is
exposed or the physical structure containing a work, or steps taken in good
faith to restore or preserve a work, do not by those acts alone constitute a
distortion, mutilation, or other modification of the work.7
3. The Right to Be Associated with the Work or

to Remain Anonymous
The author of a work has, in connection with an act mentioned in section 3
of the Act, the right, where reasonable in the circumstances, to be associated
with the work as its author by name or under a pseudonym and the right to
remain anonymous.8
The right is only available to the author and not to the copyright owner,
and is specific to a work. In addition, the right only applies where it is reasonable in the circumstances. The onus of showing that it is reasonable to give
effect to the right is on the author.
4. Waiver
Under the Act, moral rights may not be assigned, but may be waived in whole
or in part.9 An assignment of copyright in a work does not by that act alone
constitute a waiver of any moral rights.10
The right to the integrity of the work or the right to be associated with the
work or to remain anonymous can be waived in whole or in part. In addition,
5.
6.
7.
8.
9.
10.
Snow v. The Eaton Centre (1982), 70 C.P.R. (2d) 105 (Ont.H.C.J.).

Subsection 28.2(2).
Subsection 28.2(3).
Subsection 14.1(1).
Subsection 14.1(2).
Subsection 14.1(3).
216 Chapter 20 Moral Rights
different rights may be waived in favor of different persons and in association

with different uses of the work.
The Act provides no direction concerning the form of the waiver and presumably, a waiver need not be in writing, but may be verbal and could presumably be implied.
Subsection 14.1(4) extends the benefit of a waiver. It provides that
Where a waiver of any moral right is made in favor of an owner or a licensee of
copyright, it may be invoked by any person authorized by the owner or licensee
to use the work, unless there is an indication to the contrary in the waiver.11
The Act contains no limitations with respect to nature of the authorization

and presumably this word will be broadly interpreted. Persons who are not
authorized to use the work are not protected by the waiver.

The moral rights in respect of a work subsist for the same term as the copyright in the work.12 Subsection14.2(2) provides that the moral rights in respect
of a work pass, on the death of its author, to
(a) the person to whom those rights are specifically bequeathed;
(b) where there is no specific bequest of those moral rights and the author
dies testate in respect of the copyright in the work, the person to whom
that copyright is bequeathed; or
(c) where there is no person described in paragraph (a) or (b), the person
entitled to any other property in respect of which the author dies
intestate.13
Subsection14.2(2) also applies with appropriate modifications on the death of
any person who holds the moral rights.14
11.
12.
13.
14.
Subsection 14.1(3).
Subsection 14.2(1).
Subsection 14.2(2).
Subsection 14.2(3).
CHAP T ER
21
Term of Protection
1. The General Term of Protection
218
2. Anonymous and Pseudonymous Works
218
3. Posthumous Works
219
220
5. Photographs
220
221
7. Crown Copyright
222
8. Performers Performances, Sound Recordings and

222
9. Abandonment
223
217
218
Chapter 21 Term of Protection
1. The General Term of Protection

Section 6 of the Copyright Act provides that the term for which copyright
shall subsist, except as otherwise expressly provided in the Act, is the life of
the author, the remainder of the calendar year in which the author dies, and
a period of 50 years following the end of that calendar year.
The Act provides for a different term of protection for the following works:
a)
b)
c)
d)
e)
f)
g)
anonymous and pseudonymous works;

posthumous works;
works of joint authorship;
photographs;
cinematographic works;
Crown copyright; and
performers performances, sound recordings, and communication
signals.
2. Anonymous and Pseudonymous Works

Section 6.1 of the Act provides that except as provided in section 6.2, where
the identity of the author of a work is unknown, copyright in the work subsists for whichever of the following terms ends earlier:
(a) a term consisting of the remainder of the calendar year of the first
publication of the work and a period of 50 years following the end of
that calendar year, and
(b) a term consisting of the remainder of the calendar year of the making of
the work and a period of 75 years following the end of that calendar year.
If during the applicable term, the authors identity becomes commonly
known, the general term provided in section 6 applies.
Section 6.2 applies where the identity of all the authors of a work of joint
authorship is unknown.1 In such a case, copyright in the work subsists for
whichever of the following terms ends earlier
(a) a term consisting of the remainder of the calendar year of the first
publication of the work and a period of 50 years following the end of
that calendar year, and
1. Sections 6.1 and 6.2 apply in respect of all works, whether made before or after January 1,
1994, but do not extend to or revive the term applicable to a work which expired before
January 1, 1994, see S.C. 1993, c. 44, s. 75.
Posthumous Works
(b) a term consisting of the remainder of the calendar year of the making
of the work and a period of 75 years following the end of that calendar
year.
If during the applicable term, the identity of one or more of the authors
becomes commonly known, copyright shall subsist for the life of whichever
of those authors dies last, the remainder of the calendar year in which that
author dies, and a period of 50 years following the end of that calendar year.
3. Posthumous Works
Section 7(1) provides that subject to subsection (2), in the case of a literary,
dramatic, or musical work, or an engraving in which copyright subsists at the
date of the death of the author or, in the case of a work of joint authorship, at
or immediately before the date of the death of the author who dies last, but
which has not been published or, in the case of a lecture or a dramatic or
musical work, not been performed in public or communicated to the public
by telecommunication, before that date, copyright shall subsist until publication, or performance in public, or communication to the public by telecommunication, whichever may first happen, for the remainder of the calendar
year of the publication, or of the performance in public, or communication to
the public by telecommunication, as the case may be, and for a period of
50 years following the end of that calendar year.
Subsection 7(1) provides for perpetual copyright in unpublished works.
Subsection 7(2) was added to the Act to limit the applicability of subsection 7(1)
by providing that it only applies where the work in question was published,
or performed in public, or communicated to the public by telecommunication, as the case may be, before December 31, 1998.
In addition, subsections 7(3) and (4) add two additional transitional
provisions. Subsection 7(3) applies where the relevant death occurred during
the period of 50 years immediately before December 31, 1998. Where a work
was not published, or performed in public, or communicated to the public by
telecommunication before December 31, 1998, copyright shall subsist in the
work for a period of 50 years, whether or not the work is published, or performed in public, or communicated to the public by telecommunication after
December 31, 1998.
Subsection 7(4) applies where the relevant death occurred more than 50
years before December 31, 1998. Where a work was not published, or performed in public, or communicated to the public by telecommunication
before December 31, 1998, copyright shall subsist in the work for a period of
five years, whether or not the work is published, or performed in public, or
communicated to the public by telecommunication after December 31,
1998.
219
220

Section 9(1) provides that in the case of a work of joint authorship, except as
provided in section 6.2, copyright shall subsist during the life of the author
who dies last, for the remainder of the calendar year of that authors death,
and for a period of 50 years following the end of that calendar year. References
in the Act to the period after the expiration of any specified number of years
from the end of the calendar year of the death of the author are construed as
references to the period after the expiration of the like number of years from
the end of the calendar year of the death of the author who dies last.
Section 7 applies to any literary, dramatic, or musical work, or an engraving of joint authorship, in which copyright subsists immediately before the
date of death of the author who dies last, but which has not been published,
or, in the case of a lecture, or a dramatic or musical work, not been performed
in public, or communicated to the public by telecommunication before that
date. The period during which copyright subsists under this section has been
previously discussed above. If the work is published during the life of the
joint authors, or after the death of the author who first dies, but before the
death of the author who dies last, the term of copyright will be that provided
by section 9.
Authors who are nationals of any country, other than a country that is a
party to the North American Free Trade Agreement, that grants a term of
protection shorter than that granted by section 9(1) of the Act, are not entitled to claim a longer term of protection in Canada.2
5. Photographs
Subsection 10(2) provides that the person who
(a) was the owner of the initial negative or other plate at the time when
that negative or other plate was made, or
(b) was the owner of the initial photograph at the time when that photograph was made, where there was no negative or other plate,
is deemed to be the author of the photograph and, where that owner is a body
corporate, the body corporate is deemed for the purposes of this Act to be
ordinarily resident in a treaty country if it has established a place of business
therein.
2. Subsection 9(2).
Cinematographic Works
Where the owner is an individual, the term for which copyright subsists is
that set out in section 6: the life of the author, the remainder of the calendar
year in which the author dies, and a period of 50 years following the end of
that calendar year. 3
Where the owner is a corporation, the term for which copyright subsists in
a photograph is the remainder of the year of the making of the initial negative
or plate from which the photograph was derived or, if there is no negative or
plate, of the initial photograph, plus a period of 50 years.4 Where the owner is
a corporation, the majority of the voting shares of which are owned by a natural person who would have qualified as the author of the photograph except for
the above provisions the term of copyright is the term set out in section 6.5
Prior to January 1, 1994, cinematographic works were protected as dramatic
works if the arrangement or acting form or the combination of incidents represented, gave the work an original character, or if not so qualified, were protected as photographs.
After January 1, 1994, section 11.1 of the Act applies to cinematographic
works where the arrangement or acting form or the combination of incidents
represented do not give the work a dramatic character.6 The section provides
that copyright in such a cinematographic work or a compilation of cinematographic works shall subsist:
(a) for the remainder of the calendar year of the first publication of
the cinematographic work or of the compilation, and for a period of
50 years following the end of that calendar year; or
(b) if the cinematographic work or compilation is not published before
the expiration of 50 years following the end of the calendar year of
its making, for the remainder of the calendar year and a period of
50 years following the end of that calendar year.
For cinematographic works in which the arrangement of the acting form or
the combination of incidents represented give the work an dramatic character,
the term of protection will be the general term of protection under section 6.
3. Section 6.
5. Subsection 10(1.1) S.C. 1997, c. 24. Section 54.1 of An Act to Amend the Copyright Act, S.C.
1997, c. 24 contains transitional provisions relating photographs in existence on January 1,
1999.
6. See transitional provisions of S.C. 1993, c. 44, s. 75(2), s. 76(1), and 76(2).
221
222
7. Crown Copyright
Section 12 provides that, without prejudice to any rights or privileges of the
Crown, where any work is, or has been, prepared or published by or under
the direction or control of Her Majesty or any government department, the
copyright in the work, subject to any agreement with the author, belongs to
Her Majesty and in that case shall continue for the remainder of the calendar
year of the first publication of the work and for a period of 50 years following
the end of that calendar year. Before January 1, 1994, the section referred to a
term 50 years after the date of first publication.7
8. Performers Performances, Sound

Recordings and Communication Signals
The rights conferred relating to a performers performance terminate 50
years after the end of the calendar year in which its first fixation in a sound
recording, or its performance, if it is not fixed in a sound recording, occurred.8
In the case of a sound recording, the rights terminate 50 years after the end of
the calendar year in which the first fixation occurred.9 In the case of a communication signal, the rights terminate 50 years after the end of the calendar
year in which it was broadcast.10
The right to remuneration conferred on performers and makers by section
19 has the same term, respectively, as those provided for a performers performance and sound recordings.11
These provisions apply whether the fixation, performance, or broadcast
occurred before or after September 1, 1997.12
7. Section 12 as set out above applies in respect of all works, whether made before or after January 1, 1994, but does not extend to or revive the term applicable to a work which expired
before January 1, 1994. S.C. 1993, c. 44, s. 75.
9. Subsection 23(1)(b).
10. Subsection 23(1)(c).
12. Subsection 23(3). Transitional provisions are set out in the Act which apply to countries that
become Berne Convention countries, Rome Convention countries or WTO Members, as the
case may be, after the date of the fixation or performance of a performers performance, see
subsections 23(4) and (5).
Abandonment
9. Abandonment
Copyright may be expressly abandoned to the public if there is clear evidence
of the copyright owners intention to do so.13 In addition, if the owner of
copyright dedicates a work to the public and gives a public permission to
reproduce it, the owner cannot successfully bring an action for infringement.14
Whether an author may abandon a work to the public by conduct or
implied license is not clear. Most of the cases dealing with this issue have
arisen in situations where the plaintiff has obtained a patent and asserted
copyright in drawings similar to drawings which were included in the patent
application.15 The Canadian jurisprudence on this issue is unsettled.16
13. Mellor v. Australian Broadcasting Commission [1940] A.C. 491 (H.L.).

14. British Leyland Motor Corporation v. Armstrong Patents Co. [1982] F.S.R. 481 (Ch.D.).
15. See Catnic Components Ltd. et al v. Hill & Smith Ltd. [1982] 9 R.P.C. 183 at 206 (Ch. D.), the
plaintiffs were deemed to have abandoned their copyright in drawings that were the equivalent of patent drawings. This conclusion was not considered in appeals to the Court of Appeal
and the House of Lords [1982] F.S.R. 237 (H.L.).
16. See Rucker Co. v. Gavels Vulcanizing Ltd. (1985), 7 C.P.R. (3d) 294 (F.C.T.D.); Energy Absorption Systems, Inc. v. Y. Boissonneault & Fils Inc. (1990), 30 C.P.R. (3d) 420 (F.C.T.D).
223
CHAP T ER
22
Ownership of Copyright
1. Authorship
227
227
b) The Author
227

a) Photographs
228
229
i) The Author of a Photograph
229
ii) Photographs Ordered for Valuable Consideration
230
A) Order
230
B) Valuable Consideration
230
C) Agreement to the Contrary
231
D) Contracts of Service
231
b) Engravings
231
c) Portraits
232
232
232
a) Employment Under a Contract of Service or Apprenticeship
232
i) The Control Test
233
ii) The Organization or Integration Test
234
iii) The Economic Reality Test
235
235
235

235
5. Collective Works
236
6. Compilations
237
225
226
Chapter 22 Ownership of Copyright

238
238
238
238
239
240
9. Performers Performances, Sound Recordings, and

241
241
Authorship
1. Authorship
Subsection 13(1) of the Copyright Act provides that, subject to the Act, the
author of a work shall be the first owner of the copyright in the work. The
owner of the copyright in a work is entitled to exercise the rights set out in
section 3 of the Act, including the right to authorize others to exercise such
rights.1 The author is also entitled to exercise the moral rights associated with
the work.2
The Act specifies exceptions to this general principle that relate to:
a)
b)
c)
d)
engravings, photographs, or portraits;3

works made in the course of employment;4
works created by or for the Crown;5 and
performers performances, sound recordings, and communication
signals.6
b) The Author
The Act does not contain a definition of the term author, but the author of
a work, subject to the exceptions discussed in this chapter, is the person who
has expressed the idea in material form.7 In most cases, it will be readily
apparent who is the author of a work. In situations where it is not clear who
is the author of a work, the facts must be carefully analyzed to ascertain who
created the work by the exercise of the skill and judgment, that resulted in the
expression of the work in material form.8
1. Section 3; and see Underwriters Survey Bureau Ltd. et al. v. Massie & Renwick Ltd. [1938] Ex.
C.R. 103, [1940] S.C.R. 218 (S.C.C.).
2. See Chapter 20.
5. Section 12.
6. Section 24.
7. Donoghue v. Allied Newspapers Ltd., [1937] 3 All E.R. 503 (Ch. D.).
8. John Maryon Int., Ltd. v. New Brunswick Telephone (1982), 141 D.L.R. (3d) 193 (N.B.C.A.).
227
228 Chapter 22 Ownership of Copyright
Copyright does not subsist in an idea but the form in which the idea is
expressed.9 A person who merely suggests the idea of a work to another is not
the author or a joint author.10
When an individual is interviewed by a member of the media, the person
who reduces the oral statements to a fixed form is the owner of the copyright
in that aspect of the interview if sufficient skill and judgment is exercised.11
Whether the subject of the interview is entitled to copyright in the oral discussion making up the interview depends on the nature of the discussion. If
the interview is of a casual nature, it is unlikely that the conversation would
be protected by copyright.12
An amanuensis who takes down the words of another verbatim will not be
the author of the resulting written work,13 but if sufficient skill and judgment
is exercised copyright may subsist in the resulting work. For example, a
reporter who took down in shorthand five speeches delivered by a government official and published a report in a newspaper was the author of the
report since the report was not a verbatim rendition of what had been said
and skill and judgment was exercised in preparing it.14
It is not clear who is the author of a computer-generated work. There are
many situations where a computer is used to generate works which would
otherwise be protected by copyright. No Canadian case has considered this
issue. One approach is to treat the program as being similar to a pen used by
an author to write a work.15

Subsection 13(2) provides that in the case of an engraving, photograph, or
portrait, the plate or other original was ordered by some other person
and was made for valuable consideration, and the consideration was paid in
9. Moreau v. St. Vincent, (1950), 12 C.P.R. 32, (Ex Ct); Stevens v. Robert Simpson Co. Ltd. et al.
(1964), 41 C.P.R. 204 (Ont. C.A).
10. Kantel v. Grant, Nisbet & Auld Ltd [1933] Ex. C.R. 84; Kenrick v. Lawrence (1890), 25 Q.B.D.
99 (Q.B.D.), U.K.
11. Walter v. Lane [1900] A.C. 539 (H.L); Express Newspapers plc. v. News (UK) ltd. [1990] 3 All
E.R. 376 (U.K.Ch.D.); Gould Estate v. Stoddart Publishing Co. (1996), 74 C.P.R. (3d) 205 (Ont.
Ct. (Gen. Div.)), (1998), 80 C.P.R. (3d) 161 (Ont.C.A.); Hager v. E.C.W. Press Ltd. (1998),
85 C.P.R. (3d) 289 (F.C.T.D.).
12. Gould Estate v. Stoddart Publishing Co. (1996), 74 C.P.R. (3d) 205 (Ont. Ct. (Gen. Div.)),
(1998) 80 C.P.R. (3d) 161 (Ont.C.A.).
13. Housden v. Marshall, [1958] 3 All E.R. 639 (Ch. D.).
14. Walter v. Lane, [1900] A.C. 539 (H.L); Express Newspapers plc. v. News (UK) Ltd. [1990] 3 All
E.R. 376 (Ch.D.).
15. Express Newspapers PLC v. Liverpool Daily Post & Echo PLC, [1985] 3 All E.R. 680 (Ch.D).
Engravings, Photographs, or Portraits 229
pursuance of that order, in the absence of any agreement to the contrary, the
person by whom the plate or other original was ordered shall be the first
owner of the copyright. This is an exception to the general rule that the author
of a work is the first owner of copyright in the work.
The subsection only applies to an engraving, photograph, or portrait.
It does not apply to other artistic works such as sketches and drawings for
which no engraving was made.16 Surprising results can occur in the absence
of a written assignment of copyright.17
a) Photographs
i) The Author of a Photograph
Subsection 10(2) of the Act provides that the person who
(a) was the owner of the initial negative or other plate18 at the time when
that negative or other plate was made, or
(b) was the owner of the initial photograph19 at the time when that photograph was made, where there was no negative or other plate,
is deemed to be the author of the photograph and, where that owner is a body
corporate, the body corporate is deemed for the purposes of this Act to be
ordinarily resident in a treaty country if it has established a place of business
therein. The individual who takes a photograph is not necessarily the author
and the owner of copyright in the photograph.
As a result of the deeming provision, a corporation may be the author
of a photograph. Treaty country is defined by the Act to mean a Berne Convention country, UCC country or WTO Member.20
While the Act provides for the ownership of copyright in a photograph, it
does not deal with the limitations on the right to publish or use a photograph
arising from privacy rights, publicity rights, or claims for breach of confidence.
16. Toronto Carton Co. Ltd. v. Manchester McGregor Ltd., [1935] O.R. 144, [1935] 2 D.L.R. 94.
(Ont. H.C.)
17. Cselko Associates Inc. v. Zellers Inc (1992), 44 C.P.R. (3d) 56 (Ont. Ct. (Gen. Div.)) relating to
drawings commissioned for advertising purposes.
18. Section 2 provides that plate includes any stereotype or other plate, stone, block, mould,
matrix, transfer, or negative used or intended to be used for printing or reproducing copies
of any work.
19. Section 2 provides that photograph includes photo-lithograph and any work expressed by
any process analogous to photography.
20. Section 2.
ii) Photographs Ordered for Valuable Consideration

Subsection 13(2) provides that in the case of a photograph, the plate or other
original was ordered by some other person and was made for valuable consideration, and the consideration was paid, in pursuance of that order, in the
absence of any agreement to the contrary, the person by whom the plate or
other original was ordered shall be the first owner of the copyright.
Subsection 10(2) specifies who is the author of the photograph, subsection
13(2), when applicable, specifies who is the first owner of copyright.21
In order for subsection 13(2) to apply it must be shown that:
a)
b)
c)
d)
the plate or other original was ordered by some other person;

for valuable consideration;
the consideration was paid; and
the absence of an agreement to the contrary.
A) Order
In order for the subsection to apply the plate or other original must be made
in pursuance of the order.22 The subsection does not require an express reference to a plate or other original.23
It is a question of fact in each case whether there is a contract to pay for a
photograph. If the other person is obligated to pay for taking the photograph,
whether copies of the photograph are purchased or not by the other person,
the subsection applies.24
When photographs are taken on speculation, as for example, groups of
college students, sporting teams, etc., free of charge, on the basis of potential
sales to individuals, the photographer will be the owner of the copyright.25
B) Valuable Consideration
The words and the consideration was paid were added to subsection 13(2)
effective July 1, 1998,26 and have not yet been considered by he courts. The
requirement that consideration be paid may make it more difficult to conclude
that a photograph was ordered for consideration when the consideration is not
21. Christopher Bede Studios Ltd. v. United Portraits Ltd., [1958] N.Z.L.R. 250 (N.Z. Sup. Ct.).
22. Toronto Carton Co. Ltd. v. Manchester McGregor Ltd., [1935] O.R. 144, [1935] 2 D.L.R. 94 (Ont.
H.C.); Pro Arts, Inc. v. Campus Crafts Holdings Ltd. (1980), 50 C.P.R. (2d) 230 (Ont. H.C.).
23. Desmarais v. Edimag Inc. et al. (2003), 26 C.P.R. (4th) 295 (Quebec C.A.).
24. Pro Arts, Inc. v. Campus Crafts Holdings Ltd. (1980), 50 C.P.R. (2d) 230 (Ont. H.C.).
25. Planet Earth Productions Inc. v. Rowlands (1990), 30 C.P.R. (3d) 129 (Ont. Sup. Ct.).
26. Act to Amend the Copyright Act S.C. 1997, c. 24.
Engravings, Photographs, or Portraits 231
expressly referred to by the parties. In the past, courts have inferred in some
cases that the photograph was taken for consideration.27
C) Agreement to the Contrary
A photographer may use a standard form of contract to overcome the effect
of the subsection.28
The Act does not require that such an agreement be in writing and it may
be oral or inferred from the circumstances including the practice or custom
in the trade.29
D) Contracts of Service
Where a photograph was taken and the photographer was in the employment
of some person under a contract of service or apprenticeship and the photograph was made in the course of such employment by that person, the person
by whom the author was employed shall, in the absence of agreement to the
contrary, be the first owner of the copyright. However, if the requirements of
subsection 13(2) are satisfied the person who ordered the photograph will be
the first owner of the copyright.30
b) Engravings
Engravings are defined as including etchings, lithographs, woodcuts,
31
prints, and other similar works, not being photographs. The provisions
of subsection 13(2) apply to such works in the same fashion they apply to
32
photographs.
27. Paul Couvette Photographs v. The Ottawa Citizen (1985), 7 C.P.R. (3d) 552 (Ont. Prov. Ct.);
Dobran v. Bier, (1958), 29 C.P.R. 150, (Que. Q.B.).
28. Christopher Bede Studios Limited v. United Portraits Limited [1958] N.Z.L.R. 250 (Sup. Ct)
and see Pro Arts, Inc. v. Campus Crafts Holdings Ltd (1980), 50 C.P.R. (2d) 230 (Ont. H.C.).
29. Allen v. Toronto Star Newspapers Ltd (1995), 63 C.P.R. (3d) 517 (Ont. Ct. (Gen. Div.)) reversed
on appeal on other grounds (1997), 36 O.R. (3d) 201 (Div. Ct.).
30. Subsection 13(3); Global Upholstery Co. Ltd. v. Galaxy Office Furniture Ltd (1976), 29 C.P.R.
(2d) 145 (F.C.T.D.).
31. Section 2.
32. Toronto Carton Co. Ltd. v. Manchester McGregor Ltd., [1935] O.R. 144, [1935] 2 D.L.R. 94
(Ont. H.C.).
232
c) Portraits
The Act does not contain a definition of a portrait. Presumably a portrait
refers to a likeness of a person made by drawing, painting, photography, or
the like. Subsection 13(2) applies to portrait.

Where a person commissions and pays for the preparation of a work by a
non-employee, other than a photograph, engraving, or portrait, the person
commissioning the work does not own the copyright in the work unless there
is an assignment of the copyright to such person, which must be in writing
and signed by the author of the work.33 For example, a lawyer who prepares
legal documents on behalf of a client owns any applicable copyright in documents produced since the lawyer is not employed under a contract of service
by the client.34
Even if there is no written assignment of the copyright signed by the nonemployed owner of copyright, the owner may be precluded from exercising
their statutory rights against the person who commissioned the work.35
A Canadian court could not likely grant relief by way of an equitable
assignment in such situations since subsection 13(4) provides that an assignment of copyright must be in writing and section 89 provides that no person
is entitled to copyright or any similar right in any work otherwise than under
and in accordance with the Act.
a) Employment Under a Contract of Service or
Apprenticeship
Subsection 13(3) of the Act provides that where the author of a work was in
the employment of some other person under a contract of service or apprenticeship and the work was made in the course of employment by that person,
the person by whom the author was employed shall, in the absence of any
33. Massie & Renwick Ltd. v. Underwriters Survey Bureau Ltd. et al., [1940] S.C.R. 218, [1940]
1 D.L.R. 625; Downing v. General Synod, et al, [1943] O.R. 652 (C.A.).
34. Arcon Canada Inc. v. Arcobec Aluminium Inc. (1984), 7 C.P.R. (3d) 382 (Que.S.C).
35. Cselko Associates Inc. v. Zellers Inc. (1992), 44 C.P.R. (3d) 56 (Ont. Gen. Div.).
Contracts of Service 233
agreement to the contrary, be the first owner of the copyright. The subsection
also provides that where the work is an article or other contribution to a
newspaper, magazine, or similar periodical, there shall, in the absence of any
agreement to the contrary, be deemed to be reserved to the author a right to
restrain the publication of the work, otherwise than as part of a newspaper,
magazine, or similar periodical.
Subsection 13(3), when applicable, overrides the provisions of subsection
13(1) concerning first ownership of copyright. It is an exception to the general rule that the author is the first owner of copyright.
In order for the subsection to apply, it must be established that:
a) the author of a work was in the employment of some other person under
a contract of service or apprenticeship,
b) the work was made in the course of employment by that person, and
c) the absence of any agreement to the contrary.
If these conditions are satisfied, the authors employer will be the first owner
of copyright in the work without any assignment being necessary.
As the section uses the term work, it does not apply to performers performances, sound recordings, or communication signals to which section 24
applies.
The contract must be a contract of service or apprenticeship and not a
contract for services. Typically, a contract of service or apprenticeship
involves an employee while a contract for services relates to an independent
contractor. Unfortunately, in some cases it can be difficult to determine into
which category the contract falls. There is no universal test to be applied and
each case must be decided on its own facts. The courts have enunciated a
number of tests to help make the determination.36
i) The Control Test
This test emphasizes the degree of control exercised by the employer over the
individual involved. The existence of direct control by the employer, the
degree of independence on the part of the person who renders services, and
the place where the service is rendered, are considered in determining whether
there is a contract of service.37 A contract of service involves the existence
of a servant and the implication that there is an obligation to obey the orders
36. Marotta v. R. [1986] 2 F.C. 221 (F.C.T.D.) and Amusements Wiltron Inc. v. Mainville (1991),
40 C.P.R. (3d) 521 (Quebec Sup. Ct.).
37. Simmons v. Heath Laundry Co. [1910] 1 K.B. 543 (U.K.C.A.); Stevenson Jordan & Harrison
Ltd. v. Macdonald & Evans, [1952] 1 T.L.R. 101, 69 R.P.C. 10 (U.K.C.A.).
of the employer. A servant is a person who is subject to the commands of

a master as to the manner in which the servant must do the work that is
required.38
The more control the more likely a contract of service,39 but, where professional or other highly skilled individuals are involved, the control test
may be less appropriate.40
ii) The Organization or Integration Test
It is often easy to recognize a contract of service when you see it. A ships
master, a chauffeur, and a reporter on the staff of a newspaper are all employed
under a contract of service: but a ships pilot and a newspaper contributor
are more likely employed under a contract for services.41 A distinguishing feature in these situations is that under a contract of service, a person is employed
as part of the business and his or her work is done as an integral part of the
business. However, under a contract for services, the work, although done for
the business, is not integrated into it but is only accessory to it.42
The Supreme Court of Canada has said that while there is no universal test
to determine whether a person is an employee or an independent contractor,
the integration test is a persuasive approach. The central question is whether
the person who has been engaged to perform the services is performing them
as a person in business on his/her own account. In making this determination, the level of control the employer has over the workers activities will
always be a factor. Other factors to consider include whether the worker provides his/her own equipment, whether the worker hires his/her own helpers,
the degree of financial risk taken by the worker, the degree of responsibility
for investment and management assumed by the worker, and the workers
opportunity to profit in the performance of his or her task. These factors
constitute a non-exhaustive list and there is no set formula as to their application. The relative weight of each depends on the particular facts and circumstances of the case.43
38.
39.
40.
41.
University of London Press Ltd. v. University Tutorial Press Ltd. [1916] 2 Ch. 601. (U.K.C.A.)
Simmons v. Heath Laundry Co., [1910] 1 K.B. 543 (U.K.C.A.).
Belof v. Pressdram Ltd. [1973] 1 All.E.R. 241 (Ch. D.).
Stevenson Jordan & Harrison Ltd. v. MacDonald & Evans (1952), 69 R.P.C. 10 (U.K.C.A.); and
see also Gould v. Minister of National Insurance et al. [1951] 1 All E.R. 368 (U.K.K.B.).
42. Stevenson Jordan & Harrison Ltd. v. MacDonald & Evans (1952), 69 R.P.C. 10 (U.K.C.A.).
43. 671122 Ontario Ltd. v. Sagaz Industries Canada Inc. [2001] 2 S.C.R. 983 (S.C.C.) and see
Wiebe Door Services Ltd. v. M.M.R. [1986] 3 F.C. 553 (Fed. C.A.); Royal Winnipeg Ballet v
Minister of National Revenue, 2006 FCA 87 (F.C.A.).
Contracts of Service 235
iii) The Economic Reality Test

Under this test, the focus of the inquiry is a determination of whether the
individual involved is carrying on the business alone or on his or her own
behalf and not for a superior. The test is not limited to control and considers
(i) control; (ii) ownership of the tools; (iii) chance of profit; and (iv) risk of
loss. Control in itself is not always conclusive. All of the elements of the relationship between the parties are considered. Frequently, the crucial question
is whether the individual is carrying on the business on their own behalf and
not for a superior.44

In order for subsection 13(3) to apply, the work must have been made by
the author in the course of employment. An individual who is employed
under a contract of service may sometimes perform services outside the
contract.45
A director of a company, in the absence of a specific contract of service,
may not come within the subsection.46

In order for the subsection to apply, there must be an absence of any agreement to the contrary. Parties may contract out of the subsection.47 The Act
does not require that the agreement be in writing to be enforceable48 and an
agreement may be implied.49

Subsection 13(3) provides that where the work is an article or other contribution to a newspaper, magazine, or similar periodical, there shall, in the
44. Montreal Locomotive Works, Ltd. v. Montreal [1947] 1 D. L. R. 161 (H.L.).

45. Byrne v. Statist Co. [1914] 1 K.B. 622 and see Stevenson Jordan & Harrison Ltd. v. MacDonald
& Evans (1952), 69 R.P.C. 10 (U.K.C.A.).
46. Antocks Lairn Limited v. I. Bloohn Limited, [1972] R.P.C. 219 (Ch. D.).
47. Harold Drabble Ltd. v. Hycolite Mfg. Co. (1928), 44 T.L.R. 264 (Ch. D.).
48. Canavest House Ltd. v. Lett (1984), 2 C.P.R. (3d) 386 (Ont. H.C.).
49. Dolmage v Erskine (2003), 23 C.P.R. (4th) 495 (Ont. S.C.J).
absence of any agreement to the contrary, be deemed to be reserved to the

author a right to restrain the publication of the work otherwise than as part of
a newspaper, magazine, or similar periodical.
The right available under the subsection is a personal right, which like a
moral right cannot be assigned. It is not clear how useful this right is to the
author since the article or other contribution may be published in any number
50
of newspapers, magazines, or similar periodicals.
5. Collective Works
Section 2 of the Act provides that collective work means:
(a) an encyclopedia, dictionary, year book, or similar work,
(b) a newspaper, review, magazine, or similar periodical, and
(c) any work written in distinct parts by different authors, or in which
works or parts of works of different authors are incorporated.
Subparagraph (c) was added to the Act to include works which may have
been overlooked.51
Copyright may subsist in a collective work as a whole as well as in works
or parts of works of different authors that are incorporated into it. The individual who has exercised skill and judgment, resulting in the general conception and design in material form of the work as a whole, will be the author of
the collective work. If the parts of the collective work can be segregated, the
creator of each part may be the author of that part.
In a case involving alleged infringement relating to the electronic reproduction of articles submitted by freelance authors typically for use on a one
time basis in a newspaper, the Supreme Court of Canada observed that the
real question was whether the electronic databases that contain articles from
the newspapers reproduce the newspapers (or a substantial part of the newspapers) or merely reproduce the original articles.52 It is open to the publishers
to reproduce a substantial part of the collective work but an infringement to
reproduce, without consent, the individual articles.
50. Robertson v. Thompson Corporation 2006 SCC 42 (S.C.C.).

51. Chappel & Co v. Redwood Music Ltd, [1980] 2 All E.R. 817 (H.L.).
52. Robertson v. Thompson Corporation (2006), 52 C.P.R. (4th) 417 (S.C.C.).
Compilations
6. Compilations
The Act provides that a compilation means
a) a work resulting from the selection or arrangement of literary, dramatic,
musical, or artistic works or parts thereof, or
b) a work resulting from the selection or arrangement of data.53
A compilation containing two or more of the categories of literary, dramatic,
musical, or artistic works is deemed to be a compilation of the category
making up the most substantial part of the compilation.54 The mere fact that
a work is included in a compilation does not increase, decrease, or otherwise
affect the protection conferred by the Act in respect of the copyright in the
work or the moral rights in respect of the work.55
Generally compilations and collective works have been treated as
essentially similar.56 However, the definition of compilation is broader
since it extends to works resulting from the selection or arrangement of data,
which may not be protected by copyright on its own. As a result of the use of
the disjunctive or, originality is not required in both selection and arrange57
ment to result in a work that is protected under the Act.
In order to be protected by copyright there must be some evidence that the
creation of the compilation required the exercise of skill and judgment in
selecting or arranging the material which imparted some quality or character
that the raw material did not possess.58 It is not the components, which may
be taken from the public domain, that are the subject of the copyright, but
the over-all arrangement of them which the author through his or her industry has produced.
The author of a compilation is the individual who exercised skill and judgment in selecting or arranging the material making up the compilation.59
53.
54.
55.
56.
Section 2.
Subsection 2.1(1).
Subsection 2.1(2).
Chappel & Co v. Redwood Music Ltd., [1980] 2 All E.R. 817 (H.L.) and Slumber-Magic Adjustable Bed Co. v. Sleep-King Adjustable Bed Co. (1984), 3 C.P.R. (3d) 81 (B.C.S.C.), Robertson v.
Thompson Corporation (2006), 52 C.P.R. (4th) 417 (S.C.C.).
57. Robertson v. Thompson Corporation (2006), 52 C.P.R. (4th) 417 (S.C.C.).
58. The Law Society of Upper Canada v. CCH Canadian Limited (2004) SCC 13 (S.C.C.).
59. See Waterlow Publishers Limited v. Rose et al. (1995), 22 F.S.R. 207 (U.K.C.A.).
237

The Act provides that a work of joint authorship means a work produced
by the collaboration of two or more authors in which the contribution of one
author is not distinct from the contribution of the other author or authors.60
The definition is exhaustive and the concept of a work of joint authorship is
limited to the statutory definition.
In order to come within the definition, it must be shown that
a) the work was produced by the collaboration of two or more authors,
and
b) the contribution of one author is not distinct from the contribution of
the other author or authors.

In order to come within the statutory definition, the work must be produced
by the collaboration of two or more authors. The use of the word collaboration suggests working in combination to produce a work.

The contribution must be that of an author. An individual asserting a
claim of joint authorship in a work must establish that they have made a significant and original contribution to the creation of the work pursuant to a
common design. It is not necessary that the contribution to the work be
equal in terms of either quantity, quality, or originality to that of the other
collaborators.61
Typically four elements must be shown in the context of a musical work:
(1) the claimant made a contribution in the nature of authorship;
(2) it was significant;
60. Section 2.
61. Stuart v. Barrett [1994] E.M.L.R. 448 (U.K. Ch. D); Godfrey v. Lees [1995] E.M.L.R. 307
(U.K. Ch. D); Robin Ray v. Classic F.M. P.L.C. [1998] F.S.R. 622 (U.K. Ch. D).
Works of Joint Authorship 239
(3) it was original; and

(4) the contribution found its way into the finished work.62
In the case of Neudorf v. Nettwerk Productions Limited,63 the trial judge
observed that there was a dearth of Canadian law on the meaning of the word
collaboration in the definition of a work of joint authorship. As a result,
reference was made to American authorities dealing with the concept of joint
authorship under U.S. legislation. It was concluded that mutual intent was a
prerequisite for a finding of collaboration. As a result, it was found that the
test for joint authorship, which should be applied, was as follows:
(1) did the plaintiff contribute significant original expression to the songs?
If yes,
(2) did each of the plaintiff and defendant intend that their contributions
be merged into a unitary whole? If yes,
(3) did each of the plaintiff and defendant intend the other to be a joint
author of the songs?
There are substantial differences between the wording of the Canadian Act
and the U.S. legislation. Normally, the concept of collaboration contemplates
working in combination without the necessity of making an inquiry into the
intention of the parties. It remains to be seen whether the application of the
test set out above is appropriate for use in Canada.64

In the absence of an agreement to the contrary or the existence of special
circumstances, joint authors own a work as tenants in common in equal
shares and not joint tenants.65 When a joint author dies their interest passes
to their beneficiaries rather than to the surviving joint author.
A joint author cannot grant a license of any of the exclusive rights available under the Act relating to the work without the consent of the other
62. Hadley and Others v. Kemp (April 30,1999) (U.K.Ch. D) (unreported); Caala Homes South v.
Alfred McAlpine Homes East Ltd. [1995] F.S.R. 818 (U.K.Ch. D).
63. Neudorf v. Nettwerk Productions Limited (1999), 3 C.P.R. (4th) 129 (B.C.S.C.) a notice of
appeal was filed but it appears the defendant filed an assignment in bankruptcy.
64. Re Editors Assn. of Canada, New Certification Order (2002), 22 C.P.R. (4th) 21 (Canadian
Artists and Producers Tribunal) the Tribunal refused to follow the approach set out in the
Neudorf case and see Hodgens v. Beckingham [2003] EWCA CIV 143 (U.K.C.A.) which also
refused to follow the approach set out in Neudorf.
65. Lauri v. Renad, [1892] 3 Ch. 402 (U.K.C.A).
240
joint author(s).66 While title to copyright is divisible the right to exercise the
exclusive rights is not.
A joint author may institute proceedings against another joint author to
restrain that person from exercising the exclusive rights relating to a joint
work without consent.67 Each joint author has the right to institute proceedings against third parties for infringement without joining the other joint
author or authors as plaintiffs.68
In order to determine who is the author or a joint author of a cinematographic work, a determination must be made to ascertain who has exercised
the skill and judgment which resulted in the expression of the work in material form.
The Act uses the concept of Maker as one of the points of attachment or
connecting factors for the subsistence of copyright in a cinematographic
work. Maker, in relation to a cinematographic work is defined as meaning
the person by whom the arrangements necessary for the making of the work
are undertaken. This concept is separate and distinct from the determination
of who is an author.
9. Performers Performances, Sound

Recordings, and Communication Signals
Section 24 of the Act provides that the first owner of the copyright in a performers performance is the performer.69
Section 24 of the Act provides that the first owner of the copyright in a
sound recording is the maker. Maker is defined, in relation to sound recordings as meaning the person by whom the arrangements necessary for the first
fixation of the sounds is undertaken.70
66. Powell v. Head (1879), 12 Ch. D. 686 (U.K.Ch.D); Cescinsky v. Routledge & Sons Ltd., [1916]
2 K.B. 325. (U.K.K.B.)
67. Cescinsky v. Routledge & Sons Ltd., [1916] 2 K.B. 325. (U.K.K.B.)
68. Cescinsky v. Routledge & Sons Ltd., [1916] 2 K.B. 325. (U.K.K.B.)
69. See Chapter 19, part 2 concerning the meaning of the term performer.
70. Section 2.
Presumptions as to Ownership
Section 24 of the Act provides that the first owner of the copyright in a
communication signal is the broadcaster that broadcasts it.71

In any proceedings for infringement of copyright, the following matters will
be presumed to exist where the defendant puts in issue either the existence of
the copyright or the title of the plaintiff thereto.72
If the defendant puts in issue the existence of copyright or the plaintiffs
title thereto,
(a) copyright shall be presumed, unless the contrary is proved, to subsist
in the work, performers performance, sound recording or communication signal, as the case may be; and
(b) the author, performer, maker, or broadcaster, as the case may be, shall,
unless the contrary is proved, be presumed to be the owner of the
copyright.73
In the circumstances described above and where no assignment of the copyright, or license granting an interest in the copyright, has been registered
under the Act,
a) if a name purporting to be that of the author of the work, the performer
of the performers performance, the maker of the sound recording, or
the broadcaster of the communication signal is printed or otherwise
indicated thereon in the usual manner, the person whose name is so
printed or indicated shall, unless the contrary is proved, be presumed to
be the author, performer, maker, or broadcaster;
b) if no name is so printed or indicated, or if the name so printed or indicated is not the true name of the author, performer, maker, or broadcaster or the name by which that person is commonly known, and a
name purporting to be that of the publisher or owner of the work, performers performance, sound recording, or communication signal is
printed or otherwise indicated thereon in the usual manner, the person
whose name is printed or indicated as described above shall, unless the
71. See Chapter 19, part 4 concerning the meaning of the term broadcaster.
72. Section 34.1 and see Massie & Renwick Ltd. v. Underwriters Survey Bureau Ltd. et al., [1940]
S.C.R. 218.
73. Paragraph 34.1 (1).
241
contrary is proved, be presumed to be the owner of the copyright in

question; and
c) if, on a cinematographic work, a name purporting to be that of the
maker of the cinematographic work appears in the usual manner, the
person so named shall, unless the contrary is proved, be presumed to be
the maker of the cinematographic work.74
These presumptions do not take precedence over the provisions of subsection 53(2) which provide that a certificate of registration of copyright in a
work is evidence that copyright subsists in the work and that the person registered is the owner of the work.75
74. Paragraph 34.1 (2).

75. Circle Film Enterprises Inc. v. Canadian Broadcasting Corporation, [1959] S.C.R. 602, 31
C.P.R. 57 (S.C.C.).
CHAP T ER
23
Crown Copyright
1. Crown Copyright
244
a) The Crown
244
244
245
246
246
246
3. Crown Immunity
247
243
244
Chapter 23 Crown Copyright
1. Crown Copyright
a) The Crown
Section 12 of the Copyright Act provides that, without prejudice to any rights
or privileges of the Crown, where any work is, or has been, prepared or published by or under the direction or control of Her Majesty or any government
department, the copyright in the work shall, subject to any agreement with
the author, belong to Her Majesty and, in that case, shall continue for the
remainder of the calendar year of the first publication of the work and for a
period of 50 years following the end of that calendar year. The section preserves any rights arising from Crown prerogative and Crown immunity and
deals with Crown copyright under the Act.
The Interpretation Act1 provides that in every Act of the Parliament of
Canada, Her Majesty or The Crown means the Sovereign of the United
Kingdom, Canada, and Her other Realms and Territories and Head of the
Commonwealth. The government of Canada is carried on in the Queens
name2 but the Queen herself does not govern.
The Crown is the executive branch of Canadas government as distinct
from the legislative and judicial branches of the government. It is the branch
of government responsible for carrying out the law and performing the routine administration of the country.
The ability to exercise the rights and privileges of the Crown is granted to
each of the provinces and the Federal government according to their respective legislative jurisdiction under the Constitution Act, 1867.3 As a result, the
reference to the Crown in the Copyright Act refers to the Crown in the
Right of Canada and the Crown in the Right of each of the provinces, depending on the circumstances.
The term any government department in section 12 is not defined in the
Act. The words likely include a branch or division of the executive branch of
the government.4
1. R.S.C. (1985), c.I-21.

2. Constitution Act, 1876 (UK), s. 9, 30 & 31 Vict., c. 3.
3. Liquidators of the Maritime Bank of Canada v. Receiver General of New Brunswick (1892),
A.C. 437 (P.C.).
4. Federally the Financial Administration Act, R.S.C. 1985, c. F-11, defines department as any
of the departments listed in Schedule I of the Act, any of the divisions or branches of the public
service of Canada, a commission under the Inquiries Act designated by order of the Governor
Crown Copyright

The Crown or a government department may assert rights under section 12
without prejudicing its claim to assert Crown prerogative.5 In addition, the
Crown, to the extent it employs individuals, will have rights under subsection
13(3). The rights available to the Crown under section 12 are referred to as
Crown copyright.
Section 12 applies to works that are prepared or published. Where a work
is prepared under the direction or control of the Crown or a government
department, the copyright in the work belongs to the Crown for a term which
continues until the end of the calendar year of first publication, whenever this
may occur, and for a period of 50 years following the end of that calendar
year. The section provides no limitation on the length of the period of protection prior to publication.
Where a work is independently prepared but is later published by or under
the control of the Crown or a government department, the authors copyright
automatically passes to the Crown for a term which continues until the end of
the calendar year of first publication and for a period of 50 years following the
end of that calendar year.
The defense of public interest is available in proper circumstances against
the assertion of Crown copyright.6 Defenses based on the exceptions to
infringement normally available under the Act may be asserted against the
Crown.7
As a result of section 12, independent contractors may be in a substantially
different position in their dealings with the Crown than in their dealings with
private enterprise. If the work is prepared or published by or under the direction or control of the Crown, copyright will belong to the Crown unless there
is an agreement to the contrary.8
5.
6.
7.
8.
in Council as a department, the staffs of the Senate, the House of Commons, and the Library
of Parliament, and any departmental corporations listed in Schedule II.
Eros-Equipe de Recherche Operationnelle en Sante Inc. v. Conseillers en Gestion et Informatique
C.G.I. Inc, (2004), 35 C.P.R. (4th) 105 (F.C.).
R. v. James Lorimer & Co. Ltd. (1984), 77 C.P.R. (2d) 262 (F.C.A.).
R. v. James Lorimer & Co. Ltd. (1984), 77 C.P.R. (2d) 262 (F.C.A.).
See Pfizer Canada Inc. v. Canada (1986), 10 C.P.R. (3d) 268 (F.C.T.D.); Glaxo Canada Inc. v.
Apotex Inc. (1995), 64 C.P.R. (3d) 191 (F.C.A.), revg (1994), 58 C.P.R. (3d) 1 (F.C.T.D.); and
Procter & Gamble Pharmaceuticals Canada, Inv. v. Novopharm Ltd. (1996), 68 C.P.R. (3d) 461
(F.C.T.C.).
245
246 Chapter 23 Crown Copyright

The current Federal government policy relating to government publications
is published in the Treasury Board Manual: Information and Administrative
ManagementCommunications, Appendix C Publishing, No. 5.9 This policy
states that Canadian government publications, both free and priced, are automatically protected by copyright under Section 12 of the Act.
Unless otherwise permitted by law or specified in the publication in issue,
Crown copyrighted works may be reproduced by those outside of the Federal
government provided prior permission is secured in writing.10
The Federal Government has also published a policy relating to enactments and decisions and reasons for decision of federally constituted courts
and administrative tribunals. The policy provides that anyone may, without
charge or request for permission, reproduce enactments and consolidations
of enactments of the Government of Canada, and decisions and reasons for
decision of federally constituted courts and administrative tribunals, provided due diligence is exercised to ensure the accuracy of the materials reproduced and the reproduction is not represented as an official version.11

In addition to its rights under section 12, the Crown may become entitled to
copyright by virtue of assignment or in its capacity as an employer. The rights
obtained in this fashion will be subject to the general provisions of the Act
including those relating to the term of copyright.12
Section 12 expressly provides that it is without prejudice to any rights or
privileges of the Crown and does not apply to claims of Crown prerogative
with respect to printing and publishing. There is uncertainty concerning the
scope of the Crown prerogative.
9. The Manual also contains policies relating to: authors moral rights; the reproduction of
private sector copyright works; and the reproduction of Crown copyrighted work.
10. Section 5.4 of Appendix C Publishing, No. 5.
11. Canada Gazette, Part II, Vol. 131, No. 1 published January 8, 1997. The province of Ontario
has adopted a similar policy on Copyright on Legal Materials see http:// www.gov.on.ca.
12. See Hawley v. Canada (1990), 30 C.P.R. (3d) 534 (F.C.T.D.).
Crown Immunity
While there are different theories concerning the scope of the prerogative,
it seems reasonable to accept that it is derived from the duty resting upon the
King or Queen as first executive magistrate, to superintend the publication of
acts of the legislature and the Acts of State carrying with it a corresponding
prerogative.13
The prerogative right of the Crown to the exclusive printing of Acts of
Parliament, Orders in Council, state papers, and other public documents is
well established.14
The Crown prerogative, unlike rights under the Act, continues in perpetuity15 and is not limited to the term specified in the Act.
The extent of an existing prerogative may be modified by statute16 and is
subject to the Canadian Charter of Rights and Freedoms.17
3. Crown Immunity
Crown immunity is a part of the Crown prerogative. It is presumed that the
Crown is not bound by statutory law unless stated otherwise. This has been
incorporated into the Federal Interpretation Act18 which states that no enactment is binding on Her Majesty or affects Her Majesty or Her Majestys rights
or prerogatives in any manner, except as mentioned or referred to in the
enactment.19
It has been held that the wording of the Patent Act is not specific enough
to abrogate the traditional immunity of the provincial Crowns and their
agencies from suits in the Federal Court.20
13. Attorney-General for New South Wales v. Butterworth and Co. (Australia) Ltd. (1938)
S.R.N.S.W. 195 (New South Wales, C.J.) but see R. v. Bellman [1938] 3 D.L.R. 548 (N.B.C.A.)
where it was stated that constitutional changes have limited the prerogative to the sole right
of printing a miscellaneous collection of works, no catalogue of which appears to be
exhaustive.
14. Rex v. Bellman, [1938] 3 D.L.R. 548, 13 M.P.R. 37, 70 C.C.C. 171; (N.B.C.A) Attorney-General
for New South Wales v. Butterworth & Co. (Australia) Ltd. (1938) S.R.N.S.W. 195.
15. Millar v. Taylor (1769), 4 Burr. 2401, 5 Bac. Abr. 598; Chitty, Prerogatives of the Crown,
at 241.
16. Operation Dismantle Inc. v. Queen [1983] 1 F.C. 745 (F.C.A.), [1985] 1 S.C.R. 441; AttorneyGeneral v. De Keysers Royal Hotel Ltd. [1920] A.C. 508 .
17. Operation Dismantle Inc. v. Queen [1983] 1 F.C. 745 (F.C.A.).
18. R.S.C. 1970, c. I-23 section 17. In the case of Alta.Govt. Tel. v. C.R.T.C. [1989] 2 S.C.R. 225 it
was confirmed that this section applies to both the Crown in right of a province as well as the
Crown in right of Canada.
19. R.S.C. 1970, c. I-23.
20. Dableh v. Ontario Hydro (1990), 33 C.P.R. (3d), 544 (F.C.T.D.).
247
248
Chapter 23 Crown Copyright
A Crown agent or employee may seek to assert Crown immunity as long

as they do not step outside the ambit of Crown purposes.21
The Supreme Court of Canada held that the Crown could not benefit from
rights conferred by legislation without being subject to the resulting burdens.
Even where there is no indication that legislation applies to the Crown, the
latter may make itself subject to the Act through its own actions. The theory
of waiver requires, however, that there be a close nexus between the benefit
received by the Crown and the burden it is being made to assume.22
21. R. v. Eldorado Nuclear Ltd.,[1983] 2 S.C.R .551; Eros-Equipe de Recherche Operationnelle en

Sante Inc. v. Conseillers en Gestion et Informatique C.G.I. Inc., (2004), 35 C.P.R. (4th) 105
(F.C.).
22. Sparling v. Quebec [1988] 2 S.C.R. 1015 (S.C.C); Eros-Equipe de Recherche Operationnelle en
Sante Inc. v. Conseillers en Gestion et Informatique C.G.I. Inc., (2004), 35 C.P.R. (4th) 105
(F.C.).
CHAP T ER
24
Assignment
1. Assignments
250
250
250
251
d) Must Be in Writing
251
e) Construction
252
253
g) Limitation where the Author Is the First Owner

of Copyright
253
254
2. Devolution
254
3. Bankruptcy
255
255
b) Licenses
255
c) Proposals
256
257
249
250 Chapter 24 Assignment
1. Assignments
The Copyright Act contains a broad right of assignment. Subsection 13(4) of
the Act provides that the owner of the copyright in any work may assign the
right, either wholly or partially, and either generally or subject to limitations
relating to territory, medium, or sector of the market or other limitations
relating to the scope of the assignment, and either for the whole term of the
copyright or for any other part thereof, and may grant any interest in the right
by license. However, no assignment or grant is valid unless it is in writing
signed by the owner of the right in respect of which the assignment or grant
is made, or by the owners duly authorized agent.1
A copyright owner must take care to ensure that an assignment only
extends to the specific rights intended to be granted to the assignee. A simple
reference to copyright will include all of the rights set out in section 3.
A right of action for infringement of copyright may also be included with
an assignment of copyright2 including the right to sue for infringements
committed before the assignment if expressly agreed to.
A grant of an exclusive license constitutes the grant of an interest in the
copyright by licence.3
The general provisions of the Act relating to assignments apply to the
rights available to performers, makers of sound recordings and broadcasters
with such modifications as the circumstances require.4
Copyright consists of the sole right to exercise, which includes the right to
restrain others from exercising, the rights set out in section 3 of the Act
relating to original literary, dramatic, musical, and artistic works, performers
performances, sound recordings and communication signals.5 The rights
may be subdivided and the owner may assign some or all of them in predetermined territories or mediums or sectors of the market or subject to other
limitations relating to the scope of the assignment and either for the whole
term of the copyright or for any other part thereof.
1. For assignments prior to September 1, 1997 see R.S.C. 1985 subsection 13(4) and subsections
55(3) and 58.1 of an Act to Amend the Copyright Act, S.C. 1997, c. 24.
4. Section 25.
5. This includes the right to authorize the acts set out in section 3.
Assignments 251
In addition, the owner may assign a right which is not specifically mentioned in the Act so long as it is part of one of the specific statutory rights.
For example, the owner of the literary work could assign the right to reproduce the work in magazine form.
Because the rights may be subdivided, it is possible that there may be two
or more owners of interests in the copyright in any work at the same time.
In such cases, the Act recognizes both the assignee and the assignor as owners
of their respective rights. The assignee is treated as the owner of the part
assigned, and the assignor as the owner of the part not assigned for the purposes of the Act.6

Once the owner of the copyright in any work has assigned rights associated
with the work under the Act, the owner may be prevented from exercising
those rights in the same fashion as any other person who infringes those
rights.
An assignment does not operate to prevent the assignor from creating a
new and different work even if it portrays the same subject7 or from expressing
the same idea or concept in a different form. But an assignor may be subject
to contractual restrictions connected with the assignment which preclude
such activities, which may be express or implied.8
An assignment of copyright in a work does not by that act alone constitute
a waiver of moral rights,9 and the author will continue to be entitled to these
rights. As set out previously, moral rights may not be assigned but may be
waived in whole or in part.10
d) Must Be In Writing
An assignment or grant of an interest must be in writing, signed by the owner
of the right in respect of which the assignment or grant is made or by the
owners duly authorized agent.11 This direction has been interpreted by the
7. Preston v. Raphael Tuck, [1926] 1 Ch. 668. (U.K.Ch. D.)
8. Morang and Co. v. LeSueur [1911] 45 S.C.R. 95 (S.C.C.); Tedesco v. Bosa (1992), 45 C.P.R. (3d)
82 (Ont. Ct. Gen. Div.).
11. See Ritchie v. Sawmill Creek Golf & Country Club (2003), 27 C.P.R. (4th) 220 (Ont. S.C. J.),
35 C.P.R. (4th) 163 (Ont. S.C. J., Div. Ct.). Evidence of the existence of a written assignment
252
Chapter 24 Assignment
courts in Canada as a substantive requirement.12 An assignment which does

not comply will not be enforceable. A mark or a facsimile of a signature is
acceptable if there is evidence to prove that it is the customary method of
identification used by the owner.13
It is unlikely that a Canadian court could grant relief under the Act to an
equitable assignee pursuant to an assignment that is not in writing, in light of
the statutory limitations. Subsection 13(4) provides that an assignment of
copyright must be in writing and section 89 provides that no person is entitled to copyright or any similar right in any work otherwise than under, and
in accordance with the Act.14
Although an assignment must be in writing to be effective, the owner of a
work made pursuant to either an oral contract or one that can be implied
from the conduct of the parties may be precluded from exercising their rights
under the Act against the other party to the contract.15 Such a result is possible since infringement of copyright depends on the absence of consent by the
owner of copyright. Consent need not be in writing and may be presumed
from the circumstances, but the inference must be clear before it will operate
as a defense, and must come from the person holding the particular right
alleged to be infringed.
e) Construction
The Act does not specify that an assignment be in any proscribed form apart
from the requirement set out above. For each document which it is suggested
assigns copyright, an assessment must be made to determine its meaning and
whether it shows an intention to assign copyright or a part thereof. The aim
is to determine the meaning of the document in an objective contextual sense.
The plain meaning is the starting point.
12.
13.
14.
15.
may be made by way of oral testimony and without producing the actual written assignment
Motel 6 Inc. v. No. 6 Motel Ltd. et al. (1981), 56 C.P.R. (2d) 44 (F.C.T.D.).
Motel 6, Inc. v. No. 6 Motel Ltd. (1981), 56 C.P.R. (2d) 44 (F.C.T.D.); Jeffrey Rogers Knitwear
Productions Ltd. et al. v. R.D. International Style Collections Ltd. (1986), 19 C.P.R. (3d) 217
(F.C.T.D.); C.P. Koch Ltd. et. al. v. Continental Steel Ltd. .(1984), 82 C.P.R. (2d) 156 (B.C.S.C.),
aff d (1985), 4 C.P.R. (3d) 395 (B.C.C.A.).
Milliken & Co. v. Interface Flooring Systems [1998], 3 F.C. 301, 83 C.P.R. (3d) 470 (F.C.T.D.)
affirmed 5 C.P.R. (4th) 209 (F.C.A.).
Downing v. General Synod, et al [1943] O.R. 652 (Ont. C.A.).
Cselko Associates Inc. v. Zellers Inc. (1992), 44 C.P.R. (3d) 56 (Ont. Gen. Div.) and Montykola
Investments v. Robert D. Sutherland Architects (1996), 150 N.S.R. (2d) 281 (N.S.C.A.).
Assignments 253

The ownership of copyright is separate from the ownership or possession of
the physical object which is the vehicle for the work subject to copyright.
Copyright is a bundle of exclusive statutory rights which are independent of
any material object such as a manuscript or a recording of a musical work.
A transfer of possession of a physical object does not transfer any interest
in any copyright related to it unless there is a written assignment of copyright.
For example, the ownership of a manuscript does not affect the ownership of
copyright in it or the possession of a computer program does not affect the
ownership of copyright in the program.16
g) Limitation where the Author Is the First Owner

of Copyright
Subsection 14(1) contains a limitation on the right of the author, if the author
is the first owner of the copyright, to make an assignment or grant an interest
in copyright. The subsection provides that an assignment, except in relation
to collective works, if made after June 4, 1921, otherwise than by will does
not operate to vest in the assignee any rights in the copyright for more than
25 years after the authors death and the reversionary interest, notwithstanding any agreement to the contrary, devolves on the authors legal representatives as part of the authors estate.
The author is not the first owner of the copyright where subsection 13(2)
relating to engravings, photographs or portraits,17 or subsection 13(3) relating
to a work made in the course of employment,18 or section 12 relating to
Crown copyright19 apply. Subsection 14(1) does not apply in these three situations.
In addition, the subsection does not apply to the assignment of the copyright in a collective work or a license to publish a work or a part of a work as
part of a collective work.20
The subsection was intended to benefit an authors family who could be
prejudiced by the making of improvident agreements which disposed of
copyright during the authors lifetime.21 But the benefits to the authors
family provided by the subsection are of questionable value in most cases.
16.
17.
18.
19.
20.
21.
Dynabec Ltee v. La Societe DInformtique R.D.G. (1985), 6 C.P.R. (3d) 332 (Quebec C.A.).
See Chapter 23.
Collective work is defined in section 2. See Chapter 22.
Peer International Corporation v. Termidor Music Publishers Ltd. [2006] EWHC 2883 (U.K. Ch.).

Subsection 57(1) of the Act provides that the Registrar of Copyrights shall
register an assignment of copyright, or a license granting an interest in a
copyright, on being furnished with
(a) the original instrument or a certified copy of it, or other evidence satisfactory to the Registrar of the assignment or license; and
(b) the fee prescribed by or determined under the regulations.
Subsection 57(3) provides that:
Any assignment of copyright, or any license granting an interest in a copyright,
shall be adjudged void against any subsequent assignee22 or licensee for valuable consideration without actual notice, unless the prior assignment or license
is registered in the manner prescribed by this Act before the registering of the
instrument under which the subsequent assignee or licensee claims.
Under the subsection, a registration made after the registration of a prior

assignment will have no effect.23 As a result, the registration of an assignment
is a prudent course of action, even though registration of an assignment is
voluntary.
2. Devolution
On the death of the owner, copyright vests in the personal representatives of
the owner like any other property, to be disposed of in accordance with the
terms of the copyright owners will,24 or, if the copyright owner has died
intestate, to be held on behalf of the next of kin. The same principles apply to
copyright in a performers performance.25 This approach is consistent with
subsection 14(1), which provides that on the death of the author the reversionary interest in copyright mentioned in that section devolves on the
authors legal representatives as part of the estate of the author.
22. The assignors trustee in bankruptcy is not a subsequent assignee for the purposes of the
subsection Re Kobblensky (1969), 62 C.B.R. 20 (Ont. Reg. Bankruptcy).
23. Downing (Anglo-Canadian Music Co.) v. The General Synod of the Church of England in
Canada et al. [1943] O.R. 99, 2 C.P.R. 171, (Ont. H.C.), [1943] O.R. 652, 3 C.P.R. 49
(Ont. C.A.) but see Poolman v Eiffel Productions S.A. (1991), 35 C.P.R. (3d) 384 (F.C.T.D.).
24. See In re Dickens [1935] Ch. 267 (U.K.Ch. D.)
25. Rickless v. United Artists Corporation, [1988] Q.B. 40 (U.K.C.A.).
Bankruptcy
Specific provisions have been enacted regarding the devolution of moral

rights.26 Subsection 14.2(2) provides that the moral rights in respect of a work
pass, on the death of its author, to:
(a) the person to whom those rights are specifically bequeathed;
(b) where there is no specific bequest of those moral rights and the author
dies testate in respect of the copyright in the work, the person to whom
that copyright is bequeathed; or
(c) where there is no person described in paragraph (a) or (b), the person
entitled to any other property in respect of which the author dies
intestate.
These provisions apply, with such modifications as the circumstances require,
on the death of any person who holds moral rights.27
3. Bankruptcy
On a bankruptcy order being made or an assignment being filed with an official receiver, a bankrupt ceases to have any capacity to dispose of or otherwise
deal with their property, which shall, subject to the Bankruptcy and Insolvency
Act, and to the rights of secured creditors, immediately pass to and vest in the
trustee named in the bankruptcy order or assignment, and in any case of
change of trustee the property shall pass from trustee to trustee without any
assignment or transfer.28 Although title to all property vests in the trustee, a
bankrupt author will continue to have moral rights relating to the works of
which they are the author, unless they have been waived in whole or in part.29
b) Licenses
In the absence of a specific contractual term to the contrary, on the bankruptcy of a licensee, the trustee assumes all rights under any license agreement
26.
27.
28.
29.
Subsection 14.2(2).
Subsection 14.2(3).
Bankruptcy and Insolvency Act, R.S.C. 1985, c. B-3. subsection 71.
See Chapter 20.
255
which the bankrupt may have entered into and is entitled to enforce the terms
of the license.30
It is unclear whether a trustee in bankruptcy of a licensor may disclaim a
license agreement.31
c) Proposals
The Bankruptcy and Insolvency Act provides that, where a notice of intention
to file a proposal or a proposal has been filed in respect of an insolvent person,
no person may terminate or amend any agreement with the insolvent person,
or claim any accelerated payment under any agreement with the insolvent
person by reason only that:
(a) the insolvent person is insolvent;
(b) a notice of intention or a proposal has been filed in respect of the
insolvent person; or32
(c) the insolvent person has not paid royalties under a licensing agreement in respect of a period preceding the filing of a notice of intention
to file a proposal or a proposal.33
Any provision in an agreement that has the effect of providing for or permitting anything that, in substance, is contrary to these provisions of the
Bankruptcy and Insolvency Act is of no force or effect.34
In circumstances set out above, the licensor will be precluded from terminating the license or claiming any accelerated payment, but may apply to the
court for relief from the stay if it can be shown that the operation of the stay
would likely cause significant financial hardship.35
Under an amendment to the Bankruptcy and Insolvency Act a debtor,
other than an individual who is making a proposal or who has filed a notice
of intention to make a proposal, is given a right to disclaim any agreement to
which the debtor is a party. But if the debtor has granted a right to use intellectual property to a party to an agreement, the disclaimer does not affect the
partys right to use the intellectual propertyincluding the partys right to
30. Potato Distributor v. Eastern Trust (1955), 35 C.B.R. 161 (P.E.I. C.A.).
31. Re Erin Features #1 Ltd (1991), 8 C.B.R. (3d) 205 (B.C.S.C.); Royal Bank of Canada v. Body
Blue Inc. (2008), 42 C.B.R (5th) 125 (Ont. S.C.J.).
32. Bankruptcy and Insolvency Act, R.S.C. (1985), c.B-3 subsection 65.1(1).
33. Bankruptcy and Insolvency Act, R.S.C. (1985), c. B-3 subsection. 65.1(2). An applicant under
the Companies Creditors Arrangement Act, R.S.C. (1985), c. C-36 as amended,. may also seek
relief in terms similar to that provided for under the Bankruptcy and Insolvency Act.
34. Bankruptcy and Insolvency Act, R.S.C. (1985), c. B-3 , subsection 65.1(5).
35. Bankruptcy and Insolvency Act, R.S.C. (1985), c. B-3 subsection. 65.1(6).
Bankruptcy
enforce an exclusive useduring the term of the agreement, including any

period for which the party extends the agreement as of right, as long as the
party continues to perform its obligations under the agreement in relation to
the use of the intellectual property.36
Under section 83 of the Bankruptcy and Insolvency Act,37 the authors manuscripts and any copyright or any interest in a copyright in whole or in part
assigned to a publisher, printer, firm, or person who has become bankrupt
shall,
(a) if the work covered by such copyright has not been published and put
on the market at the time of the bankruptcy and no expense has been
incurred in connection therewith, revert and be delivered to the author
or his heirs, and any contract or agreement between the author or his
heirs and such bankrupt shall then terminate and be null and void;
(b) if the work covered by such copyright has in whole or in part been put
into type and expenses have been incurred by the bankrupt, revert
and be delivered to the author on payment of the expenses so incurred
and the product of such expenses shall also be delivered to the author
or his heirs and any contract or agreement between the author or his
heirs and the bankrupt shall then terminate and be null and void; but
if the author does not exercise his rights under this paragraph within
six months of the date of the bankruptcy, the trustee may carry out the
original contract;
(c) if the trustee at the expiration of six months from the date of the bankruptcy decides not to carry out the contract, revert without expense to
the author and any contract or agreement between the author or his
heirs and such bankrupt shall then terminate and be null and void.38
Where, at the time of the bankruptcy, the work was published and copies
are available in the marketplace, the trustee is entitled to sell, or authorize the
36. S.C. 2005, c. 47 adding section 65.11 to the Act assented to November 25, 2005 proclaimed in
force September 18, 2009. A right to disclaim subject to the same limitation has been added
to the Companies Creditors Arrangement Act, Section 131, S.C. 2005, c. 47 assented to
November 25, 2005 proclaimed in force September 18, 2009, adding section 32.
37. R.S.C. 1985, c., B-3.
38. Subsection 83(1) R.S.C. 1985, c., B-3.
257
sale or reproduction of, any copies of the published work, or to perform or

authorize the performance of the work, but
(a) there shall be paid to the author or his heirs such sums by way of
royalties or share of the profits as would have been payable by the
bankrupt;
(b) the trustee is not, without the written consent of the author or his
heirs, entitled to assign the copyright or transfer the interest or to grant
any interest therein by license or otherwise, except on terms that will
guarantee to the author or his heirs payment by way of royalties or
share of the profits at a rate not less than the rate the bankrupt was
liable to pay; and
(c) any contract or agreement between the author or their heirs and the
bankrupt shall then terminate and be void or, in the Province of
Quebec, null, except with respect to the disposal, under the subsection, of copies of the work published and put on the market before the
bankruptcy.39
The trustee shall offer in writing to the author or his heirs the right to purchase the manufactured or marketable copies of the copyright work comprised in the estate of the bankrupt at such price and upon such terms and
conditions as the trustee may deem fair and proper before disposing of
such manufactured and marketable copies in the manner prescribed in this
section.40
Section 83 is not limited to manuscripts and other written works and
applies to musical works which have been assigned. The section does not
apply to a performers performance, a sound recording, or a communication
signal since they are not works.41

41. See Re Song Corp. (2002), 19 C.P.R. (4th) 235 (Ont. Sup. Ct. of Justice) which found that
sound recordings of which the bankrupt was the maker were outside the section.
CHAP T ER
25
Licenses
1. Proprietary Licenses
260
2. Ordinary Licenses
261
3. Implied Licenses
261
4. Assignment
262
5. Withdrawal of Consent
262
6. Licenses by Operation of Law
262
259
260
Chapter 25 Licenses
The provisions of the Copyright Act relating to licenses of literary, dramatic,

musical, and artistic works also apply to the rights conferred on performers,
makers of sound recordings, and broadcasters with such modifications as the
circumstances require.1
1. Proprietary Licenses
The case law relating to intellectual property rights has generally distinguished three types of licenses:
a) An ordinary license which is a permission to the licensee to do something which would otherwise be unlawful. It leaves the licensor at liberty to do the action and to also grant licenses to other persons;
b) A sole license which is a permission to the licensee to do it, but no one
else, except that it leaves the licensor at liberty to do it; and
c) An exclusive license which is a permission which is exclusive to the
licensee, so that the licensor is excluded as well as anyone else.2
Subsection 13(4) provides that the owner of the copyright in any work may
assign the right, either wholly or partially, and either generally or subject to
limitations relating to territory, medium, or sector of the market or other
limitations relating to the scope of the assignment, and either for the whole
term of the copyright or for any other part thereof, and may grant any interest
in the right by license, but no assignment or grant is valid unless it is in writing, signed by the owner of the right in respect of which the assignment or
grant is made, or by the owners duly authorized agent.
In the context of licenses, the subsection applies to rights that may be
granted in the form of a license. It does not refer to an ordinary license to do
an act, which would otherwise be unlawful, as the reference to the grant of an
interest must mean a proprietary interest in the particular right. It is difficult
to identify a proprietary interest in a particular right which could be subject
to a license except for an exclusive license.
In order to clarify that an exclusive license comes within the subsection,
the Act provides that for greater certainty, it is deemed always to have been
the law that the grant of an exclusive license in a copyright constitutes the
grant of an interest in the copyright by license.3
1. Section 25.
2. Murray v. Imperial Chemical Industries Ltd. [1967] Ch. 1038. (U.K.Ch. D.)
3. Subsection 13(7). The provision applies retrospectively see Euro-Excellence Inc. v. Kraft
Canada Inc. (2007), 59 C.P.R (4th) 353 (S.C.C.).
Implied Licenses 261
Section 2.7 of the Act states that for the purposes of the Act, an exclusive
license is an authorization to do any act that is subject to copyright to the
exclusion of all others including the copyright owner, whether the authorization is granted by the owner or by an exclusive licensee claiming under the
owner. The section is primarily a codification of the common law position,
save for the right to grant such an authorization by an exclusive license.
An exclusive license is different from an assignment. Under an assignment, the assignee owns all of the rights assigned subject to the authors moral
rights. The rights of an exclusive licensee are determined by the terms set out
in the license.
2. Ordinary Licenses
As previously discussed an ordinary license is a permission to the licensee
to do something which would otherwise be unlawful. A license granting an
interest in the right is different from a license operating as a permission to do
a certain thing. A license granting permission does not grant an interest in
copyright. As a result, it is not subject to subsection 13(4) and there is no
requirement that it be in writing.4
An ordinary license will only extend to the right actually licensed to be
done.5 It is a matter of fact in any case whether license has been given and the
onus of establishing permission is on the defendant.6 In addition, to be effective, the license must be in effect at the time the otherwise infringing activity
took place.
3. Implied Licenses
An ordinary license which does not grant an interest in copyright may be
implied, since there is no requirement that such a license be in writing.7 This
question has arisen frequently in the context of cases involving architectural
plans. In this context, courts have implied terms limiting the rights available
under copyright in architectural plans to permit repair of the structure.8
4.
5.
6.
7.
8.
Robertson v. Thompson Corp. (2006), 52 C.P.R. (4th) 417 (S.C.C.).

Galerie dart du petit Champlain Inc v. Thberge (2002), 17 C.P.R. (4th) 161 (S.C.C).
Warner Brothers-Seven Arts Inc. v. CESM-TV Ltd. (1971), 65 C.P.R. 215 (Ex. Ct).
Robertson v. Thompson Corp. (2006), 52 C.P.R. (4th) 417 (S.C.C.).
Netupsky, et al v. Dominion Bridge Co. Ltd (1971), 24 D.L.R. (3d) 484 (S.C.C.).
262
Chapter 25 Licenses
The engagement for consideration of a person to produce material protected by copyright implies a permission, consent, or license in favor of the
person providing the consideration to use the material in the manner and for
the purpose contemplated by the parties that it would be used, including the
right to transfer that right.9
4. Assignment
A license may state that it can be assigned. In the absence of an express right,
whether the license may be assigned depends on the construction of the
license. If a license imposes obligations of a personal nature on the parties or
is given to a person selected for their personal skill or reputation, the license
will not likely be assignable.
5. Withdrawal of Consent
An ordinary license, where consideration has not been given, may be withdrawn at will, even though expenses have been incurred by the licensee as a
result of the license.10 However, the copyright owner may be estopped from
asserting rights where licensee has relied on the license.11 The licensor may
also be required to provide the licensee with reasonable notice prior to revoking the license.12
Where a license has been given for consideration, it may only be revoked
in accordance with the contract under which it has been granted.13
6. Licenses by Operation of Law

Where, on application to the Copyright Board by a person who wishes
to obtain a license to use a published work, a fixation of a performers
9. Netupsky, et. al. v. Dominion Bridge Co. Ltd. (1971), 24 D.L.R. (3d) 490 (S.C.C.); Robert D.
Sutherland Architectss Ltd. v. Montykola Investments Inc. (1996), 73 C.P.R. (3d) 269 (N.S. C.A.).
10. Katz v. Cytrynbaum (1983), 76 C.P.R. (2d) 276 (B.C.C.A.).
11. Ritchie v. Sawmilll Creek Golf & Country Club (2003), 27 C.P.R. (4th) 220 (Ont. S.C.J.), 35
C.P.R. (4th) 163 (Div. Ct.).
12. Winter Garden Theatre (London) Ltd.. v. Millennium Productions Ltd., [1948] A.C. 173 (H.L.).
13. Winter Garden Theatre (London) Ltd.. v. Millennium Productions Ltd., [1948] A.C. 173
(H.L.).
Licenses by Operation of Law 263
performance, a published sound recording, or a fixation of a communication

signal in which copyright subsists, the Board is satisfied that the applicant
has made reasonable efforts to locate the owner of the copyright and that the
owner cannot be located, the Board may issue to the applicant a license to
do any of the acts mentioned in section 3, 15, 18 or 21 of the Act, as the case
may be.14
14. Subsection 77(1) and see Chapter 32.
CHAP T ER
26
Registration and Marking
1. Registration Is Not Required
266
2. Applying for Registration
266
3. Rectication of the Register of Copyrights
268
4. Eect of Registration
268
a) Admissibility
268
b) Evidence
269
269
270
e) Statutory Notice
270
265
266 Chapter 26 Registration and Marking
1. Registration Is Not Required

Copyright protection in Canada does not depend on registration or other
formal act,1 which is in compliance with the Berne Convention. Copyright
subsists automatically without any act beyond the creation of an original
work. Registration is permissive but helpful in the event that proceedings for
infringement are instituted.2
There is no obligation or requirement to use a copyright notice on wares
or other material protected by copyright but it is prudent to do so. The existence of a notice in the usual form, in conjunction with the name of the
owner and year of publication, will put third parties on notice of the existence
of copyright and trigger a presumption of ownership.3
2. Applying for Registration

An application for the registration of a copyright in a work may be made by
or on behalf of the author of the work, the owner of the copyright in the work,
an assignee of the copyright, or a person to whom an interest in the copyright
has been granted by license.4
An application must be filed with the Copyright Office, be accompanied
by the fee prescribed by or determined under the regulations, and contain the
following information:
(a) the name and address of the owner of the copyright in the work;
(b) a declaration that the applicant is the author of the work, the owner of
the copyright in the work, an assignee of the copyright, or a person to
whom an interest in the copyright has been granted by license;
(c) the category of the work;
(d) the title of the work;
(e) the name of the author and, if the author is dead, the date of the
authors death, if known;
(f) in the case of a published work, the date and place of the first publication; and
(g) any additional information prescribed by regulation.5
1. Zamacos v. Douville et al. (1943), 2 C.P.R. 270 (Ex. Ct.).

2. Circle Film Enterprises Inc. v. C.B.C., [1959] S.C.R. 602 (S.C.C.).
3. Section 34.1 of the Copyright Act and see subsection 38.1 (2) of the Act concerning a claim for
statutory damages.
4. Section 55. The registration of assignments and licenses is dealt with in Chapter 24.
5. Subsection 55(2) and see the Copyright Regulations SOR/97-457 as amended by SOR/
2003-211.
Applying for Registration
Section 56 contains similar provisions relating to applications for registration

of copyright in performers performances, sound recordings, or communication signals.
The Register of Copyrights is maintained at the Copyright Office. The following information may be entered on it:
(a) the names or titles of works and of other subject-matter in which
copyright subsists;
(b) the names and addresses of authors, performers, makers of sound
recordings, broadcasters, owners of copyright, assignees of copyright,
and persons to whom an interest in copyright has been granted by
license; and
(c) such other particulars as may be prescribed by regulation.6
The Register and indices established under section 55 must be at all reasonable times open to inspection, and any person is entitled to make copies of or
take extracts from the Register.7
On the filing of the application and payment of the required fee, the certificate applied for will be issued. Unlike trademark applications, the Copyright
Office does not make any search or examination and does not take any
responsibility for the truth of the statements contained in the application.8
Where a person purports to have the authority to apply for the registration
of a copyright under section 55 or 56 on behalf of another person, any damage
caused by a fraudulent or erroneous assumption of such authority is recoverable in any court of competent jurisdiction.9
A security interest in copyright may be registered by filing the original
security agreement or a certified copy of it or other evidence satisfactory to
the Registrar.
In the case of an encyclopedia, newspaper, review, magazine, or other
periodical work, or work published in a series of books or parts, a single entry
for the whole work is to be made, without the necessity of making a separate
entry for each number or part.10
Moral rights or waivers of moral rights cannot be registered.
7. Subsection 54(5). The information is also available on line at http://www.ic.gc.ca/app/opiccipo/cpyrghts/dsplySrch.do?lang=eng.
8. Circle Film Enterprises Inc. v. Canadian Broadcasting Corporation (1957), 28 C.P.R. 5, [1956
1960] Ex. C.R. 166, (Ex. Ct.), [1959] S.C.R. 602, 31 C.P.R. 57, 20 D.L.R. (2d) 211 (S.C.C.).
9. Section 56.1.
267
268
Chapter 26 Registration and Marking
3. Rectication of the Register of Copyrights

The Federal Court may, on application of the Registrar of Copyrights or of any
interested person,11 order the rectification of the Register of Copyrights by:
(a) the making of any entry wrongly omitted to be made in the Register,
(b) the expunging of any entry wrongly made in or remaining on the
Register, or
(c) the correction of any error or defect in the Register. 12
Any rectification of the Register ordered shall be retroactive from such date
as the Court may specify.13 Clerical errors may be corrected under section 61
of the Act without the necessity of an application.
The Federal Court Act14 also gives to that court exclusive original jurisdiction, in all cases of conflicting applications for the registration of copyright
and in which it is sought to have any entry in the Register of copyrights made,
expunged, varied, or rectified.
4. Eect of Registration
The registration of copyright or an assignment of copyright or a license
granting an interest in a copyright is advantageous to the copyright owner.
The potential benefits are discussed below.
a) Admissibility
Certified copies of entries on the Register of Copyrights, which are issued
under section 53 of the Copyright Act, are admissible in all courts in Canada
without further proof or production of originals.15
11. The term is not defined in the Act but the provisions of the Trade-marks Act may be analogous see Chapter 10, part 2(c).
12. Subsection 57(4). Laurin v. Champagne (1991), 38 C.P.R. (3d) (F.C.T.D.).
14. R.S.C. 1985, c. F-7 as amended, s. 20(1).
15. Subsection 53(1) and (3) and see Blue Crest Music Inc. v. Canusa Records Inc. (1974), 17
C.P.R. (2d) 149 (F.C.T.D.); revd on other grounds (1976), 30 C.P.R. (2d) 14 (F.C.A.); aff d,
[1980] 1 S.C.R. 357 (S.C.C.).
Effect of Registration
b) Evidence
A certificate of registration of copyright in a work is evidence that copyright
subsists in the work and that the person registered is the owner of the copyright.16 A certificate of registration of an assignment of copyright is evidence
that the right recorded on the certificate has been assigned and that the
assignee registered is the owner of that right.17 A certificate of registration of
a license granting an interest in a copyright is evidence that the interest
recorded on the certificate has been granted and that the licensee registered is
the holder of that interest.18
The certificate of registration is prima facie evidence19 but it is not conclusive. The matters set out in the certificate will be presumed to be accurate and
the party seeking to dispute them bears the onus of leading evidence to the
contrary.20
It is unclear what effect will be given to a registration which was obtained
after the alleged infringement.21
In response to a statement of claim claiming infringement and including a
certificate of registration, a defendant is not entitled to rely upon a simple
denial but must allege material facts which could, if proven, bring into question the matters set out in the registration.22

Any grant of an interest in copyright either by assignment or license will be
void against a subsequent assignee or licensee for valuable consideration,
unless the prior assignment or license is registered.23
16.
17.
18.
19.
20.
21.
22.
23.
Subsection 53(2).
Subsection 53(2.1).
Subsection 53(2.2).
Bishop v. Tele Metropole Inc. (1985), 4 C.P.R. (3d) 349 (F.C.T.D.); aff d in part on other
grounds (1987), 18 C.P.R. (3d) 257 (F.C.A.); affirmed [1990] 2 S.C.R. 467, 31 C.P.R. (3d) 394
(S.C.C.).
Circle Film Enterprises Inc. v. C.B.C., [1959] S.C.R. 602 (S.C.C.); Blue Crest Music Inc. v.
Canusa Records Inc. (1974), 17 C.P.R. (2d) 149 (F.C.T.D.); revd on other grounds (1976), 30
C.P.R. (2d) 14 (Fed. C.A.); aff d, [1980] 1 S.C.R. 357 (S.C.C.).
See Grignon v. Roussel (1991), 38 C.P.R (3d) 4 (F.C.T.D.) and R v. Laurier Office Mart, Inc.
(1994), 58 C.P.R. (3d) 403 (Ont. Ct. Pro. Div.), affirmed (1995), 63 C.P.R. (3d) 229 (Ont. Ct.
Gen. Div.) in a criminal context.
Samsonite Canada Inc. v. Costco Wholesale Corporation (1993), 48 C.P.R. (3d) 5 (F.C.T.D.);
(1995) 61 C.P.R. (3d) 293; Apotex Inc. v. Glaxo Canada Inc. (1994), 58 C.P.R. (3d) 1 (F.C.T.D.)
reversed on appeal (1995) 64 C.P.R. (3d) 191 (F.C.A.).
Subsection 57(3) and see Chapter 24.
269
270
Chapter 26 Registration and Marking
If a registration is not obtained, the presumptions set in the Act relating to
ownership of copyright will apply.24 A certificate of registration will prevail
over the presumption set out in subsection 34.1(1)(b) of the Act, that the
author is the owner of copyright because the certificate, when filed, is evidence to the contrary.25
e) Statutory Notice
Subsection 39(1) of the Act provides that a defendant who alleges that they
were not aware and had no reasonable ground for suspecting that copyright
existed in a work is not liable to any other remedy against them other than an
injunction. But subsection 39(2) provides that, if at the date of the infringement, the copyright was duly registered under the Act, the subsection(1) does
not apply.26
24. Subsection 34.1 and see Chapter 22, part 10.

25. Circle Film Enterprises Inc. v. Canadian Broadcasting Corporation (1959), 31 C.P.R. (2d) 57
(S.C.C); Apotex Inc. v. Glaxo Canada Inc. (1994), 58 C.P.R. (3d) 1 (F.C.T.D.), reversed on
appeal (1995) 64 C.P.R. (3d) 191 (F.C.A.).
26. MCA Canada Ltd v. Gillberry & Hawke Advertising Agency Ltd. (1976), 28 C.P.R, (2d) 52
(F.C.T.D.) and see Chapter 30, part 5(c)(i).
CHAP T ER
27
Direct Infringement
1. The Sole Right
272
272
273
273
274
274
b) Authorization
275
275
271
272 Chapter 27 Direct Infringement
1. The Sole Right

Subsection 27(1) of the Copyright Act provides that it is an infringement of
copyright for any person to do, without the consent of the owner of the copyright, anything that by the Act only the owner of the copyright has the right
to do. This is referred to as direct infringement.
The Act provides that copyright means the rights described in
(a)
(b)
(c)
(d)
section 3, in the case of a work,

sections 15 and 26, in the case of a performers performance,
section 18, in the case of a sound recording, or
section 21, in the case of a communication signal.1
As a result of this definition the approach to the direct infringement of a

work, performers performance, sound recording, or a communication signal
are the same.
The rights available under sections 3, 15, and 26, 18, and 21 consist of the
sole right to engage in the activities described in the sections. Copyright
includes the right to prevent others from exercising the rights available to the
copyright owner under the Act.2 Because of this, it is useful to consider whether
or not the act complained of would, if done by the owner of the copyright,
been an exercise of the rights conferred solely on the owner by the Act.3
In order to show that infringement has occurred, copyright must subsist
in the work, performers performance, sound recording, or a communication
signal which is in issue.4 The protection given under the Act is territorial and
generally there is no jurisdiction to prevent infringement outside Canada.5
The sole right to do each of the acts set out in the sections referred to above
is a separate statutory right. Anyone who without the consent of the owner of
the copyright does any of these acts infringes copyright. Because the rights
are statutory in nature, it is not helpful in interpreting them to apply tort
concepts.6 Since each infringement of each right is a separate cause of action,
infringement is typically a continuing cause of action.7
1.
2.
3.
4.
5.
Section 2.
Canadian Admiral Corporation Ltd. v. Rediffusion Inc. et al. [1954] Ex. C.R. 382, 20 C.P.R. 75.
Jennings v. Stephens [1936] 1 All E.R. 409 (U.K.C.A.).
Def Lepp Music v. Stuart-Brown [1968] R.P.C. 273 (U.K. Ch. D.); Tyburn Productions Ltd v.
Conan Doyle [1991] Ch. 75 (U.K. Ch. D.); Pearce v. Ove Arup Partnership Ltd. [1997] 2 W.L.R.
779 (U.K. Ch. D.).
6. Compo Co. v Blue Crest Music [1980] 1 S.C.R. 357.
7. Compo Co. v Blue Crest Music [1980] 1 S.C.R. 357; Bishop v. Stevens, [1990] 2 S.C.R 647, 31
C.P.R. (3d) 394 (S.C.C.).
The Sole Right 273
The Act provides for additional rights relating to infringement which are
secondary in nature and are typically directed toward the unauthorized dealing with infringing articles.8
The infringement of moral rights is dealt with in a different fashion. Under
section 28.1 any act or omission that is contrary to any of the moral rights of
the author of a work is, in the absence of consent by the author, an infringement of the moral rights. Section 28.2 specifies the acts which constitute
infringement of the authors right to the integrity of a work.
The Act contains a number of provisions referred to as exceptions which
describe activities which do not infringe copyright. 9
In order to show direct infringement under section 27(1), it is not necessary
for the plaintiff to prove an intention to infringe or knowledge that infringement has occurred on the part of the defendant.10 An innocent intent or lack
of knowledge that the actions in issue infringed copyright is not a defense.11
In any proceedings for infringement of copyright, the plaintiff is not entitled to any remedy other than an injunction in respect of the infringement if
the defendant proves that, at the date of the infringement, the defendant was
not aware and had no reasonable ground for suspecting that copyright subsisted in the work or other subject-matter in question.12 However, the defendant cannot assert such a claim if at the date of the infringement, the copyright
was duly registered under this Act.13
The absence of intention to infringe may be relevant in assessing damages
for infringement.
c) Consent or Licence
Since subsection 27(1) expressly refers to the absence of consent of the owner of
the copyright, the absence of consent is an essential element of the cause of
action for direct infringement. In order to succeed a plaintiff must show that the
8.
9.
10.
11.
12.
See Chapter 28.

See Chapter 29.
Compo Co. v Blue Crest Music [1980] 1 S.C.R. 357.
Francis Day & Hunter Ltd. et al. v. Bron [1963] 2 All E.R. 16 (Ch. D.).
Subsection 39(1) and see Chapter 30, part 5 concerning this defense which is generally of
limited application.
274
Chapter 27 Direct Infringement
defendants actions were done without its consent. From the defendants point
of view consent or license is a defense which may be express or implied.14
The extent of the consent or license must be considered as actions going
beyond the terms of the consent or license may constitute infringement.
Consent may be inferred from the circumstances but the inference must
be clear before it will provide a defense.15 In addition, the consent must
come from the person entitled to exercise the right alleged to be infringed.16
The owner of copyright in a work or a performers performance or a sound
recording or a communication signal, as the case may be, is entitled to the
sole right to authorize the exercise of all of the exclusive rights available under
the Act.17 Direct infringement under subsection 27(1) includes liability for
authorizing, without the consent of the owner of the copyright, the exercise
of any of those rights.
Authorizing infringement and direct infringement of the other exclusive
rights available to the owner under the Act are separate and distinct causes of
action.18
In order to establish liability for authorizing infringement, the action
which it is alleged was authorized must be actionable by itself. If the act that
is authorized was done by a person having a right to do that act, there is no
liability for authorizing infringement.19
14. See Chapter 25 concerning non-proprietary licenses, implied licenses and withdrawal of
consent.
15. Kantel v. Grant, [1933] Ex. C.R. 84 (Ex. Ct.); Warner Bros.Seven Arts Inc. v. CESM TV Ltd.
(1971), 65 C.P.R. 215 (Ex. Ct.); Bishop v Stevens (1984), 4 C.P.R. (3d) 349 (F.C.T.D.), (1987),
18 C.P.R. (3d) 257 (Fed. C.A.), affirmed [1990] 2 S.C.R 647, 31 C.P.R. (3d) 394 (S.C.C.).
16. Bishop v Stevens (1984), 4 C.P.R. (3d) 349 (F.C.T.D.), (1987), 18 C.P.R. (3d) 257 (Fed. C.A.),
affirmed [1990] 2 S.C.R 647, 31 C.P.R. (3d) 394 (S.C.C.).
17. See sections 3, 15, 26, 18, and 21 of the Act.
18. Blue Crest Music Inc. v. Compo Co. Ltd. (1976), 30 C.P.R. (2d) 14 (F.C.A.); aff d, [1980] 1
S.C.R. 357 (S.C.C.).
19. Composers, Authors and Publishers Association of Canada Ltd. v. CTV Television Network Ltd.
(1966), 48 C.P.R. 246 (Ex. Ct.) affirmed [1968] S.C.R. 676 (S.C.C.).
Authorizing Infringement
b) Authorization
The word authorize means to sanction, approve, and countenance.20
Countenance in the context of authorizing copyright infringement must be
understood in its strongest dictionary meaning, namely, give approval to,
sanction, permit, favor, encourage.21
Authorization is a question of fact that depends on the circumstances of
each particular case and can be inferred from acts that are less than direct and
positive, including a sufficient degree of indifference.22 However, a person
does not authorize infringement by authorizing the mere use of equipment
that could be used to infringe copyright. Courts presume that a person who
authorizes an activity does so only so far as it is in accordance with the law.23
This presumption may be rebutted if it is shown that a certain relationship or
degree of control existed between the alleged authorizer and the persons who
committed the copyright infringement.24

A defendant may be responsible for an infringement committed by an agent25
or by an employee acting in the course of employment.26 This liability arises
by virtue of common law principles without the necessity of establishing
liability under the Act.
Liability for infringement carried out by agents or employees of a defendant or liability for authorizing infringement is separate and distinct from the
issue of the joint liability of defendants. Defendants in an action for infringement may be found to be jointly liable when two or more of them acted in
concert with one another pursuant to a common design relating to the
infringement.27
20. Muzak Corp. v. Composers, Authors and Publishers Association of Canada Ltd. [1953] 2 S.C.R.
182; De Tervagne v. Beloeil (Town) [1993] 3 F.C. 227, 50 C.P.R. (3d) 419 (F.C.T.D.); CCH
Canadian Ltd. v. Law Society of Upper Canada (2004), 30 C.P.R. (4th) 1 (S.C.C.).
21. CCH Canadian Ltd. v. Law Society of Upper Canada (2004), 30 C.P.R. (4th) 1 (S.C.C.).
22. CCH Canadian Ltd. v. Law Society of Upper Canada (2004), 30 C.P.R. (4th) 1 (S.C.C.); CBS
Inc. v. Ames Records & Tapes Ltd. [1981] 2 All E.R. 812 (U.K. Ch. D.).
23. CCH Canadian Ltd. v. Law Society of Upper Canada (2004), 30 C.P.R. (4th) 1 (S.C.C.); Muzak
Corp. v. Composers, Authors and Publishers Association of Canada Ltd. [1953] 2 S.C.R. 182.
24. CCH Canadian Ltd. v. Law Society of Upper Canada (2004), 30 C.P.R. (4th) 1 (S.C.C.); Muzak
Corp. v. Composers, Authors and Publishers Association of Canada Ltd. [1953] 2 S.C.R. 182;
De Tervagne v. Beloeil (Town, [1993] 3 F.C. 227, 50 C.P.R. (3d) 419 (F.C.T.D.).
25. Canadian Performing Right Society Ltd. v. Ming Yee (1943), 3 C.P.R. 64 (Alberta Dist. Ct.).
26. Canadian Performing Right Society Ltd. v. Canadian National Exhibition Association [1934]
O.R. 610, [1934] 4 D.L.R. 154 (Ont. H.C.).
27. de Tervagnae v. Town of Beloeil (1993), 50 C.P.R. (3d) 419 (F.C.T.D.).
275
CHAP T ER
28
Secondary Infringement
278
278
279
279
281
281
f ) By Way of Trade Distribute, Expose, or Oer for Sale

or Rental, or Exhibit in Public
282
282

282
2. Permitting Infringing Performances in Theatres
283
283
284
284
277
278
Chapter 28 Secondary Infringement
Under subsection 27(2) of the Copyright Act it is an infringement of copyright for any person to
a) sell or rent out,1
b) distribute to such an extent as to affect prejudicially the owner of the
copyright,2
c) by way of trade distribute, expose, or offer for sale or rental or exhibit in
public,3 or
d) possess or import into Canada for the purpose of doing anything
referred to in paragraphs (a) to (c)
a copy of a work, sound recording, or fixation of a performers performance
or of a communication signal that the person knows or should have known
infringes copyright or would infringe copyright if it had been made in Canada
by the person who made it.
In determining whether there is an infringement in the case of an activity
referred to in subparagraphs 27(2)(a) through (c) or possession for the purpose of a such an activity, in relation to a copy that was imported for the
purpose of doing such activity, it is irrelevant whether the importer knew or
should have known that the importation of the copy infringed copyright.4
Secondary infringement is unlike direct infringement since it is directed at
dealing with copies of a work, sound recording, or fixation of a performers
performance, or of a communication signal that the person knows or should
have known infringes copyright or would infringe copyright if it had been
made in Canada by the person who made it.5
Three elements which must be shown to establish secondary infringement: (1) a direct or hypothetical direct infringement of copyright has taken
place; (2) the secondary infringer knew or should have known that he or she
was dealing with a product of infringement unless the product was imported
as described above; and (3) the secondary infringer did something listed
in subsection 27(2)(a) to (e).6 Absent direct infringement, there can be no
1.
2.
3.
4.
5.
Subsection 27(2)(a).
Subsection 27(2)(b) and (c).
Subsection 27(2)(c).
Subsection 27(2).
The subsection was substantially amended pursuant to an Act to Amend the Copyright Act S.C.
1997, c. 24 and cases decided under previous versions of the Act must be read with care.
6. Euro-Excellence Inc. v. Kraft Canada Inc. 2007 SCC 37, 59 C.P.R. (4th) 353 (S.C.C.).
secondary infringement, except that direct infringement need not be shown

in the case of a copy which has been imported in the circumstance described
above.7
Section 45 of the Act contains exceptions to infringement relevant to the
importation of copies of works which are for personal use, governmental use
or for the use of a library, archive, museum, or educational institution.
In the case of a person who engages in a an activity referred to in subparagraphs 27(2)(a) through (c) or possession for the purpose of a such an activity
relating to a copy of a work, sound recording, or fixation of a performers
performance, or of a communication signal, it must be shown that such
person knows or should have known that the copy infringes copyright or
would infringe copyright if it had been made in Canada by the person who
made it.
Under the subsection it is not necessary to prove actual knowledge.
A plaintiff need only establish facts that would suggest to a reasonable person
that a breach of copyright was being committed. A person cannot close his or
her eyes to the facts. In addition, the requirement to show knowledge can be
satisfied if the conduct of the defendant amounted to willful blindness.
In some cases, the defendant will be required to closely investigate the facts to
ascertain if the goods purchased were counterfeit.8
To avoid uncertainty with respect to knowledge, a plaintiff should provide
written notice to the alleged infringer setting out how copyright has been
infringed prior to bringing an action. If the defendant is shown to have been
provided with such notice, it will be difficult for the defendant to deny knowledge. The alleged infringer should be given a reasonable time to investigate
the alleged infringement or they may be able to assert the absence of such an
opportunity by way of defense to a claim under the subsection.9

Paragraph 27(2)(e) is an exception to the rule that secondary infringement
requires proof of direct infringement because, unlike paragraphs 27(2)(a) to
(d), it does not require actual direct infringement. Instead, it requires only hypothetical direct infringement. Under paragraph 27(2)(e), it is an infringement of
7. See paragraph 27(2)(e).

8. Microsoft Corporation v. 9038-3746 Quebec Inc. (2007), 57 C.P.R. (4th) 204 (F.C.).
9. CCH Canadian Ltd.. v. Law Society of Upper Canada (2004), 30 C.P.R. (4th) 1 (S.C.C.).
279
280 Chapter 28 Secondary Infringement
copyright for any person to . . . import into Canada for the purpose of doing
anything referred to in paragraphs (a) to (c) . . . a copy of a work . . . that the
person knows . . . would infringe copyright if it had been made in Canada by
the person who made it. 10
Paragraph 27(2)(e) substitutes hypothetical direct infringement for actual
direct infringement. It is possible that the infringing imports may have been
lawfully made outside of Canada. However, they are deemed to infringe
copyright if the importer imported into Canada works that would have
infringed copyright if those works had been made in Canada by the persons
who made the works abroad.11
The purpose of paragraph 27(2)(e) is to give owners of Canadian copyright an added layer of protection where the Canadian copyright owner does
not own copyright in that work in foreign jurisdictions. Paragraph 27(2)(e)
protects Canadian copyright owners against parallel importation by deeming an infringement of copyright to have occurred even where the imported
works did not infringe copyright laws in the country in which they were
made. Without paragraph 27(2)(e), the foreign copyright owners who could
manufacture the work more cheaply abroad could flood the Canadian market
with the work, thereby rendering the Canadian copyright worthless. 12
The Act does not provide a definition of the words import into Canada.
Presumably importation occurs when the goods are physically received in a
country and subject to the jurisdiction of the courts of that country.
There is uncertainty with respect to the rights of a Canadian exclusive
licensee under the subsection. In the case of Euro-Excellence Inc. v. Kraft
Canada Inc.,13 five Judges of the Supreme Court of Canada said that an exclusive licensee in Canada can claim protection against secondary infringement
when the copyright work was produced by the owner-licensor.14 This is the
position of a majority of the Judges of the Supreme Court of Canada and
presumably binding on lower courts in future cases.
Four other Judges said that the exclusive licensees property interest in the
copyright was limited. An exclusive licence is not a complete assignment of
copyright. The owner-licensor retains a residual ownership interest in the
copyright that precluded it from being liable for copyright infringement. An
owner-licensor is liable to its exclusive licensee for breach of the licensing
agreement but not for copyright infringement.15
10.
11.
12.
13.
14.
Euro-Excellence Inc. v. Kraft Canada Inc. 2007 SCC 37, 59 C.P.R. (4th) 353 (S.C.C.).
(2007), 59 C.P.R. (4th) 353 (S.C.C.).
(2007), 59 C.P.R. (4th) 353 (S.C.C.) the reasons of Bastarache J, Lebel J., and Charron J. at
paragraph 75 and the reasons of McLachlin J. and Abella J, at paragraphs 114128.
15. 59 C.P.R. (4th) 353 (S.C.C) the reasons of Binnie J., Deschamps J., and Rothstein J. and Fish J.
The exclusive licensee was unsuccessful in this action as the three Judges,
who concurred with the lead plurality of three Judges, found against it for
other reasons.

It is an infringement of copyright for any person to sell or rent out16 a copy of
a work, sound recording, or a fixation of a performers performance, or of a
communication signal that the person knows or should have known infringes
copyright or would infringe copyright if it had been made in Canada by the
person who made it.
In order to determine whether a sale has taken place, an assessment must
be made to ascertain whether a binding contract relating to sale of the work
in issue has taken place. The presence of a profit is not a necessary element of
a sale.17
No infringement under paragraph 27(2)(a) results from the selling a copy
of a work unless at the time of the sale the seller knows or should have known
the copy infringes copyright or would infringe copyright if it had been made
in Canada by the person who made it.
An attempt to sell or rent may not constitute infringement under paragraph 27(2)(a) but exposing or offering for sale or rental or exhibiting in
public come under paragraph 27(2)(c) if done by way of trade.

It is an infringement of copyright for any person to distribute to such an
extent as to affect prejudicially the owner of the copyright a copy of a work,
sound recording, or a fixation of a performers performance, or of a communication signal that the person knows or should have known infringes copyright or would infringe copyright if it had been made in Canada by the person
who made it.
In order to constitute infringement in this way, the plaintiff must show
specific prejudice to the owner of the copyright not the author.18
16. See section 2.5 but motive of gain is not relevant under paragraph 27(2)(a).
18. Compagnie Generale des Etablissements Michelin v. National Automobile, Aerospace, Transportation and General Workers Union of Canada (1996), 71 C.P.R. (3d), 348 (F.C.T.D.).
281
282
Chapter 28 Secondary Infringement
f) By Way of Trade Distribute, Expose, or Oer for Sale

or Rental, or Exhibit in Public
It is an infringement of copyright for any person to by way of trade distribute,
expose, or offer for sale or rental, or exhibit in public a copy of a work, sound
recording, or a fixation of a performers performance, or of a communication
signal that the person knows or should have known infringes copyright or would
infringe copyright if it had been made in Canada by the person who made it.
It must be shown that each of the listed activities is done by way of trade.

It is an infringement of copyright for any person to possess for the purpose of
doing the activities set out in paragraphs 27(2) (a), (b), and (c), which have
been described above, a copy of a work, sound recording, or fixation of a
performers performance, or of a communication signal that the person
knows or should have known infringes copyright or would infringe copyright
if it had been made in Canada by the person who made it.
This paragraph broadens the rights available to an owner of copyright,
particularly in cases involving businesses where possession is consistent with
an intention to sell or distribute.

Subsection 27(4) of the Act provides that it is an infringement of copyright
for any person to make or possess a plate that has been specifically designed
or adapted for the purpose of making infringing copies of a work or other
subject-matter. The term plate is defined as including (a) any stereotype or
other plate, stone, block, mould, matrix, transfer, or negative used or intended
to be used for printing or reproducing copies of any work, and (b) any matrix
or other appliance used or intended to be used for making or reproducing
sound recordings, performers performances, or communication signals.19
The application of the subsection is limited to plates that have been specifically designed or adapted for the purpose of making infringing copies.
The owner of copyright in a work or other subject-matter may recover possession of all plates used or intended to be used for the production of infringing
copies, as if those copies or plates were the property of the copyright owner.20
19. Section 2.
20. Section 38 and see chapter 30, part 11(b).
Parallel Importation of Books 283
2. Permitting Infringing Performances

in Theatres
Under subsection 27(5) it is an infringement of copyright for any person, for
profit, to permit a theatre or other place of entertainment to be used for the
performance21 in public of a work or other subject-matter without the consent of the owner of the copyright unless that person was not aware, and had
no reasonable ground for suspecting, that the performance would be an
infringement of copyright.22
To establish liability under the subsection it must be shown, among other
things, that the defendant permitted a theatre or other place of entertainment
to be used for the performance in public that is in issue. This means it will
be necessary to show that the defendant had the ability to control the use of
the place of the performance and specific knowledge of the material to be
performed.23
Permission should not be inferred from a general authorization to use a
theatre for the performance of musical works.24 It must be shown that the
defendant knew that the works in issue were going to be performed.
There will be no liability under the subsection if the permission to use of
the place of entertainment was given gratuitously.

Parallel importation refers to books which were legitimately published in
their country of origin but have been imported into Canada without the consent of the Canadian rights owner. Publishers and distributors invest time
and money to gain the exclusive right to import and distribute books in this
country pursuant to distribution agreements. The agreements are circumvented when booksellers or institutional buyers order copies of books from
companies other than the exclusive distributor in Canada.
21. Performance means any acoustic or visual representation of a work, performers performance, sound recording, or communication signal, including a representation made by means
of any mechanical instrument, radio receiving set, or television receiving set, section 2.
22. See de tervagne et al v. Town (Beloeil) (1993), 50 C.P. R. (3d) 419 (F.C.T.D.) secondary and
direct infringement are concurrent.
O.R. 610, [1934] 4 D.L.R. 154 (Ont. H.C.); Performing Right Organization of Canada v. Lion
dOr (1981) Ltee (1987), 17 C.P.R. (3d) 542 (F.C.T.D.).
O.R. 610, [1934] 4 D.L.R. 154 (Ont. H.C.).
284 Chapter 28 Secondary Infringement
Section 2 of the Act provides that exclusive distributor means, in relation
to a book, a person who has, been appointed in writing, by the owner or
exclusive licensee of the copyright in the book in Canada, as
(i) the only distributor of the book in Canada or any part of Canada, or
(ii) the only distributor of the book in Canada or any part of Canada in
respect of a particular sector of the market, and
meets the criteria established by regulations made under section 2.6.25
An exclusive distributor may initiate proceedings and seek remedies like
any other person having an interest in copyright, so long as appropriate
notice has been given.26

Section 27.1 of the Act contains two potential claims for infringement relating to the importation of books. The section only applies where there is an
exclusive distributor of the book and the acts described in the section take
place in the part of Canada or in respect of the particular sector of the market
for which the person is the exclusive distributor. 27
First, subsection 27.1 (1) provides that, subject to the regulations that it is
an infringement of copyright in a book for any person to import the book
where
(a) copies of the book were made with the consent of the owner of the
copyright in the book in the country where the copies were made, but
were imported without the consent of the owner of the copyright in
the book in Canada; and
(b) the person knows or should have known that the book would infringe
copyright if it was made in Canada by the importer.
Second, subsection 27.1(2) provides that, subject to the regulations where the
circumstances described in paragraph 27.1(1)(a) exist, it is an infringement
of copyright in an imported book for any person who knew or should have
25. See the Book Importation Regulations brought into force September 1, 1999, SOR/99-324.
26. An exclusive distributor is deemed, for the purposes of entitlement to any of the remedies
under the Act in relation to an infringement under section 27.1 to derive an interest in the
copyright in question by license, see subsection 27.1 (4).
Parallel Importation of Books 285
known that the book would infringe copyright if it was made in Canada by
the importer to
(a) sell or rent out the book;
(b) by way of trade, distribute, expose, or offer for sale or rental, or exhibit
in public, the book; or
(c) possess the book for the purpose of any of the activities referred to in
paragraph (a) or (b).
Book is restrictively defined to mean a volume or a part or division of a
volume, in printed form, and does not include (a) a pamphlet, (b) a newspaper, review, magazine, or other periodical, (c) a map, chart, plan, or sheet
music where the map, chart, plan, or sheet music is separately published,
and (d) an instruction or repair manual that accompanies a product or that is
supplied as an accessory to a service.28
The exceptions to infringement set out in section 45 of the Act are applicable to proceedings under section 27.1. The importation of books for personal use, governmental use, or for the use of a library, archive, museum, or
educational institution in the circumstances set out in the section is lawful. 29
Section 27.1(5) provides that an exclusive distributor, copyright owner
or exclusive licensee is not entitled a remedy under the Act in relation to an
infringement under section 27.1 unless, before the infringement occurred,
notice has been given within the prescribed time and in the prescribed manner
to the person alleged to have breached the section, that there is an exclusive
distributor of the book.30
Exclusive licensees may apply to the Federal Court or a superior court of a
province for an order directing the Minister of Public Safety and Emergency
Preparedness;
(i) to take reasonable measures, on the basis of information reasonably
required by the Minister and provided by the applicant, to detain the
work, and
(ii) to notify the applicant and the importer, forthwith after detaining the
work, of the detention and the reasons therefor; and
providing for such other matters as the court considers appropriate.31
Exclusive licensees may not seek statutory damages pursuant to section 38.1
of the Act where the copy in question was made with the consent of the copyright owner in the country where the copy was made.32
28.
29.
30.
31.
32.
Section 2.
See chapter 30, part2(c).
See the Book Importation Regulations brought into force September 1, 1999, SOR/99-324.
Section 44.2 and see chapter 30, part 2.
Section 38.1(6)(c).
CHAP T ER
29
Exceptions
1. Application
289
2. Fair Dealing
289
289
290
c) Fair Dealing for the Purpose of Research or

Private Study
292
293
293
294
294
294
296
296
a) Denitions
296
297
5. Machines Installed in Educational Institutions, Libraries,

Archives, and Museums
299
299
301

7. The Incidental Inclusion of a Work in Another Work
301
302
302
302

302
304
287
304
288 Chapter 29 Exceptions

10. Retransmission
305
305
307
307
308
308
309
a) Artistic Works
309
b) Architectural Works and Sculptures or Works of Artistic

309
309
310
e) Report of an Address of a Political Nature Given

at a Public Meeting
310
f ) Performance at Any Agricultural or Agricultural-Industrial

Exhibition or Fair
310

or Fraternal Bodies
311
311
311
Fair Dealing 289
1. Application
The Copyright Act contains detailed exceptions from infringement which
are set out in sections 29 to 32.2. Because there are numerous exceptions
which are set out in great detail, it is very unlikely that a court would give
effect to an implied exception from infringement.1
The Supreme Court of Canada has clarified some general considerations
about the fair dealing exceptions to copyright infringement which may apply
to all exceptions by analogy. Procedurally, a defendant is required to prove
that his or her dealing with a work has been fair; however, the fair dealing
exception is perhaps more properly understood as an integral part of the Act
than simply a defense. Any act falling within the fair dealing exception will
not be an infringement of copyright. The fair dealing exception, like other
exceptions in the Act, is a users right. In order to maintain the proper balance
between the rights of a copyright owner and users interests, it must not be
interpreted restrictively.2
2. Fair Dealing
Sections 29, 29.1 and 29.2 of the Act apply to fair dealing. They are as follows:
29. Fair dealing for the purpose of research or private study does not infringe
copyright.
29.1 Fair dealing for the purpose of criticism or review does not infringe
copyright if the following are mentioned:
(a) the source; and
(b) if given in the source, the name of the
(i) author, in the case of a work,
(ii) performer, in the case of a performers performance,
(iii) maker, in the case of a sound recording, or
(iv) broadcaster, in the case of a communication signal.
29.2 Fair dealing for the purpose of news reporting does not infringe copyright
if the following are mentioned:
(a) the source; and
(b) if given in the source, the name of the
1. Bishop v. Stevens [1990] 2 S.C.R 647, 31 C.P.R. (3d) 394 (S.C.C.).

290
Chapter 29 Exceptions
(iv) broadcaster, in the case of a communication signal.
The sections are only relevant if an infringing activity has taken place. For
example, if the reproduction in issue consists of less than a substantial part of
a work, is not an infringement and the exceptions do not apply.
In Canada, the purpose of the dealing will be fair if it is for one of the
allowable purposes under the Act, namely research, private study, criticism,
review or news reporting.3
The Supreme Court of Canada has made it clear that the fair dealing exception should not be restrictively interpreted. The fair dealing exception like
other exceptions in the Act, is a users right. In order to maintain the proper
balance between the rights of a copyright owner and a users interest, it should
be given a fair and balanced reading applicable to remedial legislation.4
U.S. legislation dealing with fair dealing is quite different from the Act.
The U.S. legislation leaves a broad equitable jurisdiction to the court to apply
a defense to infringement as the presiding judge may see fit. The exceptions
in the Act are more narrowly drafted and refer to fair dealing for specifically
listed purposes. U.S. cases dealing with fair dealing are not helpful in determining whether the fair dealing exceptions of the Act apply.5

To take advantage of the exceptions set out above, a defendant must show that
its dealings have been fair. What will constitute fair dealing is not defined in the
Act and depends on the facts of each case. The elements of fairness are malleable and can be tailored to each unique set of circumstances. Constitutional and
Charter values such as the rule of law, equality, and access to justice may be
implicitly considered in the context of determining whether a dealing is fair.6
The Supreme Court of Canada has stated that following matters provide a
useful analytical framework to govern the determination of fairness:7
a) The purpose for which the defendant is using the plaintiff s work.
The court should make an objective assessment of the defendants real
3. See sections 29, 29.1 and 29.2 of the Act.

5. Cie Gnrale Des tablissements Michelin-Michelin & Cie v. C.A.W.-Canada (1996), 71 C.P.R.
(3d) 348 (F.C.T.D.).
6. CCH Canadian Ltd. v. Law Society of Upper Canada (2002), 18 C.P.R. (4th) 161 (F.C.A),
(2004), 30 C.P.R. (4th) 1 (S.C.C).
Fair Dealing 291
b)
c)
d)
e)
8.
9.
10.
11.
12.
13.
purpose or motive in using the plaintiff s work. Some dealings, even if

for an allowable purpose, may be more or less fair than others; research
done for commercial purposes may not be as fair as research done for
charitable purposes.8
The character of the dealing.9 In assessing the character of the dealing,
courts must examine how the works were dealt with. If multiple copies
of works are being widely distributed, this will tend to be unfair. If,
however, a single copy of a work is used for a specific legitimate purpose, then it may be more appropriate to conclude that it was a fair
dealing.10
The importance and the amount of the work taken. The amount taken
may also be more or less fair depending on the purpose. For example,
for the purpose of research or private study, it may be essential to copy
an entire academic article or an entire judicial decision. However, if a
work of literature is copied for the purpose of criticism, it will not likely
be fair to include a full copy of the work in the critique.11
Alternatives to the alleged infringing activity. Alternatives to dealing
with the infringed work may affect the determination of fairness. If
there is a non-copyrighted equivalent of the work that could have been
used instead of the copyrighted work, this should be considered by the
court. A court should attempt to determine whether the dealing was
reasonably necessary to achieve the ultimate purpose. For example, if a
criticism would be equally effective if it did not actually reproduce the
copyrighted work it was criticizing, this may weigh against a finding of
fairness.12
The nature of the work. Although not determinative, if a work has not
been published, the dealing may be more fair in that its reproduction
with acknowledgement could lead to a wider public dissemination of
the work. This will be another factor to be considered.13 If the plaintiff s
work is confidential and has been leaked, this will be important.14
CCH Canadian Ltd. v. Law Society of Upper Canada (2004), 30 C.P.R. (4th) 1 (S.C.C.).
CCH Canadian Ltd. v. Law Society of Upper Canada (2004), 30 C.P.R. (4th) 1 (S.C.C).
CCH Canadian Ltd. v. Law Society of Upper Canada (2004), 30 C.P.R. (4th) 1 (S.C.C.) and see
Hubbard v. Vosper, [1972]1 All E.R.1023 (U.K.C.A.); Beloff v. Pressdram Ltd. [1973] 1 All E.R. 241
(U.K.Ch. D.); Breen v. Hancock House Publishers Ltd. (1985), 6 C.P.R. (3d) 433 (F.C.T.D.).
14. CCH Canadian Ltd. v. Law Society of Upper Canada (2004), 30 C.P.R. (4th) 1 (S.C.C.); Beloff
v. Pressdram Ltd, [1973] 1 All E.R. 241 (U.K.Ch. D.).
d) The effect of the dealing on the work.15 If the reproduced work is likely
to compete in the market of the original work, this may suggest that the
dealing is not fair. Although the effect of the dealing on the market of
the copyright owner is an important factor, it is neither the only factor
nor the most important factor that a court must consider in deciding if
the dealing is fair.
In summary, the purpose of the dealing, the character of the dealing, the
amount of the dealing, available alternatives to the dealing, the nature of the
work, and the effect of the dealing on the work are all factors that should be
considered to determine whether or not a dealing is fair. These factors may
be more or less relevant to assessing the fairness of a dealing depending on
the factual context of the allegedly infringing dealing. In some contexts there
may be other factors which should be considered to decide whether the
dealing was fair.16
The fair dealing is restricted to the purposes listed in sections 29, 29.1, or
29.2. The fact that a work is a parody of another is not generally a defense to
a claim of infringement.17 Fair dealing will only apply to a parody when the
purpose of the parody comes within one of the listed purposes.18
c) Fair Dealing for the Purpose of Research or Private Study

Section 29 provides that fair dealing for the purpose of research or private
study does not infringe copyright. The meaning of the word research is not
restricted by the reference to private study and all fair research, whether in
a private setting or not is included.19 Research is not limited to non-commercial or private contexts. Research carried out for profit is not automatically
excluded from the exemption.20 A library, archive, or museum or a person
acting under its authority may take advantage of the exception.21
17. Cie Gnrale Des tablissements Michelin-Michelin & Cie v. C.A.W.-Canada (1996), 71 C.P.R.
(3d) 348 (F.C.T.D.).
18. Productions Avanti CinVido Inc. v. Favreau (1999), 1 C.P.R. (4th) 129 (Quebec C.A.).
20. CCH Canadian Ltd. v. Law Society of Upper Canada (2004), 30 C.P.R. (4th) 1 (S.C.C.) and see
Hubbard v. Vosper [1972] 1 All E.R.1023 (U.K.C.A.); Beloff v. Pressdram Ltd. [1973] 1 All E.R.
241 (U.K.Ch. D.).
Fair Dealing 293
To take advantage of the private study exception, the individual involved

must have engaged in the otherwise infringing activity personally.22
Educational institutions or their staff do not come within the section since it
is limited to private study.23

Section 29.1 provides that fair dealing for the purpose of criticism or review
does not infringe copyright if the source and if given in the source, the name
of the
(i)
(ii)
(iii)
(iv)
author, in the case of a work,

performer, in the case of a performers performance,
maker, in the case of a sound recording, or
broadcaster, in the case of a communication signal
are mentioned.
The scope of the words criticism or review has not been considered by a
Canadian appellate court but presumably should be given a large and liberal
interpretation in order to ensure that users rights are not unduly constrained.24
In the United Kingdom, it has been held that a similar section extended to
the literary style of the work and also to the doctrine or philosophy of the
writer as expressed in the literary work in question.25

Section 29.2 provides that fair dealing for the purpose of news reporting does
not infringe copyright if the source and if given in the source, the name of
the
(iv) broadcaster, in the case of a communication signal are mentioned.26
22.
23.
24.
25.
26.
University of London Press Ltd. v. University Tutorial Press Ltd., [1916] 2 Ch. 601.
Hubbard v. Vosper, [1972]1 All E.R.1023 (U.K.C.A.).
See British Broadcasting Corporation v. Satellite Broadcasting Ltd. [1992] Ch. 141 (U.K. Ch. D.).
The Act provides that educational institution means
(a) a non-profit institution licensed or recognized by or under an Act of
Parliament or the legislature of a province to provide pre-school, elementary, secondary, or post-secondary education,
(b) a non-profit institution that is directed or controlled by a board of education regulated by or under an Act of the legislature of a province and that
provides continuing, professional, or vocational education or training,
(c) a department or agency of any order of government, or any non-profit
body, that controls or supervises education or training referred to in
paragraph (a) or (b), or
(d) any other non-profit institution prescribed by regulation.27

In general terms, the excepted activities must be carried out by an educational
institution or a person acting under its authority:
a) for the purposes of education or training;
b) on the premises28 of the educational institution; and
29
c) without motive of gain.
The excepted activities, which are relatively narrow in scope, are as follows:
(a) making a manual reproduction of a work onto a dry-erase board, flip
chart, or other similar surface intended for displaying handwritten
material;30
27. Section 2. Section 30.4 provides that for greater certainty, the exceptions to infringement of
copyright provided for under sections 29.4 to 30.3 and 45 also apply in respect of a library,
archive, or museum that forms part of an educational institution.
28. Section 2 provides that premises means, in relation to an educational institution, a place
where education or training referred to in the definition educational institution is provided, controlled, or supervised by the educational institution.
29. Section 29.3. Subsection 29.3(2) provides that an educational institution, library, archive, or
museum, or person acting under its authority does not have a motive of gain where it or the
person acting under its authority, does anything referred to in section 29.4, 29.5, 30.2, or 30.21
and recovers no more than the costs, including overhead costs, associated with doing that act.
30. Subsection 29.4(1)(a).
Educational Institutions 295
(b) making a copy of a work to be used to project an image of that copy

using an overhead projector or similar device,31 but only if the work is
not commercially available in an appropriate medium;32
(c) (i) reproducing, translating, or performing, in public on the premises
of the educational institution, or (ii) communicating by telecommunication to the public situated on the premises of the educational institution, a work or other subject-matter as required for a test or
examination,33 but only if the work or other subject-matter is not commercially available in an appropriate medium;34
(d) the live performance in public, primarily by students of the educational institution, of a work; the performance in public of a sound
recording or of a work or performers performance that is embodied in
a sound recording; and the performance in public of a work or other
subject-matter at the time of its communication to the public by telecommunication, before an audience consisting primarily of students
of the educational institution, instructors acting under the authority of
the educational institution, or any person who is directly responsible
for setting a curriculum for the educational institution;35
(e) making, at the time of its communication to the public by telecommunication, a single copy of a news program or a news commentary
program, excluding documentaries, for the purposes of performing
the copy for the students of the educational institution for educational
or training purposes;36
(f) performing the copy in public, at any time or times within one year
after the making of a copy, before an audience consisting primarily of
students of the educational institution on its premises for educational
or training purposes;37
(g) making a single copy of a work or other subject-matter at the time that
it is communicated to the public by telecommunication and keeping
31.
32.
33.
34.
35.
36.
Subsection 29.4(1)(b).
Subsection 29.4(3).
Subsection 29.4(2).
Subsection 29.4(3).
Subsection 29.5.
Subsection 29.6(1)(a) and see subsection 29.9 concerning record keeping and marking
requirements.
37. Subsection 29.6(1)(b). Subsection 29.6(2) provides that the educational institution must
(a) on the expiration of one year after making a copy under paragraph (1)(a), pay the royalties and comply with any terms and conditions fixed under the Act for the making of
the copy or destroy the copy; and (b) where it has paid the royalties referred to in paragraph
(a), pay the royalties and comply with any terms and conditions fixed under the Act for any
performance in public of the copy after the expiration of that year.
the copy for up to 30 days to decide whether to perform the copy for
educational or training purposes.38
The exceptions described in paragraphs d) through g) above do not apply
where the communication to the public by telecommunication was received
39
by unlawful means.
The publication in a collection, mainly composed of non-copyright matter,
intended for the use of educational institutions, and so described in the title
and in any advertisements issued by the publisher, of short passages from
published literary works in which copyright subsists and not themselves published for the use of educational institutions, does not infringe copyright in
those published literary works if
a) not more than two passages from works by the same author are published by the same publisher within five years;
b) the source from which the passages are taken is acknowledged; and
c) the name of the author, if given in the source, is mentioned.40

a) Denitions
The Act provides that library, archive, or museum means
(a) an institution, whether or not incorporated, that is not established or
conducted for profit or that does not form a part of, or is not administered or directly or indirectly controlled by, a body that is established
or conducted for profit, in which is held and maintained a collection
38. Section 29.7 and see subsection 29.9 concerning record keeping and marking requirements.
Subsection 29.7(2) provides that an educational institution that has not destroyed the copy
by the expiration of the 30 days infringes copyright in the work or other subject-matter
unless it pays any royalties, and complies with any terms and conditions, fixed under the Act
for the making of the copy.
39. Section 29.8.
40. Section 30.
Libraries, Archives, and Museums
of documents and other materials that is open to the public or to

researchers, or
(b) any other non-profit institution prescribed by regulation.41
In order to come within the statutory definition of a library, an institution (1)
must not be established or conducted for profit; (2) must not be administered
or controlled by a body that is established or conducted for profit; and (3)
must hold and maintain a collection of documents and other material that is
open to the public or to researchers. Libraries in the for-profit sector may not
take advantage of the exceptions.
The Supreme Court of Canada found that the Great Library administered
and operated by the Law Society of Upper Canada for the bar and the public
came within the definition. It was not established or conducted for profit. It
was administered and controlled by the Benchers of the Law Society. Although
some of the Benchers, when acting in other capacities, practice law for profit,
when they are acting as administrators of the Great Library, the Benchers
were not acting as a body established or conducted for profit.42

Section 30.1 provides it is not an infringement of copyright for a library,
archive, or a museum or a person acting under the authority a library, archive,
or a museum to make, for the maintenance or management of its permanent
collection or the permanent collection of another library, archive, or museum,
a copy of a work or other subject-matter, whether published or unpublished,
in its permanent collection in accordance with the regulations, in the following circumstances:
(a) if the original is rare or unpublished and is deteriorating, damaged, or
lost, or at risk of such a fate;
(b) for the purposes of on-site consultation, if the original cannot be
viewed, handled, or listened to because of its condition or because of
the atmospheric conditions in which it must be kept;
(c) in an alternative format if the original is currently in an obsolete format
or the technology required to use the original is unavailable;
(d) for the purposes of internal record-keeping and cataloguing;
(e) for insurance purposes or police investigations; or
(f) if necessary for restoration.
41. Section 2.
42. CCH Canadian Ltd v. Law Society of Upper Canada (2004), 30 C.P.R. (4th) 1 (S.C.C.).
297
The exception does not apply to the activities described in paragraphs a)

to c) if an appropriate copy is commercially available43 in a medium and of
a quality that is appropriate for the purposes of maintenance or management.
In addition, intermediate or temporary copies must be destroyed as soon as
they are no longer needed.44
Subsection 30.2 (1) provides that it is not an infringement for a library,
archive, or museum or a person acting under the authority a library, archive,
or a museum to do anything on behalf of any person that the person may do
personally under section 29 or 29.1. It extends to a library, archive, or museum
the exceptions relating to fair dealing for the purpose of research, private
study, criticism, or review. 45
Subsection 30.2 (2) provides that it is not an infringement of copyright for
a library, archive, or museum or a person acting under the authority a library,
archive, or a museum to make, by reprographic reproduction, for a person
requesting to use the copy for research or private study, a copy of a work that
is, or that is contained in, an article published in (a) a scholarly, scientific, or
technical periodical; or (b) a newspaper or periodical, other than a scholarly,
scientific, or technical periodical, if the newspaper or periodical was published
more than one year before the copy is made. Paragraph (b) does not apply in
respect of a work of fiction or poetry or a dramatic or musical work.46
The library, archive, or museum may make a copy only on condition that
(a) the person for whom the copy will be made has satisfied the library,
archive, or museum that the person will not use the copy for a purpose
other than research or private study; and
(b) the person is provided with a single copy of the work.47
The regulations provide that the library, archive, or museum or the person
acting under the authority of one of them, that makes the copy of the work
must inform the person requesting the copy by means of text printed on the
copy or a stamp applied to the copy, if the copy is in printed form, or by other
appropriate means that the copy is to be used for the purpose of research or
43. See section 2 which provides that commercially available means, in relation to a work or
other subject-matter, (a) available on the Canadian market within a reasonable time and for
a reasonable price and may be located with reasonable effort, or (b) for which a licence to
reproduce, perform in public or communicate to the public by telecommunication is available from a collective society within a reasonable time and for a reasonable price and may be
located with reasonable effort.
45. The Supreme Court of Canada. arrived at the same result in CCH Canadian Ltd v. Law Society of Upper Canada (2004), 30 C.P.R. (4th) 1 (S.C.C.).
47. Section 30.2(4).
Machines Installed in Educational Institutions, Libraries, Archives, and Museums 299
private study and that any use of the copy for a purpose other than research
or private study may require the authorization of the copyright owner.48
The exceptions extend to a person acting under the authority of a library,
archive, or museum and individuals authorized to carry out the activities
described in sections 30.1 and 30.2 may take advantage of those sections.
A library, archive, or museum may do, on behalf of a person who is a
patron of another library, archive, or museum, the excepted activities
described above that it is authorized to do on behalf of its patrons, but the
copy given to the patron must not be in digital form.49
Under section 30.21, it is not an infringement of copyright for an archive
to make a copy of an unpublished work that is deposited in the archive. In
order to apply, the archive must give the person who deposits a work in an
archive notice at the time of deposit that it may copy the work in accordance
with the section. The archive may only copy the work if
(a) the person who deposited the work, if a copyright owner, did not, at
the time the work was deposited, prohibit its copying;
(b) copying has not been prohibited by any other owner of copyright in
the work; and
(c) the archive is satisfied that the person for whom it is made will use the
copy only for purposes of research or private study and makes only
one copy for that person.50
5. Machines Installed in Educational

Institutions, Libraries, Archives, and Museums
Section 30.3 provides that:
(1) An educational institution or a library, archive, or museum does not
infringe copyright where
(a) a copy of a work is made using a machine for the making, by
reprographic reproduction, of copies of works in printed form;
(b) the machine is installed by or with the approval of the educational
institution, library, archive, or museum on its premises for use by
48. Exceptions for Educational Institutions, Libraries, Archives, and Museum Regulations, SOR/
99325 section 7.
(2)
(3)
(4)
(5)
students, instructors, or staff at the educational institution or by

persons using the library, archive, or museum; and
(c) here is affixed in the prescribed manner and location, a notice
warning of infringement of copyright.
Subsection (1) only applies if, in respect of a reprographic reproduction,
(a) the educational institution, library, archive, or museum has entered
into an agreement with a collective society that is authorized by
copyright owners to grant licenses on their behalf;
(b) the Copyright Board has, in accordance with section 70.2, fixed
the royalties and related terms and conditions in respect of a
license;
(c) a tariff has been approved in accordance with section 70.15; or
(d) a collective society has filed a proposed tariff in accordance with
section 70.13.
Where a collective society offers to negotiate or has begun to negotiate
an agreement referred to in paragraph (2)(a), the Board may, at the
request of either party, order that the educational institution, library,
archive, or museum be treated as an institution to which subsection
(1) applies, during the period specified in the order.
Where an educational institution, library, archive, or museum has
entered into an agreement with a copyright owner other than a collective society respecting reprographic reproduction, subsection (1) applies
only in respect of the works of the copyright owner that are covered by
the agreement.
The Governor in Council may, for the purposes of paragraph 1(c),
prescribe by regulation the manner of affixing and location of notices
and the dimensions, form, and contents of notices.
Concern that educational institutions and libraries could be liable for authorizing infringement relating to the use photocopiers on their premises lead to
implementation of this exception.51
The regulations provide that an educational institution, a library, an
archive, or a museum shall ensure that a notice that contains at least the following information is affixed to, or within the immediate vicinity of, every
photocopier in a place and manner that is readily visible and legible to persons using the photocopier.52
51. The Supreme Court of Canada. in the case of CCH Canadian Ltd v. Law Society of Upper
Canada (2004), 30 C.P.R. (4th) 1 (S.C.C.) found that the evidence did not establish that the
Law Society authorized copyright infringement by providing self-service photocopiers and
copies of the respondent publishers works for use by its patrons in the Great Library.
52. See Exceptions for Educational Institutions, Libraries, Archives and Museum Regulations,
SOR/99325 section 8.
Computer Programs
WARNING!
Works protected by copyright may be copied on this photocopier only if authorized by
(a) the Copyright Act for the purpose of fair dealing or under specific exceptions set out in that Act;
(b) the copyright owner; or
(c) a license agreement between this institution and a collective society or a
tariff, if any.
For details of authorized copying, please consult the license agreement or the
applicable tariff, if any, and other relevant information available from a staff
member. The Copyright Act provides for civil and criminal remedies for infringement of copyright.
It is not an infringement of copyright in a computer program for a person
who owns a copy of the computer program that is authorized by the owner of
the copyright to
(a) make a single reproduction of the copy by adapting, modifying, or
converting the computer program or translating it into another computer language if the person proves that the reproduced copy is
(i) essential for the compatibility of the computer program with a
particular computer,
(ii) solely for the persons own use, and
(iii) destroyed immediately after the person ceases to be the owner of
the copy; or
(b) make a single reproduction for backup purposes of the copy or of a
reproduced copy referred to in paragraph (a) if the person proves
that the reproduction for backup purposes is destroyed immediately
when the person ceases to be the owner of the copy of the computer
program.
The exceptions are only available to a person who owns a copy of the computer program that is authorized by the owner of the copyright. A licensee
of a computer program only has a right to use the program and does not
own the copy of the program and will not be able to take advantage of the
exceptions.
301
302
7. The Incidental Inclusion of a Work in

Another Work
Section 30.7 provides that it is not an infringement of copyright to incidentally and not deliberately53
(a) include a work or other subject-matter in another work or other subject-matter; or
(b) do any act in relation to a work or other subject-matter that is incidentally and not deliberately included in another work or other subjectmatter.
(1) It is not an infringement of copyright for a programming undertaking
to fix or reproduce in accordance with this section a performers performance or work, other than a cinematographic work, that is performed live or a sound recording that is performed at the same time as
the performers performance or work, if the undertaking
(a) is authorized to communicate the performers performance, work,
or sound recording to the public by telecommunication;
(b) makes the fixation or the reproduction itself, for its own broadcasts;
(c) does not synchronize the fixation or reproduction with all or part
of another recording, performers performance, or work; and
53. See The Football Association Premier League Ltd. v. Panini UK Ltd., [2003] EWCA Civ 995
(U.K.C.A.) concerning the interpretation of these words under the UK legislation. There are
no Canadian cases.
54. Regulations Prescribing Networks (Copyright Act), SOR/99348 provides a definition of
prescribed networks.
Ephemeral Recordings 303
(2)
(3)
(4)
(5)
(6)
(7)
(8)
(9)
(10)
(11)
(d) does not cause the fixation or reproduction to be used in an

advertisement intended to sell or promote, as the case may be, a
product, service, cause, or institution.
The programming undertaking must record the dates of the making
and destruction of all fixations and reproductions and any other prescribed information about the fixation or reproduction, and keep the
record current.
The programming undertaking must make the record referred to in
subsection (2) available to owners of copyright in the works, sound
recordings, or performers performances, or their representatives,
within 24 hours after receiving a request.
The programming undertaking must destroy the fixation or reproduction within 30 days after making it, unless
(a) the copyright owner authorizes its retention; or
(b) it is deposited in an archive, in accordance with subsection (6).
Where the copyright owner authorizes the fixation or reproduction
to be retained after the 30 days, the programming undertaking must
pay any applicable royalty.
Where the programming undertaking considers a fixation or reproduction to be of an exceptional documentary character, the undertaking may, with the consent of an official archive, deposit it in the
official archive and must notify the copyright owner, within 30 days,
of the deposit of the fixation or reproduction.
In subsection (6), official archive means the Library and Archives
of Canada or any archive established under the law of a province for
the preservation of the official archives of the province.
This section does not apply where a license is available from a collective society to make the fixation or reproduction of the performers
performance, work, or sound recording.
A broadcasting undertaking, as defined in the Broadcasting Act, may
make a single reproduction of a fixation or reproduction made by a
programming undertaking and communicate it to the public by telecommunication, within the period referred to in subsection (4), if
the broadcasting undertaking meets the conditions set out in subsection (1) and is part of a prescribed network that includes the
programming undertaking.
The reproduction and communication to the public by telecommunication must be made
(a) in accordance with subsections (2) to (6); and
(b) within 30 days after the day on which the programming undertaking made the fixation or reproduction.
In this section, programming undertaking means
(a) a programming undertaking as defined in subsection 2(1) of the
Broadcasting Act;
304
(b) a programming undertaking described in paragraph (a) that

originates programs within a network, as defined in subsection
2(1) of the Broadcasting Act; or
(c) a distribution undertaking as defined in subsection 2(1) of the
Broadcasting Act, in respect of the programs that it originates.
The undertaking must hold a broadcasting license issued by the Canadian Radiotelevision and Telecommunications Commission under the Broadcasting Act.
Prior to adding section 30.8 to the Act in 1999, it was held by the Supreme
Court of Canada that the right to broadcast a performance under subsection
3(1) of the Act did not include the right to make ephemeral recordings for
the purposes of facilitating the broadcast.55
The exception is of limited application. It only applies to a performers
performance or work, other than a cinematographic work, that is performed
live or a sound recording that is performed at the same time as the performers performance or work. There are a significant number of conditions which
must be satisfied and the section does not apply where a license is available
from a collective society.
(1) It is not an infringement of copyright for a broadcasting undertaking
to reproduce in accordance with this section a sound recording, or a
performers performance or work that is embodied in a sound recording, solely for the purpose of transferring it to a format appropriate for
broadcasting, if the undertaking
(a) owns the copy of the sound recording, performers performance or
work and that copy is authorized by the owner of the copyright;
(b) is authorized to communicate the sound recording, performers
performance, or work to the public by telecommunication;
(c) makes the reproduction itself, for its own broadcasts;
(d) does not synchronize the reproduction with all or part of another
recording, performers performance, or work; and
55. Bishop v. Stevens, [1990] 2 S.C.R 647, 31 C.P.R. (3d) 394 (S.C.C.).
Retransmission
(2)
(3)
(4)
(5)
(6)
(7)
(e) does not cause the reproduction to be used in an advertisement

intended to sell or promote, as the case may be, a product, service,
cause, or institution.
The broadcasting undertaking must record the dates of the making
and destruction of all reproductions and any other prescribed information about the reproduction, and keep the record current.
The broadcasting undertaking must make the record referred to in
subsection (2) available to owners of copyright in the sound recordings, performers performances or works, or their representatives,
within 24 hours after receiving a request.
The broadcasting undertaking must destroy the reproduction when it
no longer possesses the sound recording or performers performance or
work embodied in the sound recording, or at the latest within 30 days
after making the reproduction, unless the copyright owner authorizes
the reproduction to be retained.
If the copyright owner authorizes the reproduction to be retained, the
broadcasting undertaking must pay any applicable royalty.
This section does not apply if a license is available from a collective
society to reproduce the sound recording, performers performance,
or work.
In this section, broadcasting undertaking means a broadcasting
undertaking as defined in subsection 2(1) of the Broadcasting Act that
holds a broadcasting license issued by the Canadian Radio-television
and Telecommunications Commission under that Act.
The exception relates to the reproduction of a sound recording, or a performers performance, or work that is embodied in a sound recording, solely
for the purpose of transferring it to a format appropriate for broadcasting.
Like the exception for ephemeral recordings, the exception is subject to a
significant number of conditions and does not apply where a license is available from a collective society to reproduce the sound recording, performers
performance, or work.
10. Retransmission
Section 31(2) provides that it is not an infringement of copyright for a retransmitter to communicate to the public by telecommunication any literary,
dramatic, musical, or artistic work if
(a) the communication is a retransmission of a local or distant signal;
305
306
(b) the retransmission is lawful under the Broadcasting Act;

(c) the signal is retransmitted simultaneously and in its entirety, except as
otherwise required or permitted by or under the laws of Canada;
(d) in the case of the retransmission of a distant signal, the retransmitter
has paid any royalties, and complied with any terms and conditions,
fixed under this Act; and
(e) the retransmitter complies with the applicable conditions, if any,
referred to in paragraph (3)(b).
In the section new media retransmitter means a person whose retransmission is lawful under the Broadcasting Act only by reason of the Exemption
Order for New Media Broadcasting Undertakings issued by the Canadian
Radio-television and Telecommunications Commission as Appendix A to
Public Notice CRTC 1999197,56 as amended from time to time; retransmitter means a person who performs a function comparable to that of a cable
retransmission system, but does not include a new media retransmitter; and
signal means a signal that carries a literary, dramatic, musical, or artistic
work and is transmitted for free reception by the public by a terrestrial radio
or terrestrial television station.
The Copyright Act distinguishes between the transmission and the retransmission by telecommunication. In broad terms, those who transmit a work
by telecommunication are subject to the rights of the copyright owners pursuant to section 3(1)(f ) and those who engage in retransmission come within
the compensation scheme created by section 31.
The Canada-United States Free Trade Agreement required that copyright holders be provided with a right of equitable and non-discriminatory
remuneration for any retransmission to the public of a copyright holders
program where the original transmission of the program was carried in
distant signals intended for free, over-the-air reception by the general
public.57
Section 31 creates a compulsory license and compensation scheme for
copyright owners with respect to the retransmission of their works by cable
retransmission. The rights of copyright owners to communicate their
works by telecommunication is limited and reduced to receiving remuneration for retransmission. The amount of the remuneration is fixed by the
56. The effect of the order is to exclude third party Internet retransmitters from the compulsory
license scheme of section 31.
57. Article 2006 Canada-United States Free Trade Agreement.
Persons with Perceptual Disabilities
Copyright Board and retransmitters may take advantage of the statutory

license.58
No remuneration is payable under section 31 with respect to the retransmission of a local signal. The Local Signal and Distant Signal Regulations59
specify what is meant by these terms.

Section 32 provides that it is not an infringement of copyright for a person, at
the request of a person with a perceptual disability,60 or for a non-profit organization acting for his or her benefit, to
(a) make a copy or sound recording of a literary, musical, artistic, or dramatic work, other than a cinematographic work, in a format specially
designed for persons with a perceptual disability;
(b) translate, adapt, or reproduce in sign language a literary or dramatic work,
other than a cinematographic work, in a format specially designed for
persons with a perceptual disability; or
(c) perform in public a literary or dramatic work, other than a cinematographic work, in sign language, either live or in a format specially
designed for persons with a perceptual disability.
The exception does not authorize the making of a large print book61 and does
not apply where the work or sound recording is commercially available in a
format specially designed to meet the needs of any person referred to in that

59. SOR/89254.
60. Section 2 provides that perceptual disability means a disability that prevents or inhibits a
person from reading or hearing a literary, musical, dramatic, or artistic work in its original
format, and includes such a disability resulting from
(a) severe or total impairment of sight or hearing or the inability to focus or move ones eyes,
(b) the inability to hold or manipulate a book, or
(c) an impairment relating to comprehension.
307
subsection, within the meaning of paragraph (a) of the definition commercially available.62

Section 32.1(1) provides that it is not an infringement of copyright for any
person
(a) to disclose, pursuant to the Access to Information Act, a record
within the meaning of that Act, or to disclose, pursuant to any like
Act of the legislature of a province, like material;
(b) to disclose, pursuant to the Privacy Act, personal information
within the meaning of that Act, or to disclose, pursuant to any like
Act of the legislature of a province, like information;
(c) to make a copy of an object referred to in section 14 of the Cultural
Property Export and Import Act, for deposit in an institution pursuant to a direction under that section; and
(d) to make a fixation or copy of a work or other subject-matter in
order to comply with the Broadcasting Act or any rule, regulation,
or other instrument made under it.
(2) Nothing in paragraph (1)(a) or (b) authorizes a person to whom a
record or information is disclosed to do anything that, by this Act, only
the owner of the copyright in the record, personal information or like
information, as the case may be, has a right to do.
(3) Unless the Broadcasting Act otherwise provides, a person who makes a
fixation or copy under paragraph (1)(d) shall destroy it immediately
on the expiration of the period for which it must be kept pursuant to
that Act, rule, regulation or other instrument.
62. Subsection 32(3) and see section 2 which provides that commercially available means, in
relation to a work or other subject-matter, (a) available on the Canadian market within a
reasonable time and for a reasonable price and may be located with reasonable effort.
Miscellaneous Exceptions

a) Artistic Works
Section 32.2 (1)(a) provides that it is not an infringement of copyright for an
author of an artistic work who is not the owner of the copyright in the work
to use any mould, cast, sketch, plan, model, or study made by the author for
the purpose of the work, if the author does not thereby repeat or imitate the
main design of the work.
b) Architectural Works, and Sculptures or Works of Artistic

Section 32.2 (1)(b) provides that it is not an infringement of copyright for any
person to reproduce, in a painting, drawing, engraving, photograph, or cinematographic work
(i) an architectural work,63 provided the copy is not in the nature of an
architectural drawing or plan, or
(ii) a sculpture or work of artistic craftsmanship or a cast or model of a
sculpture or work of artistic craftsmanship, that is permanently situated in a public place or building.64

Section 32.2 (1)(c) provides that it is not an infringement of copyright for any
person to make or publish, for the purposes of news reporting or news summary, a report of a lecture65 given in public, unless the report is prohibited by
conspicuous written or printed notice affixed before and maintained during
the lecture at or about the main entrance of the building in which the lecture
is given, and, except while the building is being used for public worship, in a
position near the lecturer.
63. Section 2 provides that architectural work means any building or structure or any model of
a building or structure.
64. The exhibition of a sculpture or work of artistic craftsmanship in a gallery or at temporary
public exhibitions does not come within the section; Therrien v. Schola Inc. [1982] 1 F.C.
D-864 (F.C.T.D.).
65. Section 2 provides that lecture includes an address, speech, and sermon.
309
310

Section 32.2 (1)(d) provides that it is not an infringement of copyright for any
person to read or recite in public a reasonable extract from a published
work.
e) Report of an Address of a Political Nature Given

at a Public Meeting
Section 32.2 (1)(e) provides that it is not an infringement of copyright for any
person to make or publish, for the purposes of news reporting or news summary, a report of an address of a political nature given at a public meeting.
f) Performance at any Agricultural or Agricultural-Industrial

Exhibition or Fair
Section 32.2 (2) provides that it is not an infringement of copyright for a
person to do any of the following acts without motive of gain at any agricultural or agricultural-industrial exhibition or fair that receives a grant from or
is held by its directors under federal, provincial, or municipal authority:
(a) the live performance in public of a musical work;
(b) the performance in public of a sound recording embodying a musical
work or a performers performance of a musical work; or
(c) the performance in public of a communication signal carrying
(i) the live performance in public of a musical work, or
(ii) a sound recording embodying a musical work or a performers
performance of a musical work.
The performance must be without motive of gain. The words without
motive of gain are not restricted to circumstances where the motive of gain
is the main or the only motive. If financial advantage was one of the objects
of the exhibition, the exception should not apply.66
66. Composers, Authors and Publishers Association of Canada Ltd. v. Western Fair Association
(1950), 13 C.P.R. 26 (Ont. C.A.), [1951] S.C.R. 596, 15 C.P.R. 45, (S.C.C.).
Miscellaneous Exceptions

or Fraternal Bodies
Section 32.2 (3) provides that no religious organization or institution, educational institution67 and no charitable or fraternal organization shall be held
liable to pay any compensation for doing any of the following acts in furtherance of a religious, educational or charitable object:
(a) the live performance in public of a musical work;
(b) the performance in public of a sound recording embodying a musical
work or a performers performance of a musical work; or
(c) the performance in public of a communication signal carrying
(i) the live performance in public of a musical work, or
(ii) a sound recording embodying a musical work or a performers
performance of a musical work.
The performance must be in furtherance of a religious, educational or
charitable object.68
Section 32.3, provides that for the purposes of the exceptions set out in sections 29 to 32.2, an act that does not infringe copyright does not give rise to a
right to remuneration conferred by section 19.

Section 30.5 provides that it is not an infringement of copyright for the
Librarian and Archivist of Canada under the Library and Archives of Canada
Act, to
(a) make a copy of a work or other subject-matter in taking a representative sample for the purpose of preservation under subsection 8(2) of
that Act;
(b) effect the fixation of a copy of a publication, as defined in section 2 of
that Act, that is provided by telecommunication in accordance with
subsection 10(1) of that Act;
67. See part 3 of this chapter for the definition.

68. Composers, Authors and Publishers Association of Canada Ltd. v. Kiwanis Club of West Toronto
[1953] 2 S.C.R. 111, 19 C.P.R. 20 (S.C.C).
311
(c) make a copy of a recording, as defined in subsection 11(2) of that Act,

for the purposes of section 11 of that Act; or
(d) at the time that a broadcasting undertaking, as defined in subsection
2(1) of the Broadcasting Act, communicates a work or other subjectmatter to the public by telecommunication, make a copy of the work
or other subject-matter that is included in that communication.
CHAP T ER
30
Actions for Infringement of Copyright
1. Jurisdiction
315

a) Section 44
316
316
316
i) Works
316
ii) Importation of Books
317
iii) Other Subject Matter
318
iv) Procedure
318
c) Exceptions
319
320
320
b) The Author
321
321
i) Proprietary Licenses
322
ii) Assignees
322
f) Defendants
322
i) Directors and Ocers

4. Pleadings
323
323
a) Notice of Claim
323
324
324
i) Lack of Awareness
324
d) Particulars
325
325
325
313
314 Chapter 30 Actions for Infringement of Copyright

325
8. Discovery
326
327
327
a) Presumptions
328
328
328
d) Expert Evidence
328
11. Remedies
329
329
i) Grant
329
ii) Wide Injunction
330
iii) Breach of Injunction
330
330
332
d) Damages
332
i) Assessment of Damages
332
ii) Nominal Damages
333
iii) Punitive or Exemplary Damages
333
e) Account of Prots
334
334
i) Availability
336
ii) Assessment
336
g) Delivery Up
337
h) Costs
337
Jurisdiction
1. Jurisdiction
The Federal Court has concurrent jurisdiction with provincial superior
courts to hear and determine all proceedings, other than the prosecution of
offences under section 42 and 43, for the enforcement of a provision of the
Copyright Act or of the civil remedies provided by the Act.1
Provincial superior courts have general and inherent jurisdiction.2 They
are presumed to have jurisdiction.3 However, a judgment of a provincial
court is only effective in its particular jurisdiction.
The Federal Court is without any inherent jurisdiction.4 In order to have
jurisdiction, the following matters must be established:
a) a statutory grant of jurisdiction by the Federal Parliament;
b) an existing body of federal law which is essential to the disposition of
the case and which nourishes the statutory grant of jurisdiction; and
c) the law on which the case is based must be a law of Canada as the
5
phrase is used in s. 101 of the Constitution Act, 1867.
Once it is shown that the Federal Court has jurisdiction, the Court has
territorial jurisdiction for all of Canada and its judgments are effective across
the country.
The grant of jurisdiction under the Copyright Act does not give the Federal
Court jurisdiction in an action for breach of contract or concerning the terms
of a license relating to copyright. However, if the contractual disagreement is
incidental and the primary subject matter of the action relates to the infringement of copyright, the court will have jurisdiction.6
Copyright is territorial in nature, notwithstanding the existence of the
International Conventions or other treaties. Historically, the territorial limits
relating to copyright have precluded extra territorial proceedings on the basis
that a territorial right cannot be violated by an extraterritorial act.7
A Canadian court may decline jurisdiction under the doctrine known as
forum non conveniens.8 In addition, a Canadian Court may in its discretion
1.
2.
3.
4.
5.
6.
Copyright Act, section 37; Federal Court Act, R.S.C. 1985, c. F-7 as amended, section 20.
R. v. Thomas Fuller Construction Co (1958) Ltd. [1980] 1 S.C.R. 695 (S.C.C.).
Board v. Board, [1919] A.C. 956 (J.C.P.C.).
Roberts v. Canada, [1989] 1 S.C.R. 322 (S.C.C.).
Ito-Int. Terminal Operators Ltd. v. Miida Electronics Inc., [1986] 1 S.C.R. 752 (S.C.C.).
Titan Linkabit Corp. v. S.E.E. Electronic Engineering Inc. (1992), 44 C.P.R. (3d) 469 (F.C.T.D.);
Possian v. Canadian Olympic Association (1996), 74 C.P.R. (3d) 509 (F.C.T.D.).
7. Def Lepp Music v. Stuart-Brown [1986] R.P.C. 273 (U.K. Ch.); Pearce v. Ove Arup Partnership
Ltd. [1997] 2 W.L.R. 779 (U.K. Ch.).
8. Folkes v. Greensleeves Publishing Ltd (1997), 76 C.P.R. (3d) 359 (Ont.Ct. (Gen. Div.)), appeal
dismissed (1998), 85 C.P.R. (3d) 144 (Ont. C.A.).
315
316
Chapter 30 Actions for Infringement of Copyright
stay an action on the ground that the claim is being proceeded with in another
9
jurisdiction.

a) Section 44
Section 44 of the Act provides that copies made out of Canada of any work in
which copyright subsists that if made in Canada would infringe copyright
and as to which the owner gives notice in writing to the Canada Border
Services Agency that the owner desires that the copies not be imported into
Canada, shall not be so imported and are deemed to be included in tariff item
No. 9897.00.000 in the list of Tariff Provisions set out in the schedule to the
Customs Tariff and section 136 of that Act applies accordingly.10
Under the section, the Minister is required to make a determination of the
copyright owners rights on an ex parte basis without any notice to the
aggrieved importer. The Federal Court has refused applications for an order
of mandamus to compel action under the section on the basis that there is no
clear duty on the part of the Minister owed to the applicant to perform any
specific act.11
i) Works
Section 44.1, which deals with works, was added to the Act in 1993 to give
effect to Canadas obligations under the North American Free Trade
Agreement.12 The section allows the making of a an order in proscribed form
when the court is satisfied that
(a) copies of the work are about to be imported into Canada, or have been
imported into Canada but have not yet been released
9. Federal Court Act, R.S.C. 1985, c. F-7, section 50.

10. Section 44.
11. Dennison Manufacturing Co. v. Min. of Nat. Revenue, [1988] 1 F.C. 492 (F.C.T.D.); Takara Co.
Ltd. v. Gamex International Inc. (1989), 28 C.P.R. (3d) 575 (F.C.T.D.).
12. North American Free Trade Agreement Implementation Act, S.C. 1993, c. 44, section 66 proclaimed into force January 1, 1994.
Seizure of Imported Copies 317
(b) either
(i) copies of the work were made without the consent of the person
who then owned the copyright in the country where the copies
were made, or
(ii) the copies were made elsewhere than in a country to which this
Act extends; and
(c) the copies would infringe copyright if they were made in Canada by
the importer and the importer knows or should have known this.
An application under the section may be made by the owner or the exclusive
licensee of copyright in a work in Canada.13
ii) Importation of Books
Section 44.2 allows the making of a an order when the court is satisfied that
in relation to a book
(a) copies of the book are about to be imported into Canada, or have been
imported into Canada but have not yet been released;
(b) copies of the book were made with the consent of the owner of the
copyright in the book in the country where the copies were made, but
were imported without the consent of the owner in Canada of the
copyright in the book;
(c) the copies would infringe copyright if they were made in Canada by
the importer and the importer knows or should have known this;
and
(d) there is an exclusive distributor of the book and the acts objected to
take place in the part of Canada or in respect of the particular sector of
the market for which the person is the exclusive distributor.
An application may be made by the owner of the copyright in the book in
Canada, the exclusive licensee of the copyright in the book in Canada, or the
exclusive distributor of the book.14
An exclusive licensee of the copyright in a book in Canada and an exclusive distributor of a book may not obtain an order under section 44.2 against
another exclusive licensee of the copyright in that book in Canada or against
another exclusive distributor of that book.15
13. Subsection 44.1(2.1).

15. Section 44.3.
318
iii) Other Subject Matter

Section 44.4 allows the making of a an order when the court is satisfied that
in respect of a sound recording, performers performance, or communication
signal, where a fixation or a reproduction of a fixation of it
(a) is about to be imported into Canada, or has been imported into Canada
but has not yet been released;
(b) either
(i) was made without the consent of the person who then owned the
copyright in the sound recording, performers performance, or
communication signal, as the case may be, in the country where
the fixation or reproduction was made, or
(ii) was made elsewhere than in a country to which Part II of the Act
extends; and
(c) would infringe the right of the owner of copyright in the sound recording, performers performance, or communication signal if it was made
in Canada by the importer and the importer knows or should have
known this.
iv) Procedure
The same procedure applies whether an application is brought pursuant to
sections 44.1, 44.2 or 44.4.
The sections only apply when copies of a work, book, or other subjectmatter, as the case may be, is about to be imported or has been imported
into Canada but has not yet been released. It is difficult to obtain such information which significantly restricts the application of the sections.
An application must be heard by the Federal Court or the superior court
of a province.16 An application for an order may be made in an action or
otherwise, and either on notice or ex parte, except that it must always be made
on notice to the Minister of Public Safety and Emergency Preparedness.17
The court may make an order
(a) directing the Minister;
( i) to take reasonable measures, on the basis of information reasonably required by the Minister and provided by the applicant, to
detain the work, and
(ii) to notify the applicant and the importer, forthwith after detaining
the work, of the detention and the reasons therefor; and
(b) providing for such other matters as the court considers appropriate.18

Seizure of Imported Copies 319
Before making an order the court may require the applicant to furnish
security, in an amount fixed by the court, to cover duties, storage, and handling charges, and any other amount that may become chargeable against the
work and to answer any damages that may, by reason of the order, be incurred
by the owner, importer, or consignee of the work.19
The Minister of Revenue is given the right to apply to the court for directions in implementing an order made under the sections.20
The Minister may give the applicant or the importer an opportunity to
inspect the detained work for the purpose of substantiating or refuting, as the
case may be, the applicants claim.21
Unless an order provides otherwise, the Minister shall, subject to the
Customs Act and to any other Act of Parliament that prohibits, controls, or
regulates the importation or exportation of goods, release the copies of the
work without further notice to the applicant if, two weeks after the applicant
has been notified by the Minister of the detention of the goods, the applicant
has not notified the Minister that the applicant has commenced a proceeding
for a final determination by the court of the matters in issue.22
Where, in a proceeding commenced under the section, the court finds that
the circumstances required for the application of the section exist, the court
may make any order that it considers appropriate in the circumstances,
including an order that the copies of the work be destroyed, or that they be
delivered up to the plaintiff as the plaintiffs property absolutely.23
The Act provides that for greater certainty, nothing in section 44.1 affects
any remedy available under any other provision of the Act or any other Act of
Parliament.24
c) Exceptions
Section 45 of the Act contains exceptions relevant to the importation of copies
of works. The section provides that notwithstanding anything in the Act, it is
lawful for a person
(a) to import for their own use not more than two copies of a work or
other subject-matter made with the consent of the owner of the copyright in the country where it was made;
19.
20.
21.
22.
23.
24.
Subsection 44.1(5).
Subsection 44.1(6).
Subsection 44.1(7).
Subsection 44.1(8).
Subsection 44.1(9).
Subsection 44.1(10).
(b) to import for use by a department of the Government of Canada or a

province copies of a work or other subject-matter made with the
consent of the owner of the copyright in the country where it was
made;
(c) at any time before copies of a work or other subject-matter are made in
Canada, to import any copies, except copies of a book, made with the
consent of the owner of the copyright in the country where the copies
were made, that are required for the use of a library, archive, museum,
or educational institution;
(d) to import, for the use of a library, archive, museum, or educational
institution, not more than one copy of a book that is made with the
consent of the owner of the copyright in the country where the book
was made; and
(e) to import copies, made with the consent of the owner of the copyright
in the country where they were made, of any used books, except textbooks of a scientific, technical, or scholarly nature for use within an
educational institution in a course of instruction.
An officer of customs may, in the officers discretion, require a person seeking to import a copy of a work or other subject-matter under these exceptions
to produce satisfactory evidence of the facts necessary to establish the persons right to import the copy.25

The owner of the copyright in a work is entitled to exercise the rights set out
in section 3 of the Act, including the right to authorize others to exercise such
rights.26 The right to sue for infringement is not available to agents who
simply represent the interests of the copyright owner.27

26. Section 3 and section 34(1) and see Chapter 22, part 7 concerning a claim by a joint author.
27. Bishop v. Stevens, [1990] 2 S.C.R. 467 (S.C.C.).
Parties to Actions in the Courts 321
A class action under the Ontario Class Proceedings Act, 199228 consisting
of creators and/or owners of copyright is possible if the requirements of that
Act are satisfied.29
b) The Author
An author of a work is entitled to exercise the moral rights associated with the
work.30

Subsection 36(1) provides that any person or persons deriving any right,
title, or interest by assignment or grant in writing from the owner, may
individually for himself or herself, as a party to the proceedings in his or her
own name, protect and enforce any right that he or she holds, and, to the
extent of that right, title, and interest, is entitled to the remedies provided by
this Act.31
In order that separate rights may be protected under the subsection, the
right, title, or interest must be assigned or granted in writing and it must be
a grant of a right, title, or interest in the copyright itself.32
The right available under the subsection is asserted as a party to the proceedings in his or her own name. The subsection does not authorize the
bringing of an action to which the copyright owner is not a party except
a) in respect of proceedings taken under section 44.1, 44.2, or 44.4;
b) in respect of interlocutory proceedings unless the court is of the
opinion that the interests of justice require the copyright owner to be a
party; and
c) in any other case, if the court is of the opinion that the interests of justice do not require the copyright owner to be a party. 33
28. S.O. 1992.

29. Robertson v. The Thompson Corporation (1999), 43 O.R 161 (Ont Ct. (Gen. Div.): (2001)
15 C.P.R. (4th) 147 (Ont. Sup. Ct. of Justice); (2004) 34 C.P.R. (4th) 161 (Ont. C.A.); (2006)
52 C.P.R. (4th) 417 (S.C.C).
30. See Chapter 20 and see subsection 34(2).
31. Ateliers Tango Argentin Inc. et al v. Festival dEspagne et dAmerique Latine Inc. (1997),
84 C.P.R. (3d) 56 (Quebec Sup. Ct.).
32. See Chapter 24.
322
i) Proprietary Licenses
Typically, an exclusive license would come within subsection 36(1)34 but the
copyright owner must be made a party to those proceedings unless the excep35
tions set out in subsection 36(2) apply.
A right of action for infringement of copyright may be assigned in association with the assignment of the copyright or the grant of an interest in the
36
copyright by license.
Subsection 27.1(4) of the Act provides that an exclusive distributor of a
book37 is deemed, for the purposes of entitlement to any of the remedies
under Part IV of the Act in relation to an infringement under Section 27.1, to
derive an interest in the copyright in question by license.
ii) Assignees
An assignee pursuant to an assignment or grant of an interest in writing,
signed by the owner of the right in respect of which the assignment or grant
is made or by the owners duly authorized agent will come within subsection
36(1).38 An assignment which does not comply with these requirements will
not be enforceable.39
f) Defendants
The persons who have directly infringed,40 engaged in secondary infringement,41
or infringed an authors moral rights42 are potential defendants.
In addition, under section 38 of the Act, the owner of the copyright in a
work or other subject-matter may institute proceedings to recover possession
of all infringing copies and plates used or intended to be used for the production of infringing copies, and for seizure of those copies or plates before judgment as if those copies or plates were the property of the copyright owner.43
34. See subsection 13(7) and Chapter 25, part 1.

35. See Chapter 28, part 1(c) for a discussion of Euro-Excellence Inc. v. Kraft Canada Inc. (2007),
59 C.P.R. (4th) 353 (S.C.C.) concerning exclusive licensees.
39. See Chapter 24.
40. See Chapter 27.
41. See Chapter 28.
42. See Chapter 20.
43. See part 11(b) of this chapter.
Pleadings
It is not clear whether a person may be liable for aiding and abetting
infringement.44
i) Directors and Ocers
Generally speaking, the directors or officers of a corporation are not personally liable for the infringing activity of the corporation and accordingly
should not be parties, unless they formed the corporation for the purpose of
infringing or they have directly ordered or authorized the acts complained of.
In order to find personal liability, there must be circumstances from which it
is reasonable to conclude that the purpose of the director or officer was not
the direction of the manufacturing and selling activity of the corporation in
the ordinary course of his relationship to it, but the deliberate, willful, and
knowing pursuit of a course of conduct that was likely to constitute infringement or reflected an indifference to the risk of it.45 The precise formulation of
the appropriate test is obviously a difficult one. A broad appreciation of the
circumstances of each case must be made to determine whether as a matter of
policy they call for personal liability.46
The question is whether the director or officer truly acted for the corporation in the ordinary course of business (rather than acting in such a way as to
make the act or conduct his own as distinct from that of the corporation) and
47
would reasonably be perceived as doing so.
A statement of claim alleging personal liability of a director or officer must
be carefully drafted. If an allegation is made against a director or an officer
which does not set out the appropriate material facts, a motion to strike the
relevant portion of the statement of claim may be brought.
4. Pleadings
a) Notice of Claim
In cases alleging direct infringement, it is not necessary that notice be given
before serving the statement of claim. However, practical considerations typ-
44. Apple Computer Inc. v. Mackintosh Computers Ltd. (1986), 10 C.P.R. (3d) 1 (F.C.T.D.). referring to Procter & Gamble v. Bristol-Myers Canada Ltd. (1978), 39 C.P.R. (2d) 145 (F.C.T.D.).
45. Apple Computer Inc. et al. v. Mackintosh Computer Ltd. et al (1986), 10 C.P.R. (3d) 1 (F.C.T.D.).
46. Mentmore Manufacturing Company Limited et al v. National Merchandising Manufacturing
Company Inc. (1978), 40 C.P.R. (2d) 164 (F.C.A.).
47. Montreal Trust Co. of Canada et al. v. Scotia McLeod Inc. et al. (1994), 15 B.L.R. (2d.) 160
(Ont. Ct., (Gen. Div.)), (1995). 26 O.R. (3d) 481 (Ont. C.A.).
323
324
ically require that notice be given if at all possible. In cases alleging secondary
infringement, notice may be required.48
Generally speaking, a plaintiff should set out the following matters in a statement of claim:
a) The work or other subject matter protected by copyright must be clearly
identified;
b) the name of the author and the fulfillment of the relevant conditions for
the subsistence of copyright;49
c) the material facts relating to the infringing activities of the defendant;50
d) that the infringing activities were done without the plaintiff s consent;51
f) the relief claimed.
A statement of defense denying the existence of or title to copyright must be
specifically pleaded.52 A general denial is not sufficient and the material facts
relating to the specific defense relied on must be set out.53
A defendant may claim the benefit of the exceptions set out in sections 29
to 32.2. Such defenses must include the material facts necessary to establish
that the relevant exception is applicable.
i) Lack of Awareness
Section 39 provides that in any proceeding for infringement of copyright, the
plaintiff is not entitled to any remedy other than an injunction in respect of
the infringement if the defendant proves that, at the date of the infringement,
the defendant was not aware and had no reasonable ground for suspecting
that copyright subsisted in the work or other subject-matter in question.
48.
49.
50.
51.
52.
See Chapter 28.

See Chapter 17, part a) and Chapter 19.
Eldon Industries Inc. v. Reliable Toy Co. Ltd. (1966), 48 C.P.R. 109 (Ont. C.A.).
Subsection 27(1).
Section 34.1 and 53 (2) Warner Bros.-Seven Arts Inc. v. CESM TV Ltd (1969), 58 C.P.R. (2d)
97 (Ex Ct.); Bally Midway MFG Co. v. Coinex Video Games Inc. (1983), 72 C.P.R. (2d) 22
(F.C.T.D.).
53. Modern Houseware Imports Inc v. International Sources Ltd. (2000), 4 C.P.R (4th) 155 (F.C.T.D.).
Summary Applications 325
However, the section does not apply if, at the date of the infringement, the
copyright was duly registered under this Act.
The section is of limited application. Ignorance of the existence of copyright is not sufficient as the defendant must also prove there was no reasonable ground for suspecting that copyright subsisted in the work.54
In applying the section, courts have taken the approach that a defendant
should assume that copyright subsists in a work about to be copied, unless
there is evidence to the contrary.55 Evidence to the contrary would include a
reasonable belief that (a) that the period of copyright protection had expired;
or (b) the work is of such character that it is not protected by copyright.56
d) Particulars57
The material facts relating to a claim for infringement are the existence of the
work, the ownership of copyright in the work, the existence of the infringing
work and the absence of the owners consent to the production or reproduction of the work. Nothing further is required to allow the defendant to respond
to the claim. The means by which the plaintiff has become aware of these facts
is not material.58
5. Interlocutory Injunctions59
6. Anton Piller Orders60
Subsection 34(4) of the Act provides that proceedings for infringement of
copyright or moral rights, to detain imported infringing copies pursuant to
54. Gribble v. Manitoba Free Press Co., [1931] 3 W.W.R. 570, [1932] 1 D.L.R. 169 (Man. C.A.).
55. Gribble v. Manitoba Free Press Co., [1931] 3 W.W.R. 570, [1932] 1 D.L.R. 169 (Man. C.A.);
Slumber Magic Adjustable Bed Co. Ltd. v. Sleep-King Adjustable Bed Co. Ltd. (1984), 3 C.P.R.
(3d) 81 (B.C.S.C.); U&R Tax Services Ltd v. H&R Block Canada Inc (1995), 62 C.P.R. (3d) 257
(F.C.T.D.); Bulman Group Ltd. v. One WriteAccounting Systems Ltd. (1982), 62 C.P.R. (2d)
(F. C. T.D.).
56. Gribble v. Manitoba Free Press Co., [1931] 3 W.W.R. 570, [1932] 1 D.L.R. 169 (Man. C.A.).
57. See Chapter 15, part 4(b).
58. Adacel Technologies Ltd. v. Nav Canada, 2006 FCA 227 (F.C.A.); Canadian Olympic Association v. National Gym Clothing (1985), 2 C.P.R. (3d) 145 (F.C.T.D.).
326
section 44.1, 44.2, or 44.4, or in respect of a tariff certified under the Act, may
be commenced or proceeded with by way of application61 or action. In the
case of an application, the proceedings are to be heard and determined without delay and in a summary way.62
Subsection 34(5) provides that the rules of practice and procedure in civil
matters of the court in which proceedings are commenced by way of application, apply to those proceedings. If those rules do not provide for the proceedings to be heard and determined without delay and in a summary way,
the court may give such directions as it considers necessary in order to so
provide. The court in which proceedings are instituted by way of application
may, where it considers it appropriate, direct that the proceeding be proceeded with as an action.63
8. Discovery
Discovery of documents, examinations for discovery and inspection of property are available under the procedural rules of the court in which an action
for infringement is brought.64
An equitable bill of discovery is also potentially available. In essence, this
is a form of pre-action discovery. This remedy permits a court, acting through
its equitable jurisdiction, to order discovery of a person against whom the
applicant for the bill of discovery has no cause of action and who is not a
party to contemplated litigation. While it appears that an independent action
for discovery cannot be brought against a person who is in the position of a
mere witness or bystander to the cause of action, the case law suggests that
a bill of discovery may be issued against an individual who is in some way
connected to or involved in the misconduct.65
In order to obtain equitable discovery the plaintiff must show a bona fide
claim and not a prima facie case. The plaintiff must also show that the information sought cannot be obtained from another source and consideration
must be given to the costs incurred by the respondent in assembling the
61. Subsection 34(7) provides that in the section, application means a proceeding that is commenced other than by way of a writ or statement of claim.
62. See Kraft Canada Inc. v. Euro Excellence Inc.(2007), 59 C.P.R. (4th)353 (S.C.C.) where injunctive relief, damages and related relief was granted in an application.
64. Rules of Civil Procedure, R.R.O 1990, Regulation 194 as amended, Rules 30, 31, and 32.
Federal Court Rules, 1998, SOR/98106, Rules 222 to 249.
65. Glaxo Wellcome Plc. v. M.N.R. (1998), 81 C.P.R. (3d) 372 (F.C.A.), leave to appeal to the
Supreme Court of Canada dismissed 82 C.P.R. (3d) vi; BMG Canada Inc. v. John Doe (2005),
39 C.P.R. (4th) 97 (F.C.A.).
Evidence at Trial 327
information. The public interest in favor of disclosure must outweigh the

legitimate privacy concerns of a person sought to be identified. Caution must
be exercised in ordering disclosure of identity to ensure that privacy rights
are invaded in the most minimal way. If an order is granted, directions should
be given as to the type of information to be disclosed and the manner in
which it can be used.66

Section 41 of the Act provides that a court may not award a remedy in relation to an infringement unless
(a) in the case where the plaintiff knew, or could reasonably have been
expected to know, of the infringement at the time it occurred, the
proceedings for infringement are commenced within three years after
the infringement occurred; or
(b) in the case where the plaintiff did not know, and could not reasonably
have been expected to know, of the infringement at the time it occurred,
the proceedings for infringement are commenced within three years
after the time when the plaintiff first knew, or could reasonably have
been expected to know, of the infringement.
The section also provides that a court shall apply the limitation periods
described above only in respect of a party who pleads a limitation period.
Section 41 applies to all of the civil remedies available under the Act,
including a claim for injunctive relief.
As infringement is frequently a continuing cause of action each individual
act of infringement is actionable. For each infringement, a separate inquiry
must be made concerning the applicable limitation period.67

The onus is on the plaintiff to prove the allegations set out in the statement of
claim on the balance of probabilities. Consideration should be given to the
following matters.
66. BMG Canada Inc. v. John Doe (2005), 39 C.P.R (4th) 97 (F.C.A.).
67. Wall v. Horn Abbot Ltd. 2007 NSSC 197(N.S.S.C.).
a) Presumptions
The parties must determine the effect of the application of the presumptions
set out in the Act concerning the subsistence of copyright, ownership of copyright and the maker.68

A certificate of registration of copyright or an assignment of copyright or a
license granting an interest in a copyright is evidence in its own right of the
matters set out in the registration. A plaintiff should take advantage of the
benefits of filing such evidence.69 If a certificate is filed, any presumption
which would otherwise apply no longer applies.70
In many cases it is essential that the plaintiff establish that copying or reproduction has occurred. A plaintiff may be able to prove that copying took place
by circumstantial evidence when direct evidence of copying is not available.
Evidence of similarity and access to the plaintiffs work can support an inference of copying.71
Unexplained similarities or repetition of common errors may be circumstantial evidence of copying.72 The weight to be given to such evidence depends
on the strength of the inference which can be drawn from it.73
The deliberate introduction of errors into a compilation for the purpose of
detecting infringement is a common practice. The existence of the same errors
in the defendants work is circumstantial evidence of access and copying.
d) Expert Evidence
The evidence of expert witness can play an important role in cases involving
copyright infringement. Expert evidence may be presented at trial concerning originality, to point out coincidences, similarities, or other evidence of
68.
69.
70.
71.

Francis, Day & Hunter Ltd. v. Bron, [1963] 2 All E.R. 16 (U.K.C.A.); Gondos v. Hardy (1982),
64 C.P.R. (2d) 145 (Ont. H.C.).
72. Deeks v. Wells, [1933] 1 D.L.R. 353 (Ont. P.C.).
73. See Sophinka, Lederman, and Bryant, The Law of Evidence in Canada at p 40.
Remedies
copying,74 or in relation to claims for damages or profits.75 The weight to be

given such evidence will be determined by the court.76
11. Remedies
i) Grant
Subsection 34.(1) of the Act states that where copyright has been infringed,
the owner of the copyright is, subject to the Act, entitled to all remedies by
way of injunction, damages, accounts, delivery up, and otherwise that are or
may be conferred by law for the infringement of a right. Subsection 34.(2)
provides for similar jurisdiction in any proceedings for an infringement of a
moral right of an author.
The applicable principles are much the same as in an action for trademark
infringement as previously described.77 A successful plaintiff is prima facie
entitled to a permanent injunction and the onus is on the defendant to show
that the existence of any applicable equitable defenses should preclude the
grant of such an injunction.78
The jurisdiction to grant injunctions includes the power to restrain threatened infringement as distinguished from infringement which has already
occurred. However, such jurisdiction is exercised sparingly and with caution
and there must be a high degree of probability that the infringement will
occur.79
Where the infringing parts of the work can be separated from the balance,
a court may order that the defendants product be rendered non-infringing.80
Subsection 40(1) of the Act provides that where the construction of a
building or other structure that infringes or that, if completed, would infringe
the copyright in some other work has been commenced, the owner of the
74. Deeks v. Wells, [1933] 1 D.L.R. 353 (Ont. P.C.).

75. Gondos v. Hardy (1982), 64 C.P.R. (2d) 145 (Ont. H.C.); Hutton v. Canadian Broadcasting
Corporation (1990), 29 C.P.R. (3d) 398 (Alberta. Q.B.); Prestone v. 20th Century Fox Canada
Ltd. (1991), 33 C.P.R. (3d) 242 (F.C.T.D.); Lifestyle Homes v. Randall Homes (1990), 30 C.P.R.
(3d) 76 (Man. Q.B.); affirmed 33 C.P.R. (3d) 505 (Man. C.A.).
76. Deeks v. Wells, [1931] O.R. 818 (S.C.C.), aff d [1933] 1 D.L.R. 353 (Ont. P.C.); Collins v. Rosenthal, (1974), 14 C.P.R. (2d) 143 (F.C.T.D.); Geac Canada Ltd. v. Prologic Computer Corp.
(1989), 25 C.P.R. (3d) 565 (B.C.S.C.).
78. Queen v. James Lorimer (1984), 77 C.P.R. (2d) 262 (F.C.A.).
79. Operation Dismantle Inc. v. Canada, [1985] 1 S.C.R. 441 (S.C.C.).
80. Kraft Canada Inc. v. Euro Excellence Inc. (2004), 33 C.P.R. (4th) 246 (F.C.).
329
330
copyright is not entitled to obtain an injunction in respect of the construction

of that building or structure or to order its demolition.81 Sections 38, relating
to the recovery of possession of infringing copies, and 42, relating to criminal
offences, do not apply in any case where subsection 40(1) applies.
ii) Wide Injunction
Section 39.1 of the Act provides that when granting an injunction in respect
of an infringement of copyright in a work or other subject-matter, the court
may further enjoin the defendant from infringing the copyright in any other
work or subject-matter if
(a) the plaintiff is the owner of the copyright or the person to whom an
interest in the copyright has been granted by license; and
(b) the plaintiff satisfies the court that the defendant will likely infringe
the copyright in those other works or subject-matter unless enjoined
by the court from doing so.
Subsection 39(2) further provides that a wide injunction may extend to
works or other subject-matter
(a) in respect of which the plaintiff was not, at the time the proceedings
were commenced, the owner of the copyright or the person to whom
an interest in the copyright has been granted by licence; or
(b) that did not exist at the time the proceedings were commenced.
The section has not yet been judicially considered in detail. But this jurisdiction should be cautiously exercised.
iii) Breach of Injunction82

Under subsection 38(1)(a) of the Act, the owner of the copyright in a work or
other subject-matter may recover possession of all infringing copies of that
work or other subject-matter, and of all plates83 used or intended to be used
81. Randall Homes Ltd. v. Harwood Homes Ltd. (1987), 17 C.P.R. (3d) 372 (Man. Q.B.) the section only applies where the construction of a building or other structure has commenced.
82. See Chapter 15, part 11(b).
83. Section 2 provides that plate includes (a) any stereotype or other plate, stone, block, mould,
matrix, transfer, or negative used or intended to be used for printing or reproducing copies
of any work, and (b) any matrix or other appliance used or intended to be used for making
or reproducing sound recordings, performers performances, or communication signals.
Remedies
for the production of infringing84 copies, as if those copies or plates were the
property of the copyright owner. The deemed ownership is not effective for
all purposes and the copyright owner cannot seek damages in respect of the
possession or conversion of the infringing copies or plates.85
Under subsection 38(1)(b) the owner of the copyright in a work or other
subject-matter may take proceedings for seizure of those copies or plates
before judgment if, under the law of Canada or of the province in which those
proceedings are taken, a person is entitled to take such proceedings.
On application by the person from whom possession has been recovered
or any person who has an interest in the copies or plates, a court may order
that the copies or plates be destroyed, or may make any other order that it
considers appropriate in the circumstances.86 Before making such an order,
the court must direct that notice be given to any person who has an interest
in the copies or plates in question, unless the court is of the opinion that the
interests of justice do not require such notice to be given.87
In making an order the court must have regard to all the circumstances,
including
(a) the proportion, importance, and value of the infringing copy or plate,
as compared to the substrate or carrier embodying it; and
(b) the extent to which the infringing copy or plate is severable from, or a
distinct part of, the substrate or carrier embodying it.88
Where the construction of a building or other structure that infringes or
that, if completed, would infringe the copyright in some other work has
been commenced, the owner of the copyright is not entitled to relief under
section 38.89
84. Section 2 provides that infringing means (a) in relation to a work in which copyright subsists, any copy, including any colorable imitation, made or dealt with in contravention of this
Act, (b) in relation to a performers performance in respect of which copyright subsists, any
fixation or copy of a fixation of it made or dealt with in contravention of this Act, (c) in relation to a sound recording in respect of which copyright subsists, any copy of it made or dealt
with in contravention of this Act, or (d) in relation to a communication signal in respect of
which copyright subsists, any fixation or copy of a fixation of it made or dealt with in contravention of this Act. The definition includes a copy that is imported in the circumstances set
out in paragraph 27(2)(e) and section 27.1 but does not otherwise include a copy made with
the consent of the owner of the copyright in the country where the copy was made.
85. Subsection 38(5). Prior to September 1, 1997 such a claim could be asserted.
331
332
The Provincial superior courts of record and the Federal Court have jurisdiction to grant declaratory relief.90 The Act prescribes a comprehensive regime
of property rights concerning copyright and it is open to a court to declare
the entitlement of certain persons to certain rights in accordance with that
regime.91 It is possible to bring an action for a declaration of non-infringement in a Provincial superior court of record 92 but it is unclear if the Federal
Court has such jurisdiction.93
d) Damages
i) Assessment of Damages
Section 35 of the Act provides that
(1) Where a person infringes copyright, the person is liable to pay such
damages to the owner of the copyright as the owner has suffered due
to the infringement and, in addition to those damages, such part of the
profits that the infringer has made from the infringement and that
were not taken into account in calculating the damages as the court
considers just.
(2) In proving profits,
(a) the plaintiff shall be required to prove only receipts or revenues
derived from the infringement; and
(b) the defendant shall be required to prove every element of cost that
the defendant claims.
Damages are assessed on the basis of the injury done to the plaintiff. The
plaintiff should be restored to the position he or she was in before the infringement occurred. The general principle of assessment of damages is that the
damages must flow directly from the acts complained of and they must not be
too remote.94
90. Federal Court Rules 1998, SOR/98106, Rule 64 and the Courts of Justice Act R.S.O. 1990,
c .C. 43 section 97.
91. Operation Dismantle Inc. v. Canada, [1985] 1 S.C.R. 441; Royal Doulton v. Cassidys [1986]
F.C. 357 (F.C.T.D.).
92. Research in Motion Ltd v. Atari Inc, (2007), 61 C.P.R. (4th) 193 (Ont. S.C.J.).
93. Peak Innovations Inc. v. Meadowland Flowers Ltd. 2009 FC 661 (F.C.T.D.).
94. Underwriters Survey Bureau Ltd. v. Massie & Renwick Ltd., [1942] Ex. C.R. 1 (Ex. Ct); Dictionnaires Robert Canada SCC v. Libraire du Nomande Inc. (1987), 16 C.P.R. (3d) 319 (F.C.T.D.).
Remedies
An infringer cannot avoid liability because damages are difficult to prove.95

A court must do the best it can to achieve an equitable result.96 Mathematical
precision is not required. Damages are assessed at large97 without the necessity to allege or prove special damage.98
The method of assessment varies depending on the facts of the case. In
many cases the plaintiff will be entitled to receive the profit it would have
made had it made the sales that the defendant made.99 Where licenses are
granted of similar rights, damages may be awarded on the basis of what would
have been charged for license fees.100
Aggravated damages may be awarded. Aggravated damages are intended
to compensate a person for intangible injuries such as mental distress, hurt
feelings, and the motives and conduct of the defendant where they aggravate
the injury done to the plaintiff.101 Since a corporation cannot suffer mental
distress or hurt feelings, it is questionable whether aggravated damages may
be awarded to a corporation.102 Aggravated damages are compensatory in
nature and may only be awarded for this purpose.103
ii) Nominal Damages
Where loss or damages cannot be clearly proved by the plaintiff as the direct
result of the infringement, the plaintiff is entitled to nominal damages.104
iii) Punitive or Exemplary Damages
Punitive or exemplary damages have been awarded in cases of copyright infringement.105 Punitive damages are awarded against a defendant in exceptional
cases for malicious, oppressive, and high-handed misconduct that offends
95. Hay and Hay Construction Co. Ltd. v. Sloan et al. [1957] O.W.N. 445. (Ont.H.C.)
96. U&R Tax Services Ltd. v. H&R Block Canada Inc. (1995), 62 C.P.R. (3d) 257 (F.C.T.D.);
Prism Hospital Software Inc. v. H.M.R.I.. (1994), 57 C.P.R. (3d) 129 (B.C.S.C.).
97. Standard Industries Ltd. v. Rosen [1955] 4 D.L.R. 363 (Ont. H.C.J.).
98. C.P. Koch Ltd. v. Continental Steel Ltd. (1984), 82 C.P.R. (2d) 156 (B.C.S.C.); aff d (1985),
4 C.P.R. (3d) 395 (B.C.C.A.); Slumber-Magic, Adjustable Bed Co. v. Sleep-King Adjustable
Bed Co. (1985), 3 C.P.R. (3d) 81 (B.C.S.C.).
99. Dictionnaires Robert Canada SCC v. Libraire du Nomande Inc. (1987), 16 C.P.R. (3d) 319
(F.C.T.D.); Prise de Parole Inc. v. Guerin, Editeur Ltee (1995), 66 C.P.R. (3d) 17 (F.C.T.D.).
100. Hager v. ECW Press Ltd. (1998), 85 C.P.R. (3d) 289 (F.C.T.D.).
101. Rookes v. Bernard, [1964] 1 All E.R. 367 (H.L.).
102. Thomas Management Ltd. v. Alberta (Minister of Environmental Protection) (2006), 397 A.R.
339, 2006 ABCA 303 (Alberta C.A.).
103. Vorvis v. Insurance Corporation of British Columbia (1989), 58 D.L.R. (4th) 193 (S.C.C.).
104. Underwriters Survey Bureau Ltd. et al. v. Massie & Renwick Ltd. [1938] Ex. C.R. 103; [1940]
S.C.R. 218, [1940] 1 D.L.R. 625.
105. Profekta International Inc. v. Lee (1997), 75 C.P.R. (3d) 369 (F.C.).
333
334
the Courts sense of decency.106 The test thus limits the award to misconduct
that represents a marked departure from ordinary standards of decent behavior. Because their objective is to punish the defendant rather than compensate a plaintiff (whose just compensation will already have been assessed),
punitive damages straddle the frontier between civil law (compensation) and
criminal law (punishment).
e) Account of Prots
In cases for infringement of a patent or a trademark, a plaintiffs claim for an
account of the profits made by the defendant is an alternative to damages.
The plaintiff must elect which remedy it will have and cannot have both.
In actions for infringement of copyright the situation is different. Section
35 of the Act provides that where a person infringes copyright, the person is
liable to pay such damages to the owner of the copyright as the owner has
suffered due to the infringement and, in addition to those damages, such
part of the profits that the infringer has made from the infringement and
that were not taken into account in calculating the damages as the court considers just.107
In proving profits, the plaintiff is required to prove only receipts or revenues derived from the infringement and the defendant must prove every element of cost that the defendant claims.108
At common law, an accounting of profits is an equitable remedy and subject to equitable defenses.109 Presumably, reference can be made to case law
decided in this context when considering a claim for profits under the
Copyright Act.
Section 38.1 of the Copyright Act provides for statutory damages. The section
is as follows
(1) Subject to this section, a copyright owner may elect, at any time before
final judgment is rendered, to recover, instead of damages and profits
106. Hill v. Church of Scientology of Toronto [1995] 2 S.C.R. 1130 (S.C.C).

107. Previously the section provided the plaintiff was entitled not only to damages but, in addition, if the court decided that such an award is just and proper, to the profits which the
infringer made from such infringement.
109. See Chapter 15, part 11(c).
Remedies
(2)
(3)
(4)
(5)
(6)
referred to in subsection 35(1), an award of statutory damages for all

infringements involved in the proceedings, with respect to any one
work or other subject-matter, for which any one infringer is liable
individually, or for which any two or more infringers are liable, jointly
and severally, in a sum of not less than $500 or more than $20,000 as
the court considers just.
Where a copyright owner has made an election under subsection (1)
and the defendant satisfies the court that the defendant was not aware
and had no reasonable grounds to believe that the defendant had
infringed copyright, the court may reduce the amount of the award to
less than $500, but not less than $200.
Where
(a) there is more than one work or other subject-matter in a single
medium, and
(b) the awarding of even the minimum amount referred to in subsection (1) or (2) would result in a total award that, in the courts
opinion, is grossly out of proportion to the infringement,
the court may award, with respect to each work or other subject-matter, such lower amount than $500 or $200, as the case may be, as the
court considers just.
Where the defendant has not paid applicable royalties, a collective
society referred to in section 67 may only make an election under this
section to recover, in lieu of any other remedy of a monetary nature
provided by this Act, an award of statutory damages in a sum of not
less than 3 and not more than 10 times the amount of the applicable
royalties, as the court considers just.
In exercising its discretion under subsections (1) to (4), the court shall
consider all relevant factors, including
(a) the good faith or bad faith of the defendant;
(b) the conduct of the parties before and during the proceedings; and
(c) the need to deter other infringements of the copyright in question.
No statutory damages may be awarded against
(a) an educational institution or a person acting under its authority
that has committed an act referred to in section 29.6 or 29.7
and has not paid any royalties or complied with any terms and conditions fixed under this Act in relation to the commission of the
act;
(b) an educational institution, library, archive, or museum that is sued
in the circumstances referred to in section 38.2; or
(c) a person who infringes copyright under paragraph 27(2)(e) or
section 27.1, where the copy in question was made with the consent of the copyright owner in the country where the copy was
made.
335
336
(7) An election under subsection (1) does not affect any right that the
copyright owner may have to exemplary or punitive damages.
i) Availability
As set out above, in order to seek statutory damages, a copyright owner must
elect, before final judgment is rendered, to seek such a recovery instead of
damages and profits referred to in subsection 35(1). Any award of statutory
damages is for all infringements involved in the proceeding with respect to
one work or other subject matter. The section applies to works and to a
performers performance, sound recording, and a communication signal.110
ii) Assessment
The mandate of a judge assessing statutory damages under section 38.1 is to
arrive at a reasonable assessment which considers the statutory provisions
and all of the circumstances of the case, in order to yield a just result.111
The assessment of statutory damages is subject to a number of statutory
directions, which are as follows:
a) the court may award a sum not less that $500 or more than $22,000 as it
112
considers just;
b) the court shall consider all relevant factors including (i) the good or bad
faith of the defendant; (ii) the conduct of the parties before and during
the proceeding; and (iii) the need to deter other infringements of the
copyright in question;113
c) where the defendant satisfies the court that it was not aware and had no
reasonable grounds to believe that it had infringed copyright, the court
may reduce the amount of the award to less than $500, but not less than
114
$200;
d) the court may, as it considers just, award statutory damages in an
amount lower than $500 or $200 where:
(i) there is more than one work or other subject matter in a single
medium, and
110. See U&R Tax Services Ltd v. H&R Block Canada Inc (1995), 62 C.P.R. (3d) 257 (F.C.T.D.)
and the definition of copyright in section 2.
111. Telewizja Polska Canada Inc. v. Radiopol Inc. 2006 FC 584, 52 C.P.R. (4th) 445 (F.C.).
113. Telewizja Polska Canada Inc. v. Radiopol Inc. 2006 FC 584, 52 C.P.R. (4th) 445 (F.C.).
Remedies
(ii) the awarding of even the minimum amount referred to in subsections 38.1(1) or (2), would result in a total award that, in the Courts
opinion, is grossly out of proportion to the infringement;
e) where the defendant has not paid applicable royalties, a collective society may only make an election under subsection 38.1(1) to recover
statutory damages in a sum not less than 3 and not more than 10 times
the amount of the applicable royalties, as the court considers just.115
Unlike subsection 39(2),116 a defendants right to assert that it was not aware
and had no reasonable grounds to believe that it had infringed copyright is
not affected by the registration of the copyright under the Act. However, it
may be difficult to take advantage of the subsection since its wording of the
subsection is quite similar to that of subsection 39(1) which has been restrictively applied by the courts. This issue has yet to be considered by the
courts.
A plaintiff who elects to recover statutory damages may still seek exemplary or punitive damages 117
There are statutory limitations concerning potential awards against educational institutions, libraries, and museums which are set out in section 38.2.
g) Delivery Up
Section 34 provides that where copyright has been infringed, the owner of the
copyright is, subject to the Act, entitled to the remedy known as delivery up.
The grant of an order for delivery up of the infringing copies is a discretionary remedy.
Where the infringing portion of a work can be severed, the plaintiff may
only be entitled to an order for delivery up of that portion of the work.118
Where the construction of a building or other structure that infringes or
that, if completed, would infringe the copyright in some other work has been
commenced, the owner of the copyright is not entitled to deliver up.119
h) Costs120
115.
116.
117.
118.
Subsection 38.1(4).
See part 4(c)(i) of this chapter.
Subsection 38.1(7).
Apple Computer v. Mackintosh Computers Ltd. [1987] F.C. 173 (F.C.T.D.); Kraft Canada Inc.
v. Euro Excellence Inc. (2004), 33 C.P.R. (4th) 246 (F.C.).
337
CHAP T ER
31
Criminal Remedies
340
341
a) Section 42(1)
341
b) Subsection 42(2)
342
c) Penalties
343
343

Musical Work
343
344
4. Criminal Code
344
339
340 Chapter 31 Criminal Remedies
The Copyright Act provides for criminal remedies in appropriate cases. The
prosecution of criminal proceedings does not preclude a copyright owner
from subsequently bringing a civil action for the infringement of copyright.
However, instituting civil proceedings will likely preclude subsequent criminal proceedings relating to the same facts. A previous criminal conviction
may be relevant in civil proceedings relating to subsequent related infringement and support a claim for exemplary damages.1
In Canada there are three categories of criminal offences:
1. Offences in which mens rea, consisting of some positive state of mind
such as intent, knowledge, or recklessness, must be proved by the prosecution either as an inference from the nature of the act committed or
by additional evidence.
2. Offences in which there is no necessity for the prosecution to prove the
existence of mens rea; the doing of the prohibited act prima facie imports
the offence, leaving it open to the accused to avoid liability by proving
that he or she took all reasonable care. This involves consideration
of what a reasonable man would have done in the circumstances.
The defense will be available if the accused reasonably believed in a
mistaken set of facts which, if true, would render the act or omission
innocent, or if the accused took all reasonable steps to avoid the particular event. These offences may properly be called offences of strict
liability.
3. Offences of absolute liability where it is not open to the accused to avoid
conviction by showing that he or she was free of fault.2
The doctrine of the guilty mind expressed in terms of intention or recklessness, but not negligence, is the foundation of the law of crimes and applies to
the first category of offences. In such cases there is a presumption that a
person should not be held liable for the wrongfulness of his or her act if that
act is without mens rea: 3 Mens rea may be proved by showing recklessness or
willful blindness 4 but showing negligence is typically not sufficient.5
1.
2.
3.
4.
5.
Profekta International Inc. v. Lee (1997) 75 C.P.R. (3d) 369 (F.C.A.).

R. v. Sault Ste. Marie [1978] 2 S.C.R 1299, 85 D.L.R. (3d) 161.
R. v. Sault Ste. Marie [1978] 2 S.C.R 1299, 85 D.L.R. (3d) 161.
R. v. Sansregret [1985], 1 S.C.R. 570; R. v. Throux [1993], 2 S.C.R. 5.
R. v. Sault Ste. Marie [1978] 2 S.C.R 1299.
Section 42 Offences
a) Section 42(1)
Section 42(1) is as follows:
42 (1) Every person who knowingly
(a) makes for sale or rental an infringing copy of a work or other subjectmatter in which copyright subsists,
(b) sells or rents out, or by way of trade, exposes or offers for sale or rental,6
an infringing copy of a work or other subject-matter in which copyright
subsists,
(c) distributes infringing copies of a work or other subject-matter in which
copyright subsists, either for the purpose of trade or to such an extent as
to affect prejudicially the owner of the copyright,7
(d) by way of trade exhibits in public an infringing copy of a work or other
subject-matter in which copyright subsists, or
(e) imports for sale or rental into Canada any infringing copy of a work or
other subject-matter in which copyright subsists
is guilty of an offence and liable
(f) on summary conviction, to a fine not exceeding 25,000 dollars or to
imprisonment for a term not exceeding six months or to both, or
(g) on conviction on indictment, to a fine not exceeding one million dollars
or to imprisonment for a term not exceeding five years or to both.
(3) The court before which any proceedings under this section are taken may,
on conviction, order that all copies of the work or other subject-matter that
appear to it to be infringing copies, or all plates in the possession of the
offender predominantly used for making infringing copies, be destroyed or
delivered up to the owner of the copyright or otherwise dealt with as the
court may think fit.
(4) Proceedings by summary conviction in respect of an offence under this
section may be instituted at any time within, but not later than, two years
after the time when the offence was committed.
(5) No person may be prosecuted under this section for importing a book or
dealing with an imported book in the manner described in section 27.1.
The offences set out in subsections 42(1) relate to making, selling, distributing, exhibiting, importing, and otherwise dealing with infringing copies of
6. A mere invitation to treat is an offer to sell, see R. v. Laurier Office Mart Inc. (1994), 58 C.P.R.
(3d) 403 (Ont. Ct. (Prov. Div.)), affirmed (1995) 63 C.P.R. (3d) 229 (Ont. Ct. (Gen. Div.)).
7. R. v. J.P.M. (1996), 67 C.P.R. (3d) 152 (N.S.C.A.).
341
342
Chapter 31 Criminal Remedies
any work or other subject-matter in which copyright subsists. The Act provides that infringing means
(a) in relation to a work in which copyright subsists, any copy, including
any colorable imitation, made or dealt with in contravention of
the Act,
(b) in relation to a performers performance in respect of which copyright
subsists, any fixation or copy of a fixation of it made or dealt with in
contravention of the Act,
(c) in relation to a sound recording in respect of which copyright subsists,
any copy of it made or dealt with in contravention of the Act, or
(d) in relation to a communication signal in respect of which copyright
subsists, any fixation or copy of a fixation of it made or dealt with in
contravention of the Act.
The definition includes a copy that is imported in the circumstances set out
in paragraph 27(2)(e) and section 27.1 but does not otherwise include a copy
made with the consent of the owner of the copyright in the country where the
copy was made.8
Subsection 42(1) uses the word knowingly in describing the specific
offences. As a result, the offences under paragraphs a) through e) are full
mens rea offences.9
Subsection 53(2) which provides that a certificate of registration of copyright in a work is evidence that copyright subsists in the work, and that the
person registered is the owner of the copyright, is applicable in criminal proceedings. However, certificates of registration registered subsequent to the
date of the alleged offence by themselves may not be sufficient evidence.10
b) Subsection 42(2)
Subsection 42(2) is as follows:
(2) Every person who knowingly
(a) makes or possesses any plate that is specifically designed or adapted for
the purpose of making infringing copies of any work or other subjectmatter in which copyright subsists, or
8. Section 2.
9. R. v. Ghnaim (1988), 28 C.P.R. (3d) 463 (Alberta Prov. Ct.), affirmed in part (1989), 32 C.P.R.
(3d) 487 (Alberta C.A.); R. v. Laurier Office Mart Inc. (1994), 58 C.P.R. (3d) 403 (Ont. Ct.
(Prov. Div.)), affirmed (1995), 63 C.P.R. (3d) 229 (Ont. Ct. (Gen. Div.)).
10. R. v. Laurier Office Mart Inc. (1994), 58 C.P.R. (3d) (Ont. Ct. (Prov. Div.)) affirmed on appeal
(1995), 63 C.P.R. (3d) 229 (Ont. Ct. (Gen. Div.)).
Section 43 Offences
(b) for private profit causes to be performed in public, without the consent
of the owner of the copyright, any work or other subject-matter in which
copyright subsists
is guilty of an offence and liable
(c) on summary conviction, to a fine not exceeding 25,000 dollars or to
imprisonment for a term not exceeding six months or to both, or
(d) on conviction on indictment, to a fine not exceeding one million dollars
or to imprisonment for a term not exceeding five years or to both.
Subsection 42(2)(a) refers to the making or possession of any plate. Section 2

of the Act provides that plate includes
(a) any stereotype or other plate, stone, block, mould, matrix, transfer, or
negative used or intended to be used for printing or reproducing
copies of any work, and
(b) any matrix or other appliance used or intended to be used for making
or reproducing sound recordings, performers performances, or communication signals.
Subsection 42(2) uses the word knowingly in describing the specific
offences. As a result, the offences under paragraphs a) through b) are full
mens rea offences.11
c) Penalties
The court is given a wide discretion as to the amount of the fine and the disposition of the plates and infringing copies. Regard must be had not only to the
nature of the material but also to the purposes for which the infringing copies
were made, including the fact that copies are made for commercial profit.12
Musical Work
Subsection 43(1) of the Act provides that any person who, without the written
consent of the owner of the copyright or of the legal representative of the
11. R. v. Ghnaim (1988), 28 C.P.R. (3d) 463 (Alberta Prov. Ct.), affirmed in part (1989) 32 C.P.R.
(3d) 487 (Alberta C.A.); R. v. Laurier Office Mart Inc. (1994), 58 C.P.R. (3d) 403 (Ont. Ct.
(Prov. Div.)), affirmed (1995) 63 C.P.R. (3d) 229 (Ont. Ct. (Gen. Div.)).
12. R. v. Ghnaim (1988), 28 C.P.R. (3d) 463 (Alberta Prov. Ct.), affirmed in part 32 C.P.R. (3d)
487 (Alberta C.A.).
343
344
Chapter 31 Criminal Remedies
owner, knowingly performs or causes to be performed in public and for private profit the whole or any part, constituting an infringement, of any dramatic or operatic work or musical composition in which copyright subsists in
Canada is guilty of an offence and liable on summary conviction to a fine not
exceeding 250 dollars.13 In the case of a second or subsequent offence, the
accused is subject to either that fine or to imprisonment for a term not exceeding two months or to both. As the subsection uses the word knowingly in
describing the offence it is necessary to show mens rea.

Subsection 43(2) of the Act provides that any person who makes or causes to
be made any change in or suppression of the title, or the name of the author,
of any dramatic or operatic work or musical composition in which copyright
subsists in Canada, or who makes or causes to be made any change in the
work or composition itself without the written consent of the author or of his
legal representative, in order that the work or composition may be performed
in whole or in part in public for private profit, is guilty of an offence and liable
on summary conviction to a fine not exceeding 500 dollars and, in the case of
a second or subsequent offence, either to that fine or to imprisonment for a
term not exceeding four months or to both.
The subsection does not use the word knowingly and is a strict liability
offence where mens rea does not have to be proved.14
4. Criminal Code
Section 380 of the Criminal Code15 provides that everyone who, by deceit,
falsehood, or other fraudulent means, defrauds the public or any person of
any property, money or valuable security is guilty of an indictable offence or
an offence punishable on summary conviction where the value of the subject
matter of the offence does not exceed $1,000.00. If the conduct of an accused
relating to copyright is contrary to the provisions of the Criminal Code they
may be prosecuted under the Code.16
13.
14.
15.
16.
National Breweries v. Paradis, [1925] S.C.R. 666, [1925] 3 D.L.R. 875 (S.C.C.).
R. v. Sault Ste. Marie [1978] 2 S.C.R 1299 (S.C.C.).
R.S.C. 1985. c. C-46.
R. v. Adelphi Book Store Limited (1972), 7 C.P.R. (2d) 166 (Sask. C.A.).
CHAP T ER
32
Copyright Board and Collective
Administration of Rights
1. The Copyright Board
347
2. Jurisdiction
347
3. The Powers of the Copyright Board
348
4. Collective Administration of Performing Rights and

Communication Rights
350
a) Background
350
b) Performing Rights and Communication

Rights Societies
351
i) Filing of Proposed Taris
352
ii) Overseeing the Proposed Taris
352
c) Equitable Remuneration for Performers and

Makers of Sound Recordings
354
355
355
5. The General Regime-Collective Administration in

Relation to Rights under Sections 3, 15, 18, and 21
356
a) Background
356
356
357
358
6. Examination of Agreements
359
7. The Retransmission Regime
360
a) Background
360
360
362
362
345
346 Chapter 32 Copyright Board and Collective Administration of Rights

8. Private Copying
363
9. Owners of Copyright Who Cannot Be Found
365
10. Compensation for Acts Done Before Recognition

of Copyright
366
Jurisdiction
1. The Copyright Board

The Copyright Board consists of not more than five members, including a
chairman and a vice-chairman, who are appointed by the Governor in
Council. The chairman must be a judge, either sitting or retired, of a superior,
county, or district court. Each member of the Board holds office for a term
not exceeding five years. A member of the Board is eligible to be re-appointed
once only.1
2. Jurisdiction
The Copyright Board is an economic regulatory body empowered to establish, either mandatorily or at the request of an interested party, the royalties
to be paid for the use of copyrighted works, when the administration of such
copyright is entrusted to a collective-administration society. The Board also
has the right to supervise agreements between users and licensing bodies and
issues licences when the copyright owner cannot be located.
The specific responsibilities of the Copyright Board under the Copyright
Act are to
a) oversee the collective administration of performing rights and the
communication to the public by telecommunication of musical works,
dramatico-musical works, performers performances of such works, or
sound recordings embodying such works;2
b) oversee the collective administration of copyright under sections 3, 15,
18, and 21 of the Act;
c) oversee the collective administration of royalties to be paid by retransmitters3 or educational institutions;4
d) set levies for the private copying of recorded musical works;5
e) rule on applications by persons who wish to obtain a licence to use a
published work, a fixation of a performers performance, a published
sound recording, or a fixation of a communication signal where the
owner of the copyright in the work cannot be found;6
1.
2.
3.
4.
5.
6.
Section 66.
Sections 67 to 68.2.
Paragraph 31(2)(d).
Subsection 29.6(2), 29.7(2) or (3).
Sections 7988.
Section 77.
347
f) examine, at the request of the Commissioner of Competition, an agreement between a Collective Society7 and a user that has been filed with
the Board, where the Commissioner considers that an agreement is
contrary to the public interest;8
g) determine the amount of the compensation for acts done with respect
to such rights, the Act extends retrospective protection to for works
which may not have been protected previously, when a country
becomes a Berne Convention country or a WTO member.9
3. The Powers of the Copyright Board

The Copyright Board may engage on a temporary basis the services of persons having technical or specialized knowledge to advise and assist in the
performance of its duties.10
The Copyright Board has, with respect to the attendance, swearing, and
examination of witnesses, the production and inspection of documents, the
enforcement of its decisions and other matters necessary or proper for the
due exercise of its jurisdiction, all the powers, rights, and privileges as are
vested in a superior court of record.11
The Copyright Board may, on application, make an interim decision12
including the power to revise the period during which interim decision is in
force.13
The Board can make an initial determination of the facts and law applicable as to whether a proposed statement of royalties is within the terms of
the Act.14
A decision of the Copyright Board respecting royalties or their related
terms and conditions that is made under subsection 68(3), sections 68.1 or
70.15, or subsections 70.2(2), 70.6(1), 73(1), or 83(8) of the Act may, on
7.
8.
9.
10.
11.
12.
13.
Section 2.
Subsection 70.5 and 70.6.
Section 78.
Subsection 66.4(3).
Subsection 66.7(1).
Section 66.51.
Performing Rights Organization of Canada Ltd. v. Canadian Broadcasting Corporation (1986),
7 C.P.R.. (3d) 433 (F.C.A.).
14. Canadian Cable Television Assn. v. Canada (Copyright Board) (1991), 34 C.P.R. (3d) 521
(F.C.A.); CTV Television Network Ltd. v. Canada (Copyright Appeal Board) (1993), 46 C.P.R.
(3d) 343 (F.C.A.), leave to Appeal to the S.C.C. refused (1993), 51 C.P.R. (3d), v. (note)
(S.C.C.).
The Powers of the Copyright Board
application, be varied by the Board if, in its opinion, there has been a material
change in circumstances since the decision was made.15
Any decision of the Copyright Board may, for the purposes of its enforcement, be made an order of the Federal Court or of any superior court and is
enforceable in the same manner as an order thereof.16 To make a decision of
the Board an order of a court, the usual practice and procedure of the court in
such matters may be followed or a certified copy of the decision may be filed
with the registrar of the court and thereafter the decision becomes an order
of the court.17
Independently of any other provision of the Act relating to the distribution or publication of information or documents by the Copyright Board, the
Board may at any time cause to be distributed or published, in any manner
and on any terms and conditions that it sees fit, any notice that it sees fit to be
distributed or published.18
The Copyright Board shall conduct such studies concerning its powers as
are requested by the Minister.19 In addition, the Board must, not later than
August 31 in each year, submit to the Governor in Council through the
Minister an annual report describing briefly the applications made to the
Board, the Boards decisions, and any other matter that the Board considers
relevant.20
The Copyright Board, with the approval of the Governor in Council, may
make regulations governing:
a) the practice and procedure in respect of the Boards hearings, including
the number of members that constitutes a quorum;
b) the time and manner in which applications and notices must be made
or given;
c) the establishment of forms for the making or giving of applications and
notices; and
d) the carrying out of the work of the Board, the management of its internal affairs and the duties of its officers and employees.21
To date the Copyright Board has yet to implement any formal rules of procedure pursuant to its power to make regulations.
15.
16.
17.
18.
19.
20.
21.
Section 66.52.
Subsection 66.7(2).
Subsection 66.7(3).
Section 66.71.
Section 66.8.
Section. 66.9.
Section 66.6. Board also has power to make regulations under subsections 29.9(2), 68.1(3),
and 68.1(3) of the Act.
349
350
Chapter 32 Copyright Board and Collective Administration of Rights
The Governor in Council may make regulations issuing policy directions

to the Copyright Board and establishing general criteria to be applied by the
Board or to which the Board must have regard
(a) in establishing fair and equitable royalties to be paid pursuant to the
Act; and
(b) in rendering its decisions in any matter within its jurisdiction.22
To date the Governor in Council has not passed regulations under this section. Under former subsection 70.63(3) regulations were passed establishing
the criteria to be applied in establishing the manner of determining royalties
for retransmission rights.23
4. Collective Administration of Performing

Rights and Communication Rights
a) Background
Performing Right Societies have licensed the right to perform copyrighted
works publicly for many years. Performing Right Society in England, the
American Society of Composers, Authors, and Publishers (known as ASCAP)
in the United States and the Canadian Performing Right Society engaged in
such licensing.
The Society of Composers, Authors, and Music Publishers of Canada
(SOCAN) is the successor of the Canadian Performing Right Society. SOCAN
is a not-for-profit corporation which is part of a worldwide network of
similar societies administrating similar repertoires. SOCAN has filed and
continues to file numerous tariffs.
In 1993,24 the Act was amended to reflect the existence of specific collectives granting licenses for the communication of works to the public by
telecommunication.25 The communication of works to the public by
telecommunication was added to the rights collectively administered by performing rights societies.
In 1997, the Act was amended to expand the rights subject to collective
administration to include performers performances of works and sound
22.
23.
24.
25.
Section 66.91.
Retransmission Royalties Criteria Regulations, SOR/91690.
S. C. 1993, c. 23, referred to as the Socan Amendment.
S. C. 1993, c. 23, s. 3.
Collective Administration of Performing Rights and Communication Rights 351
recordings embodying such works.26 Specific collectives were established to

administer the performers and sound recording makers right to equitable
remuneration for the performance in public or the communication to the
public by telecommunication of sound recordings.27
b) Performing Rights and Communication

Rights Societies
In order to take part in the collective administration of performing rights and
of communication rights, a society must satisfy the criteria set out in the Act.
First, they must come within the definition of collective society which is as
follows:
collective society means a society, association or corporation that carries on
the business of collective administration of copyright or of the remuneration
right conferred by section 19 or 81 for the benefit of those who, by assignment,
grant of licence, appointment of it as their agent or otherwise, authorize it to act
on their behalf in relation to that collective administration, and
(a) operates a licensing scheme, applicable in relation to a repertoire of
works, performers performances, sound recordings or communication
signals of more than one author, performer, sound recording maker, or
broadcaster, pursuant to which the society, association, or corporation
sets out classes of uses that it agrees to authorize under this Act, and the
royalties and terms and conditions on which it agrees to authorize those
classes of uses, or
(b) carries on the business of collecting and distributing royalties or levies
payable pursuant to this Act.
Second, the collective society must carry on:

(a) the business of granting licenses or collecting royalties for the performance in public of musical works, dramatico-musical works, performers performances of such works, or sound recordings embodying
such works, or
(b) the business of granting licenses or collecting royalties for the communication to the public by telecommunication of musical works, dramatico-musical works, performers performances of such works, or sound
recordings embodying such works, other than the communication of
26. An Act to amend the Copyright Act S.C. 1997, c.24.

27. Section 19.
musical works or dramatico-musical works in the manner described

in subsection 31(2).28
A collective society must also answer within a reasonable time all reasonable
requests from the public for information about its repertoire of works, performers performances, or sound recordings that are in current use.29
i) Filing of Proposed Taris
A collective society must, on or before the March 31 immediately before the
date when its last tariff approved expires, file with the Copyright Board a
proposed tariff, in both official languages, of all royalties to be collected by the
collective society.30 A proposed tariff must provide that the royalties are to be
effective for periods of one or more calendar years.31
As soon as practicable after the receipt of a proposed tariff, the Copyright
Board must publish it in the Canada Gazette and give notice that, within
60 days after the publication of the tariff, prospective users or their representatives may file written objections to the tariff with the Board.32
Where a proposed tariff is not filed with respect to the work, performers
performance or sound recording in question, no action may be commenced
by a collective society for infringement of the applicable rights or the
recovery of royalties referred to in section 19 without the written consent of
the Minister.33
Where a collective society files a proposed tariff any person entitled to
perform in public or communicate to the public by telecommunication
those works, performers performances or sound recordings pursuant to the
previous tariff may do so, even though the royalties set out in the tariff
have ceased to be in effect. In addition, the collective society may collect the
royalties in accordance with the previous tariff until the proposed tariff is
approved.34
ii) Overseeing the Proposed Taris
After a proposed tariff has been filed and published in the Canada Gazette,
the Copyright Board must, as soon as practicable, consider the tariff and
28.
29.
30.
31.
32.
33.
Section 29.7 .
Section 67.
Subsection 67.1(1).
Subsection 67.1 (3).
Subsection 67.1 (4) and see Composers, Authors and Publishers Association of Canada Ltd. v.
Maple Leaf Broadcasting Co. Ltd., [1953] Ex. C.R. 130, [1954] S.C.R. 624.
34. Subsection 68.2 (3).
any objections filed by prospective users or their representatives or raised by

the Board. The Board then sends to the collective society who filed the tariff a
copy of the objections to allow it to reply and sends to the persons who filed
the objections a copy of any reply thereto.35
The Copyright Board must certify the tariffs as approved, with such alterations to the royalties and to the terms and conditions related thereto as the
Board considers necessary, having regard to any objections to the tariffs
which have been filed.36
The Board regulates the balance of market power between copyright
owners and users.37 The mandate of the Board is to set tariffs for the use of the
rights in issue which have a reasonable and suitable or rational basis.
The Board may change or alter a formula previously used for fixing royalties as this is incidental to exercising its statutory discretion.38 However, the
Board must not act on the basis of irrelevant considerations or pursue consistency at the expense of the merits of an individual case.39
It is reasonable and necessary for the Board to base the rates for annual
licenses on the income or a percentage thereof of the licensees, which income
reflects to a greater or lesser degree the use by the licensee of the works in
issue and the number of persons who would hear the performances of the
licensees works. In the case of broadcasting stations, the rates for annual
licences may be fixed as a percentage of their gross revenue.40
The Board must publish the approved tariffs in the Canada Gazette as
soon as practicable and send a copy of each approved tariff, together with the
reasons for the Boards decision, to each collective society that filed a proposed tariff and to any person who filed an objection.41

37. Performing Rights Organization of Can. Ltd. v. C.B.C. (1986), 7 C.P.R. (3d) 433 (F.C.A.),
Canadian Association of Broadcasters v. SOCAN (1994), 58 C.P.R. (3d) 190 (F.C.A.).
38. Performing Rights Organization of Can. Ltd. v. C.B.C. (1986), 7 C.P.R. (3d) 433 (F.C.A.); Composers, Authors and Publishers Association of Canada Ltd. v. Maple Leaf Broadcasting Co.
Ltd.,[1953] Ex. C.R. 130, [1954] S.C.R. 624.
39. Canadian Broadcasting Corporation v. Copyright Appeal Board (1990), 30 C.P.R. (3d) 270
(F.C.A.).
40. Maple Leaf Broadcasting Co. Ltd. v. Composers, Authors and Publishers Association of Canada
Ltd. (1953), 18 C.P.R. 1 (Ex. Ct.), [1954] S.C.R. 624, 21 C.P.R. 45 (S.C.C). This includes
approving or prescribing the manner in which the amount of gross revenue is to be ascertained or verified including an examination of the licensees books and accounts by the
representatives of the performing rights society.
354
c) Equitable Remuneration for Performers and Makers

of Sound Recordings
Tariffs relating to equitable remuneration42 are different from the tariffs
relating to performing or communication rights in that they are not based on
a licence. The right to receive equitable remuneration is a right of remuneration which must be exercised collectively.
In examining a proposed tariff relating to equitable remuneration the
Copyright Board must ensure that
(i) the tariff applies only in respect of performers performances and
sound recordings for which the points of attachment or connecting factors prescribed by subsections 20(1) and (2) of the Act are
satisfied,43
(ii) the tariff does not, because of linguistic and content requirements of
Canadas broadcasting policy set out in section 3 of the Broadcasting
Act, place some users that are subject to that Act at a greater financial
disadvantage than others, and
(iii) the payment of royalties by users pursuant to section 19 will be made
in a single payment.44
The Copyright Board is also authorized to take into account any factor that it
considers appropriate.45
Notwithstanding any tariffs approved by the Copyright Board relating to
equitable remuneration, section 68.1 of the Act proscribes the royalties payable by certain systems as follows:
(a) wireless transmission systems,46 except community systems and public
transmission systems, shall pay royalties for each year of $100 on the
first 1.25 million dollars of annual advertising revenues47 and 100 per
cent of the royalties set out in the approved tariff on any portion of
annual revenues exceeding 1.25 million dollars for that year;
42. See Chapter 19.

43. See Chapter 19 and see the limitations set out in regulation Limitation of the Right to Equitable Remuneration of Certain Rome Convention Countries Statement, SOR/99143.
45. Subsection 68(2)(b). See Chapter 19, the right of remuneration is not available for American
recordings.
46. See Definition of Wireless Transmission System Regulations, SOR/98307 which defines
wireless transmission systems.
47. See Regulations Defining Advertising Revenues, SOR/98447.
(b) community systems shall pay royalties of $100 in respect of each

year.48
The Copyright Board shall, in certifying a tariff as approved, ensure that there
is a preferential royalty rate for small cable transmission systems.49

Without prejudice to any other remedies available to it, a collective society
may, for the period specified in its approved tariff, collect the royalties specified in the tariff.50 If the royalties are not paid, the collective society may
recover them in a court of competent jurisdiction,51 including the Federal
Court.52
No proceedings may be brought for the infringement of the right to perform in public or the right to communicate to the public by telecommunication, referred to in section 3 of the Act, or the recovery of royalties referred
to in section 19 of the Act against a person who has paid or offered to pay the
royalties specified in an approved tariff.53

Subsection 69(2) provides that in respect of public performances by means of
any radio receiving set in any place other than a theatre that is ordinarily and
regularly used for entertainments to which an admission charge is made, no
royalties shall be collectable from the owner or user of the radio receiving set,
but the Copyright Board shall, in so far as possible, provide for the collection
in advance from radio broadcasting stations of royalties appropriate to the
conditions produced by the provisions of the subsection and shall fix the
amount of the same.54
48. Subsection 68.1 (1). See Re Socan/NRCC Statement of Royalties (Commercial Radio) 2003 to
2007 (2005), 44 C.P.R. (4th) 40 (Copyright Board).
49. Subsection 68.1 (4) and see Definition of Small Cable Transmission System Regulations,
SOR/94755 which defines small cable transmission systems.
50. Once a tariff is approved it is no longer open to a defendant to dispute its validity, Society of
Composers, Authors and Music Publishers of Canada v. Maple Leaf Sports & Entertainment
Ltd (2005), 40 C.P.R. (4th) 28 (F.C.).
52. Section 29.7 .
54. See Vigneux et al. v. Canadian Performing Right Society Ltd. [1942] Ex. C.R. 129, [1943]
S.C.R. 348, 2 C.P.R. 251 (S.C.C), (1943), 4 C.P.R. 65 (P.C.).
The royalty is determined by the Board on its own initiative not on the
basis of a proposed tariff. In fixing royalties, the Board must take into account
all expenses of collection and other outlays, if any, saved or savable by, for or
on behalf of the owner of the copyright or performing right concerned or his
agents, in consequence of subsection 69(2).55
5. The General Regime-Collective

Administration in Relation to Rights under
Sections 3, 15, 18, and 21
a) Background
In 1988, the Act was amended to allow collectives to operate licensing schemes
relating to any of the acts mentioned in section 3 of the Act.56 In 1997, new
collective societies were authorized to collectively administer the new rights
relating to performers performances under section 15, sound recordings
under section 18, and communication signals under section 21.57
The Copyright Board refers to the regime applicable to these collective
societies as the general regime. The general regime applies to all of the collective societies that are not subject to the specific regimes set out in the Act.

The Act contains two definitions relating to general regime collective societies.
collective society means a society, association or corporation that carries on
the business of collective administration of copyright or of the remuneration
right conferred by section 19 or 81 for the benefit of those who, by assignment,
grant of licence, appointment of it as their agent or otherwise, authorize it to act
on their behalf in relation to that collective administration, and
(a) operates a licensing scheme, applicable in relation to a repertoire of works,
performers performances, sound recordings, or communication signals
of more than one author, performer, sound recording maker, or broadcaster, pursuant to which the society, association, or corporation sets
out classes of uses that it agrees to authorize under this Act, and the
royalties and terms and conditions on which it agrees to authorize those
classes of uses, or

56. An Act to amend the Copyright Act and other Acts in consequence thereof, S.C. 1988, c. 15.
57. An Act to amend the Copyright Act, S.C. 1997, c.24 , section 46.
The General Regime-Collective Administration

(b) carries on the business of collecting and distributing royalties or levies
payable pursuant to this Act.58
The general regime applies to a collective society that operates

(a) a licensing scheme, applicable in relation to a repertoire of works of
more than one author, pursuant to which the society sets out the
classes of uses for which and the royalties and terms and conditions
on which it agrees to authorize the doing of an act mentioned in section 3 in respect of those works;
(a.1) a licensing scheme, applicable in relation to a repertoire of performers performances of more than one performer, pursuant to which
the society sets out the classes of uses for which and the royalties
and terms and conditions on which it agrees to authorize the doing
of an act mentioned in section 15 in respect of those performers
performances;
(b) a licensing scheme, applicable in relation to a repertoire of sound
recordings of more than one maker, pursuant to which the society
sets out the classes of uses for which and the royalties and terms and
conditions on which it agrees to authorize the doing of an act mentioned in section 18 in respect of those sound recordings; or
(c) a licensing scheme, applicable in relation to a repertoire of communication signals of more than one broadcaster, pursuant to which the
society sets out the classes of uses for which and the royalties and
terms and conditions on which it agrees to authorize the doing of an
act mentioned in section 21 in respect of those communication
signals.59
A collective society subject to the general regime must answer within a reasonable time all reasonable requests from the public for information about its
repertoire of works, performers performances, sound recordings, or communication signals.60
A collective society may, for the purpose of setting out by license, the royalties
and terms and conditions relating to classes of uses, either file a proposed
tariff with the Copyright Board or enter into agreements with users.61
58.
59.
60.
61.
Section 2.
Section 70.1.
Section 70.11.
Section 70.12.
357
358
Where a collective society and users are unable to agree on the royalties or
on their related terms and conditions, either of them or a representative of
either may, after giving notice to the other, apply to the Board to fix the royalties and their related terms and conditions.62 The Board will then commence
the process of fixing the royalties but the Board will not proceed with the
application where a notice is filed with the Board that an agreement touching
the matters in issue has been reached.63
Where any royalties are fixed for a specific period by the Board, the person
concerned may, during that period, subject to the related terms and conditions fixed by the Board and to the terms and conditions set out in the scheme
and on paying or offering to pay the royalties, do the act with respect to which
the royalties and their related terms and conditions are fixed. The collective
society may, without prejudice to any other remedies available to it, collect
the royalties or, in default of their payment, recover them in a court of competent jurisdiction.64

Each collective society subject to the general regime shall, on or before the
March 31 immediately before the date when its last tariff approved pursuant
to subsection 70.15(1) expires, file with the Board a proposed tariff, in
both official languages, of royalties to be collected by the collective society.65
A proposed tariff must provide that the royalties are to be effective for periods of one or more calendar years.66
The procedures for the approval and the consideration of the proposed
tariff are similar to those applied to the tariffs for performing and communication rights67 subject to two exceptions. First, section 70.16 provides that
independently of any other provision of the Act, the Board must notify
persons affected by the proposed tariff by distributing or publishing a specific
notice. Second, an agreement between a collective society and a person
authorized to do an act mentioned in section 3, 15, 18, or 21, as the case may
be, takes precedence over an approved tariff, if the agreement is in effect
during the period covered by the approved tariff.68
Subject to the provisions of any agreement entered into with a collective
society, no proceedings may be brought for the infringement of a right
62.
63.
64.
65.
66.
67.
68.
Section 70.2.
Section 70.3.
Section 70.4.
Subsection 70.14 and subsection 67.1 (3).
Subsection 70.14 and see part 4 of this chapter.
Section 70.191.
Examination of Agreements 359
referred to in section 3, 15, 18, or 21 against a person who has paid or offered
to pay the royalties specified in an approved tariff.69
Subject to the provisions of any agreement entered into with a collective
society, where a collective society files a proposed tariff in accordance with
section 70.13 of the Act, any person authorized by the collective society to do
an act referred to in section 3, 15, 18, or 21, as the case may be, pursuant to
the previous tariff may do so, even though the royalties set out therein have
ceased to be in effect, and the collective society may collect the royalties in
accordance with the previous tariff, until the proposed tariff is approved.70
6. Examination of Agreements
An agreement between a collective society and a person authorized to do an
act mentioned in section 3, 15, 18, or 21 may be potentially contrary to the
provisions of section 45 of the Competition Act,71 which deals with agreements or arrangements which restrain or injure competition unduly. A collective society or the user may file a copy of an agreement with the Board
within fifteen days after it is concluded72 and section 45 of the Competition
Act does not apply in respect of any royalties or related terms and conditions
arising under the filed agreement.73
The Commissioner of Competition may have access to the copy of the
agreement which has been filed.74 Where the Commissioner considers that an
agreement is contrary to the public interest, the Commissioner may, after
advising the parties concerned, request the Board to examine the agreement.75
The Board must, as soon as practicable, consider the request to examine the
agreement and may, after giving the Commissioner and the parties concerned
an opportunity to present their arguments, alter the royalties and any related
terms and conditions arising under the agreement.76 As soon as practicable
after rendering its decision, the Board shall send a copy of the decision together
with any reasons to the parties concerned and to the Commissioner.77
69.
70.
71.
72.
73.
74.
75.
76.
77.
Subsection 70.17.
Subsection 70.18.
R.S.C. 1985, c. C-34 as amended.
Subsection 70.5(2).
Subsection 70.5(3).
Subsection 70.5(4).
Subsection 70.5(5).
Subsection 70.6(1).
Subsection 70.6(2).
360
7. The Retransmission Regime78

a) Background
Before 1988, the retransmissions of works through the use of co-axial cables
was not subject to the Act.79 Pursuant to the Canada-United States Free Trade
Agreement, Canada agreed to amend the Act to provide to a copyright holder
a right of equitable and non-discriminatory remuneration for any retransmission to the public of the copyright holders program where the original
transmission of the program was carried in distant signals intended for free,
over-the-air reception by the general public.80
As a result, the Act was amended and all transmission of signs, signals,
writing, images, sounds, or intelligence of any nature by wire, radio, visual,
optical, or other electro-magnetic system are subject to the control of the
copyright owner.81 The Board was given jurisdiction to oversee the collective
administration of royalties to be paid by retransmitters pursuant to a universal, statutory license scheme, which is referred to as the Retransmission
regime.

A collective society subject to the retransmission regime must come within
the definition of collective society as discussed above in relation to the general regime.
The retransmission regime only applies to collective societies which carry
on the business of collecting royalties for:
a) the retransmission of a distant signal,82
b) at the expiration of one year after their making, the making, at the time
of its communication to the public by telecommunication, a single copy
of a news program, or a news commentary program, excluding documentaries, for the purposes of performing the copy for the students of
the educational institution for educational or training purposes;83
c) performing the copy in public, at any time or times after one year of the
making of a copy, before an audience consisting primarily of students
78.
79.
80.
81.
82.
83.

Sections 2005 and 2006.
See the section 2 definition of telecommunication and section 2.4.
Subsection 31(2)(d).
Subsection 29.6(1)(a), subsection 29.6 (2).
The Retransmission Regime 361
of the educational institution on its premises for educational or training purposes;84

d) making a single copy of a work or other subject-matter at the time that
it is communicated to the public by telecommunication and keeping
the copy for more than 30 days to decide whether to perform the copy
for educational or training purposes or to perform it before an audience consisting primarily of students of the educational institution on
its premises for educational or training purposes.85
Each collective society that carries on the business of collecting royalties
referred to in subsection 29.6(2), 29.7(2), or (3) or paragraph 31(2)(d) shall
file with the Board a proposed tariff, but no other person may file any such
tariff. 86
Section 31 of the Act sets out the scheme by which royalties are paid by
retransmitters to copyright owners with respect to the retransmission of their
works by cable retransmission. The amount of the royalties is fixed by the
Board. No remuneration is payable with respect to the retransmission of a
local signal. 87
The regime has been described by the Board as a universal, statutory
license scheme. Any retransmitter who meets the conditions set out in subsection 31(2) of the Act acquires the retransmission right for all works embedded in the signals he or she retransmits. The license is free with respect to
local signals; distant signals command the payment of royalties set by the
Board. The amount of royalties is set at a level sufficient to compensate all
works carried on distant signals. Conversely, all copyright owners in all
works carried on a distant signal are entitled to a share of the remuneration
as long as they comply with the Act. They can get paid in one of two ways.
The vast majority have formed collective societies that filed proposed statements of royalties, thereby becoming entitled to collect from retransmitters a
share of the royalties, which the societies then distribute to their members.
Rights owners who have not joined a collective (sometimes referred to as
orphans) can avail themselves of subsection 76(1) of the Act and claim their
share from one of the societies targeted in the tariffs.88
Sections 29.6, 29.7, and 29.9 of the Act deal specifically with the right of
educational institutions to make copies of and perform radio and television
programs in the circumstances described in those sections. The regime as it
84.
85.
86.
87.
88.
Subsection 29.6(1)(b), subsection 29.6 (2).

Section 29.7 .
Section 29.7 .
Section 29.7 .
Re Societe des Auteurs, Recherchistes, Documentalistes et Compositeurs designation application
(1999), 86 C.P.R. (3d) 481 (Copyright Board); FWS Joint Sports Claimants Inc. v. Border
Broadcasters Inc. (2001), 16 C.P.R. (4th) 61 (F.C.A.).
362
applies to these rights is a universal, statutory license scheme. Anyone owning

rights in the program that is copied and performed, including those who have
not joined a collective society, is entitled to a share of the remuneration.89

A collective society subject to retransmission regime must, on or before the
March 31 immediately before the date when its last approved tariff ceases to
be effective, file with the Board a proposed tariff.90 The tariff must provide
that the royalties are to be effective for periods of one or more calendar
years.91
The procedures for the approval and the consideration of proposed tariffs
are similar to those applied to the tariffs for performing and communication
rights. However, the Board, in establishing a manner of determining royalties
or in apportioning them, must not discriminate between owners of copyright
on the ground of their nationality or residence92 and must ensure that there
is a preferential rate for small retransmission systems.93
Without prejudice to any other remedies available to it, a collective society
may, for the period specified in its approved tariff, collect the royalties specified in the tariff and, in default of their payment, recover them in a court of
competent jurisdiction.94
Royalty claimants who are not members of a collective society are entitled to
applicable royalties. Section 76 provides that an owner of copyright who does
not authorize a collective society to collect, for that persons benefit, royalties
during a period when an approved tariff that is applicable to that kind of
work is effective, is entitled to be paid those royalties by the collective society
that is designated by the Board, of its own motion or on application, subject
to the same conditions as those to which a person who has so authorized that
collective society is subject.95 The right to make a claim under section 76 is
89. Re ERCC Statement of Royalties, 1999-2002. (2002), 23 C.P.R. (4th) 352 (Copyright Board)
and see Chapter 29, part 3.
90. Subsection 71(2). See subsection 71 (3) relating to the filing of a first proposed tariff.
93. Section 74 and see Regulation SOR/94755, which defines a small retransmission system.
94. Section 75.
95. See Re Societe des Auteurs, Recherchistes, Documentalistes et Compositeurs designation application (1999), 86 C.P.R. (3d) 481 (Copyright Board).
Private Copying
the only remedy for the payment of royalties to which the owner of the copyright is entitled.96
The Copyright Board has by regulation determined that claims to entitlement under section 76 must be exercised within two years after the end of the
calendar year in which the retransmission occurred.97
8. Private Copying
Part VIII to the Act which deals with private copying addresses the practical
inability of rights-holders to enforce their reproduction rights in the context
of mass infringement resulting from the accelerating access to blank
media.98
Part VIII was enacted: (1) to legalize private copying (but not pirating,
which would be copying for resale); (2) to provide a system for the payment
of royalties to those with copyrights to be imposed by way of levies on importers and manufacturers of blank tapes when sold by them; (3) to delegate to
the Copyright Board the power to certify tariffs setting the levies on the sale
of the blank tapes by importers and manufacturers.99
The eligible performer and eligible maker are entitled to remuneration. Eligible performer means the performer of a performers performance
of a musical work, if the performers performance is embodied in a sound
recording and
(a) both the following two conditions are met:
(i) the performer was, at the date of the first fixation of the sound
recording, a Canadian citizen or permanent resident within the
meaning of subsection 2(1) of the Immigration and Refugee
Protection Act, and
(ii) copyright subsists in Canada in the performers performance, or
(b) the performer was, at the date of the first fixation of the sound recording, a citizen, subject or permanent resident of a country referred to in
a statement published under section 85.

97. Subsection 76(4); and see Regulations Establishing the Period Within Which Owners of Copyright not Represented by Collective Societies Can Claim Retransmission Royalties,
SOR/97164.
98. Canadian Private Copying Collective v. Canadian Storage Media Alliance, 2004 FCA 424,
36 C.P.R. (4th) 289 (F.C.A.).
99. The Evangelical Fellowship of Canada v. Canadian Music Rights Agency (1999), 1 C.P.R. (4th)
497 (F.C.A.).
363
An eligible maker means a maker of a sound recording that embodies a

musical work, if
(a) both the following two conditions are met:
(i) the maker, at the date of that first fixation, if a corporation had its
headquarters in Canada or, if a natural person was a Canadian
citizen or permanent resident within the meaning of subsection
2(1) of the Immigration and Refugee Protection Act, and
(ii) copyright subsists in Canada in the sound recording, or
(b) the maker, at the date of that first fixation, if a corporation, had its
headquarters in a country referred to in a statement published under
section 85 or, if a natural person was a citizen, subject, or permanent
resident of such a country.
Section 85 provides that only non-Canadian performers and makers entitled
to remuneration under the Private Copying scheme are those from countries
that grant Canadian citizens or corporations similar reciprocal rights under
their national copyright legislation.100
Section 80 provides that the act of reproducing all or any substantial part
of a musical work embodied in a sound recording, a performers performance
of a musical work embodied in a sound recording, or a sound recording in
which a musical work or a performers performance of a musical work is
embodied unto an audio recording medium for the private use of the person
who makes the copy, does not constitute an infringement of copyright.
Audio recording medium means a recording medium, regardless of its
material form, onto which a sound recording may be reproduced and that is
of a kind ordinarily used by individual consumers for that purpose, excluding
any prescribed kind of recording medium. Blank audio recording medium
means (a) an audio recording medium onto which no sounds have ever been
fixed, and (b) any other prescribed audio recording medium.101
Section 81 provides that eligible authors, performers, and makers have a
right to receive remuneration from the manufacturers and importers of blank
audio recording media in respect of such reproduction. Section 83 provides
that collective societies may file with the Copyright Board a proposed tariff
for the benefit of eligible authors, performers, and makers authorizing it to
act on their behalf.
Section 82 provides that every person who, for the purpose of trade, manufactures a blank audio recording medium in Canada or imports such a
medium into Canada, is liable, subject to prescribed exceptions, to pay a levy
to the collecting body on selling or otherwise disposing of the medium in
100. Section 85.

101. Section 79.
Owners of Copyright Who Cannot Be Found 365
Canada and must keep statements of account of such activities. No levy is

payable on a blank audio recording medium which is exported from Canada102
or where the manufacturer or importer sells the medium to a society, association or corporation that represents persons with a perceptual disability.103
The collecting body may, for the period specified in an approved tariff, collect
the levies due under the tariff and, in default of payment, recover them in a
court of competent jurisdiction.104
The Board must consider such proposed tariffs and objections thereto and
establish the manner of determining the levies and such terms and conditions
related to those levies as the Board considers appropriate.105 In exercising its
power, the Board must satisfy itself that the levies are fair and equitable,
having regard to any prescribed criteria.106
Tariffs have been in place since 1999 although there have been many
objections and challenges. A collective called the Canadian Private Copying
Collective/Socit Canadienne des Perception de la Copie Prive serves as a
collecting body to receive revenues from the levy.
It is clear that that the Board has no legal authority to certify a tariff on
digital audio recorders or on the memory permanently embedded in digital
audio recorders.107
9. Owners of Copyright Who Cannot Be Found

An application may be made to the Board by a person who wishes to obtain a
license to use a published work, a fixation of a performers performance, a
published sound recording, or a fixation of a communication signal where
the owner of the copyright in the work cannot be found.108 Where the Board
is satisfied that the applicant has made reasonable efforts to locate the owner
of the copyright and that the owner cannot be located, the Board may issue to
the applicant a license to do an act mentioned in section 3, 15, 18, or 21, as the
case may be.109 Any license issued is non-exclusive and is subject to such

103. Section 86.
104. Section 88 and see Canadian Private Copying Collective v. Amico Imaging Services Inc. 2004
F.C. 469 affirmed 2004 FCA 412 (F.C.A.).
106. Section 29.7 .
107. Section 29.7 .
108. Section 77.
109. Section 77(1).
terms and conditions as the Board may establish.110 In an appropriate case

the Board can exercise its discretion to issue a retroactive license.111
10. Compensation for Acts Done Before

Recognition of Copyright
The Copyright Board determines the amount of the compensation, under
certain circumstances, for formerly unprotected acts in countries that later
become a WTO member, a Rome Convention country or a treaty country.112
The Act extends retrospective protection to works which may not have been
protected previously, when a country becomes a Berne Convention country
or a WTO member.113 The Act contains procedures for protecting the rights
of parties who relied on the absence of such rights and allows the copyright
owner to terminate such rights on payment of compensation as is agreed to
between the parties or, failing agreement, as is determined by the Board.114
110.
111.
112.
113.
114.
Section 77(2).
Re Breakthrough Films and Television (2006), 53 C.P.R. (4th) 240 (Copyright Bd.).
Section 78 and section 2 definitions of these terms.
See subsection 5(1.01).
See sections 32.4, 32.5, 33, and 78.
CHAP T ER
33
Industrial Designs
369
369
370
c) Finished Article
370
370
e) Sets
370
f) Kits
371
2. Industrial Designs and Other Intellectual Property Rights
371
a) Copyright
371
b) Patents
371
c) Trademarks
372
3. Originality
372
4. Publication
374
5. The Proprietor
374
a) Author
374
375
6. Application
375
a) The Requirements
375
377
c) Priority Based on an Application Filed in Another Country
377
7. Registration
378
8. Marking
379
9. Term
380
10. Assignment and License
380
11. Expungement and Alteration
381
12. Infringement
381
367
368
Chapter 33 Industrial Designs

381
b) License
382
c) The Activities
382
383
e) Whether a Design Not Diering Substantially from the

Design Has Been Applied
383
13. Actions for Infringement
384
a) Jurisdiction
384
384
14. Remedies
a) Injunction
385
385
i) Interlocutory Injunction
385
ii) Permanent Injunction
385
b) Damages or Prots
385
c) Delivery Up
386
d) Defenses
386
Definition of a Design 369
The Industrial Design Act provides that design means features of shape,
configuration, pattern, or ornament and any combination of those features
that, in a finished article, appeal to and are judged solely by the eye.1 The
reference in the definition to any combination of those features makes it
clear that a design may be made up of one or more of the features of shape,
configuration, pattern, or ornament.
The definition is limited by section 5.1 of the Act which provides that no
protection afforded by the Act extends to:
(a) features applied to a useful article2 that are dictated solely by a utilitarian function of the article, or
(b) any method or principal of manufacture or construction.
As a result of section 5.1, protection cannot be obtained for a feature applied
to an article that is dictated solely by a utilitarian function of the article. The
limitation does not apply to ornamental non-functional features. In considering an application, the Commissioner of Patents considers the whole shape
or configuration of the design as registrable (assuming that it has eye appeal)
unless every feature is dictated solely by functional considerations, in which
case the exclusion applies even though the article might also have eye appeal.
If any feature goes beyond being dictated solely by function, this may entitle
the shape as a whole to protection.3

The word shape suggests the external form of the article. Configuration
suggests the arrangement by which the shape of a composite article is arrived
at including the physical relationship of the components of the design to each
other. Each word suggests something in three dimensions.
1. Industrial Design Act R.S.C. 1985 c.I-9 as amended section 2.

2. Section 2 of the Industrial Design Act provides that useful article means an article that has a
utilitarian function and includes a model of any such article. Article means any thing that is
made by hand, tool or machine; utilitarian function in respect of an article, means a function
other than merely serving as a substrate or carrier for artistic or literary matter. These definitions are similar to those set out in the Copyright Act.
3. Re LTI Corp. Industrial Design Application 1998-2446 (2003), 25 C.P.R. (4th) 256 (Patent
Appeal Board and Commissioner of Patents) following Amp Inc. v. Utilux Proprietary Limited
[1972] R.P.C. 103 (U.K.H.L.) and Interlego AG v Tyco Industries Inc. [1988] 3 W.L.R. 678
(P.C).
370
The use of the term pattern suggests the article is made up of repetitive elements which are all the same. To come within the definition, the ornamentation must only distinguish the appearance of the article, there is no requirement
that it beautify the article.4
Color by itself is not the subject-matter of a design and is typically regarded
as a trade variant which does not alter the identity of the design. In exceptional cases it is possible that the colors and their arrangement may form part
of the design.5
c) Finished Article
The words in a finished article in the definition of design refer to a physical embodiment divorcing the design from a mere scheme or preliminary
conception of an idea.6

To be protected under the Act, the design must appeal to and be judged solely
by the eye. The definition requires that the design be reviewed from the standpoint of the informed consumer.7 Normally unmagnified vision will be the
appropriate reference.8
e) Sets
Frequently, articles which feature the same design are sold as a set.9 Cutlery
or glassware are common examples. Protection under the Act can be obtained
by filing a single application if:
(a) all of the pieces are of the same general character;
4. D.R.G. Inc. v. Datafile Limited (1987), 18 C.P.R. (3d) 538 (F.C.T.D.), 35 C.P.R. (3d) 243 (F.C.A.).
5. D.R.G. Inc. v. Datafile Limited (1987) 18 C.P.R. (3d) 538 (F.C.T.D.), 35 C.P.R. (3d) 243 (F.C.A.).
6. Milliken & Company et al. v. Interface Flooring Systems (Canada) Inc. [1998] 3 F.C. 103, 83
C.P.R (3rd) 470 (F.C.T.D.), affirmed (2000), 5 C.P.R (4th) 209(F.C.A.).
7. Gandy v. Canada (Commissioner of Patents) (1980), 47 C.P.R. (2d) 109 (F.C.T.D.); Rothbury
International Inc. v. Canada (Minister of Industry) (2004), 36 C.P.R. (4th) 203 (F.C.).
8. Amp Incorporated v. Utilux Proprietary Limited [1970] R.P.C. 397 (U.K.C.A.), [1972] R.P.C.
103 (U.K.H.L.).
9. Section 2 provides that set means a number of articles of the same general character ordinarily on sale together or intended to be used together, to each of which the same design or
variants thereof are applied.
Industrial Designs and Other Intellectual Property Rights
(b) the same design or variants10 thereof is applied to each piece of the set;
(c) all of the articles in the set must normally be on sale together or
intended to be used together.11
f) Kits
A design which is applied to a finished article assembled from a kit12 may be
protected if the following conditions are met:
(a) all, or substantially all of the parts required to construct the article are
sold together as a unit;
(b) the parts must assemble to create a finished article;
(c) the description in the application must refer to features in the completely assembled view; and
(d) the completely assembled view must be illustrated in the drawings or
photographs.
2. Industrial Designs and Other Intellectual

Property Rights
a) Copyright
Sections 64 and 64.1 of the Copyright Act,13 set out the rules for determining
the extent of copyright protection available to designs applied to a useful
article, potentially subject to protection under the Industrial Designs Act.
b) Patents
A patent grants a monopoly during its term and gives to the patentee, for the
term of the patent, the exclusive right, privilege, and liberty of making,
constructing, and using the invention and selling it to others to be used.14
10. Section 2 provides that variants means designs applied to the same article or set and not
differing substantially from one another.
11. Section 2.
12. Section 2 provides that kit means a complete or substantially complete number of parts
that can be assembled to construct a finished article.
13. S.C.1988, c.15, s. 11 and see Chapter 18.
14. Patent Act, R.S.C. 1985, c. P-4, s. 42.
371
372
If an article is patentable, it may be concurrently protected by a patent

registration and industrial design registration so long as the respective
requirements of The Patent Act and Industrial Design Act are satisfied.15
c) Trademarks
A distinguishing guise may be registered under the Trade-marks Act.16
A distinguishing guise means a shaping of wares or their containers or
mode of wrapping or packaging wares, the appearance of which is used for the
purposes of distinguishing such wares or services from those of others. 17
Registration as a design will not preclude the subsequent registration of
the design as a distinguishing guise under the Trade-marks Act if it is otherwise registrable.18
3. Originality
It is well established that to be entitled to registration, a design must be
original.19 The Act does not state expressly what is required to be shown to
establish originality but some direction is provided. First, in order to register
a design, the applicant must deposit a declaration that the design was not, to
the proprietors knowledge, in use by any person other than the first proprietor at the time the design was adopted by the first proprietor.20 Second, it is
provided that the Minister shall register the design if the Minister finds that
it is not identical with, or does not so closely resemble any other design
already registered so as to be confounded therewith.21 Finally, a certificate
signed by the Minister, or the Commissioner of Patents or an officer, clerk, or
employee of the Commissioners office, is, in the absence of proof to the contrary, sufficient evidence of the originality of the design.22
15.
16.
17.
18.
19.
20.
21.
22.
Werner Motors Co. v. Gamage Ltd (1904), 21 R.P.C. 137, 621 (U.K.C.A.).
R.S.C. 1985, c.T-13, as amended, section 13.
WCC Containers Sales Ltd. et al. v. Haul-All Equipment Ltd. (2003), 28 C.P.R. (4th) 175
(F.C.T.D.).
Clatworthy & Son Ltd. v. Dale Display Fixtures Ltd. [1929] S.C.R. 429 (S.C.C.).
Subsection 4(1) (b).
Subsection 6(1). The practice of the Industrial Design Office is set out in the Industrial
Design Office Practices, Canadian Intellectual Property Office (Industrial Design Office)
(Ottawa: Industry Canada, 2004) at section 6.6.
Subsection 7 (3); Angelstone Ltd. v. Artistic Stone Ltd. [1960] Ex. C.R. 286, 33 C.P.R. 155.
Originality 373
In order for a design to be original there must be some substantial difference between the new design and pre-existing designs.23 The introduction or
substitution of ordinary trade variants in a design, or a change in the mode of
construction, is not sufficient to make a design original.24
Originality involves at least a spark of inspiration on the part of the
designer either in creating an entirely new design or hitting upon a new use
for an old one. 25 There must be an exercise of intellectual activity so as to
originate or suggest for the first time, something which had not occurred to
anyone before as to applying by some manual, mechanical, or chemical means
some pattern, shape, or ornament to some special subject-matter to which it
had not been applied before. 26
In order to determine if a design is original, a purely visual assessment of
the features of the design must be made. This is consistent with the definition
of a design contained in the Act.27 Whether a design is original is a question
of fact that must be assessed in accordance with the nature and character of
the article to which the design refers.28
Originality must also be judged in the context of the article to which the
design is applied.29 If there is little scope for adding design features, a small
difference in additional features may be important.30
If the design is well known, its application for a purpose analogous
to that for which it was originally applied will not likely be sufficiently original for the purpose of the Act.31 However, the new application of a wellknown design to a different material, for a different purpose may be sufficiently
original.32
It is not necessary that every part of a design be original. A combination of
well-known designs or configurations may produce an original design.33
23. Clatworthy & Son Ltd. v. Dale Display Fixtures Ltd. [1929] S.C.R. 429 (S.C.C.); Re Industrial
Design Application No. 19960991 (2000), 5 C.P.R. (4th) 317 (Patent Appeal Bd); Re Industrial Design Application No. 19970381 (2002), 21 C.P.R. (4th) 339 (Patent Appeal Bd.).
24. Renwal Mfg. Co. Ltd. v. Reliable Toy Co. Ltd. et al. [1949] Ex. C.R. 188, 9 C.P.R. 67 (Ex. Ct.);
Angelstone Ltd. v. Artistic Stone Ltd. [1960] Ex. C.R. 286, 33 C.P.R. 155 (Ex. Ct.).
25. Bata Industries Ltd. v. Warrington Inc (1985), 5 C.P.R. (3d) 339 (F.C.T.D.).
26. Rothbury International Inc. v. Canada (Minister of Industry) (2004), 36 C.P.R. (4th) 203 (F.C.).
27. Rothbury International Inc. v. Canada (Minister of Industry) (2004), 36 C.P.R. (4th) 203 (F.C.).
28. Clatworthy & Son Ltd. v. Dale Display Fixtures Ltd., [1929] S.C.R. 429 (S.C.C.).
29. Dover, Ltd. v. Nrnberger Celluloidwaren Fabrik Gebrder Wolff [1910] 2 Ch. 25 (U.K.C.A.);
Bata Industries Ltd. v. Warrington Inc. (1985), 5 C.P.R. (3d) 339 (F.C.T.D.); Re Industrial
Design Application No. 19970381 (2002), 21 C.P.R. (4th) 339 (Patent Appeal Bd.).
30. Re Industrial Design Application No. 19970381 (2002), 21 C.P.R. (4th) 339 (Patent
Appeal Bd.).
31. Dover Ltd. v. Nrnberger Celluloidwaren Fabrik Gebrder Wolff [1910] 2 Ch. 25 (U.K.C.A.);
Industrial Design Application No. 20011238 (2004), 30 C.P.R. (4th) 571 (Pat. App. Bd.).
32. Industrial Design Application No. 1999-0058 (2003), 29 C.P.R. (4th) 93 (Pat. App. Bd.).
33. Clatworthy & Son Ltd. v. Dale Display Fixtures Ltd., [1929] S.C.R. 429 (S.C.C.).
374
Originality of a design is assessed as of the date of the creation of the

design, not the date of its registration.34
4. Publication
The Act provides that the registration of a design shall be refused if the application for registration is filed in Canada more than one year after the publication of the design in Canada or elsewhere. 35 Publication anywhere in the
world must be considered.
Publication means offering or making an article available to the public.
In this context the definition includes those who are, in fact, or are considered
by the design owner as apt to be, interested in purchasing the article to which
the design is applied or taking advantage of its availability. Disclosure of the
design, for the purpose of obtaining orders for an article to be made according
to the design, is a publication of the design.36 Publication must generally be of
a commercial nature. Publication to service providers by the design owner to
develop a commercial version of the design does not constitute publication.37
All disclosures for the purpose of soliciting orders typically constitute
publication.38 The sale of the article to which the design is applied will be
publication.
5. The Proprietor
a) Author
The author of a design is the first proprietor of the design unless the author
of a design has executed it for another person for consideration, in which case
the person providing the consideration is the first proprietor of the design.39
34. Bata Industries Ltd. v. Warrington (1985), 5 C.P.R. (3d) 339 (F.C.T.D.).
35. Subsection 6(3)(a). Prior to January 1, 1994, the registration of a design was refused if the
application for registration was filed in Canada more than one year after the publication of
the design in Canada; Durable Electric Appliance Co. Ltd. v. Renfrew Electric Products Ltd.
et al. [1926] 4 D.L.R. 1004, [1928] S.C.R. 8.
36. Algonquin Mercantile Corp. v. Dart Industries Canada (1984), 1 C.P.R. (3d) 75 (F.C.A.); Ribbons (Montreal) Ltd. v. Belding Corticelli Ltd. [1961] Ex. C.R. 388, 36 C.P.R. 65.
37. Ribbons (Montreal) Ltd. v. Belding Corticelli Ltd. [1961] Ex. C.R. 388, 36 C.P.R. 65; Global
Upholstery Co. Ltd. v. Galaxy Office Furniture Ltd. (1976), 29 C.P.R. (2d) 145 (F.C.T.D.).
38. Algonquin Mercantile Corp. v. Dart Industries Canada (1984), 1 C.P.R. (3d) 75 (F.C.A).
Application
The Act does not contain a definition of the word author but generally
speaking, the author of a design is the person who has developed the shape,
configuration, pattern, or ornament or combination of those features which
give rise to the design.40 The personal responsibility of the author for the
development of the design must be considered. Individuals who have merely
carried out instructions provided by another will not likely be considered to
be an author.41

The Act provides that if the author of a design has executed it for another
person for consideration, the person providing the consideration is the first
proprietor of the design.42 This provision applies to an independent contractor who is paid to produce a design and designs produced by individuals in
the course of their employment.43
If an employee, who created a design in the course of employment, registers it in his or her personal name, the registration is invalid.44
6. Application
a) The Requirements
The proprietor of a design may apply to register it by paying the prescribed
fees and filing an application, in the form set out in the Industrial Design
Regulations, with the Industrial Design section of the Office of Commissioner
of Patents.45 The application must include:
(a) a drawing or photograph of the design and a description of the
design;
40. Ribbons (Montreal) Ltd. v. Belding Corticelli Ltd., [1961] Ex. C.R. 388, 36 C.P.R. 65 (Ex. Ct.);
Uniformes Town & Country Inc. v. Labrie (1992), 44 C.P.R. (3d) 514 (F.C.A.).
41. Renwal Mfg. Co. Inc. v. Reliable Toy Co. Ltd. et al., [1949] Ex. C.R. 188 (Ex. Ct.); Comstock
Canada v. Electec Ltd., (1991), 38 C.P.R. (3d) 29 (F.C.T.D.).
43. Renwal Mfg. Co. Inc. v. Reliable Toy Co. Ltd. et al. [1949] Ex. C.R. 188, 9 C.P.R. 67 (Ex. Ct.);
Angelstone Ltd. v. Artistic Stone Ltd. [1960] Ex. C.R. 286, 33 C.P.R. 155 (Ex. Ct.).
44. Angelstone Ltd. v. Artistic Stone Ltd., [1960] Ex. C.R. 286, 33 C.P.R. 155 (Ex. Ct.); Hassenfeld
Bros. Inc. et al. v. Parkdale Novelty Co. Ltd., [1967] 1 Ex. C.R. 277 (Ex. Ct.).
45. See section 9, Industrial Design Regulations, SOR/2003-210; SOR/2007-92.
375
376
(b) a declaration that the design was not, to the proprietors knowledge, in
use by any other person than the first proprietor at the time the design
was adopted by the first proprietor; and
(c) any prescribed information.46
There must be a written description of the design.47
On receipt of an application, the application is classified, 48 searched,49 and
examined by an examiner to ensure that the application meets all of the
requirements of the Act and the Industrial Design Regulations. 50
An application must relate to one design applied to a single article51 or set,
or to variants.52 Where the Office of Commissioner of Patents determines
that the application relates to more than one design, the applicant must limit
the application to one design only. Any other design disclosed may be made
the subject of a separate application.53
The application must include a title identifying the finished article or set
in respect of which the registration of the design is requested.54
Each application is examined to ascertain whether the design meets
the requirements of the Act for registration. The Examiner must give consideration to the drawing in conjunction with the description of the design as
provided by the applicant.55 If a design does not meet the requirements, a
report is sent to the applicant setting out the objections and specifying a
period for reply. 56
46. Subsection 4(1) and see Industrial Design Regulations. The practice of the Industrial Design
Office concerning drawings and photographs is set out in the Industrial Design Office Practices, Canadian Intellectual Property Office (Industrial Design Office) (Ottawa: Industry
Canada, 2004) at section 6. See Re Industrial Design Application No. 1998-2348 (2001), 14
C.P.R. (4th) 63 (Patent Appeal Bd) concerning the use of break lines in drawings.
47. Subsection 4(1)(a) and see Industrial Design Office Practices, section 6.4.5, 6.4. In Re Industrial Design Application No. 1997-1768 (1999), 3 C.P.R (4th) 254 (Patent Appeal Bd.) a description defining the features of the design in the alternative was found to be unacceptable.
48. Industrial Design Office Practices, section 5.1.
49. Industrial Design Office Practices, section 5.2.
50. Industrial Design Office Practices, section 6.
51. See Industrial Design Application No. 2000-2268/95949 (2006), 56 C.P.R. (4th) 154 (Patent
Appeal Bd. and Commissioner of Patents) which found that an application for a faucet,
which included both a spout and handles, was directed to a single article of manufacture.
52. Industrial Design Regulations, Section 10 and see Industrial Design Application No. 20002268/95949 (2006), 56 C.P.R. (4th) 154 (Patent Appeal Bd. and Commissioner of Patents.
53. Industrial Design Regulations, Section 10 and see Re Industrial Design Application No. 1998
0950 (2001), 14 C.P.R. (4th) 213 (Patent Appeal Bd.).
54. Industrial Design Regulations, subsection 9(2)(b).
55. Re LTI Corp. Industrial Design Application No. 19982446, (2003), 25 C.P.R. (4th) 256 (Patent
Appeal Board and Commissioner of Patents).
56. Subsection 5.
Application
If it is decided that a design is not registrable, the applicant may appeal to

the Federal Court to review the decision.57 The proper procedure is to bring
an action in the Federal Court.58

The description must indicate whether the design relates to the appearance of
the entirety of the article or to an appearance of a portion of the article. Where
the design is limited to the appearance of a portion of the article, that portion
must be clearly identified.59 The description must make clear which of the
visual features shown in the drawings comprise the design.60
The description is important since it and the drawing or photograph of the
design determine the extent of the exclusive right to which the proprietor is
entitled. However, it is not appropriate to treat the description in the same
fashion as a patent claim.61
c) Priority Based on an Application Filed in

Another Country
A six-month grace period for an application which has been filed in specified
foreign countries is available. If the proprietor files an application for the
same design in Canada within the grace period, the Canadian application will
obtain the benefit of the foreign priority filing date.62
More specifically, an application for the registration of an industrial design
filed in Canada by any person who has, or whose predecessor in title has,
previously filed an application for the registration of the same industrial
design in a foreign country has the same force and effect as the same application would have if filed in Canada on the date on which the application for
the registration of the same industrial design was first filed in that foreign
country, if
(a) the application in Canada is filed within six months from the earliest
date on which the foreign application was filed; and
57. Section 22.

58. Gandy v. Canada (Commissioner of Patents), (1980), 47 C.P.R. (2d) 109 (F.C.T.D.), Rothbury
International Inc. v. Canada (Minister of Industry) (2004), 36 C.P.R. (4th) 203 (F.C.).
59. Industrial Design Office Practices, Sections 6.4.5.a).
60. Industrial Design Office Practices, Sections 6.4.5.b).
61. Alkot Industries Ltd. v. Consumers Distributing Co. Ltd. (1986), 11 C.P.R. (3d) 276 (F.C.T.D.).
62. Industrial Design Office Practices, Sections 3.4.13.4.4.
377
378
(b) the person requests priority in respect of the application filed in

Canada in accordance with the regulations. 63
The term foreign country means a country that by treaty, convention or law
affords a similar privilege to citizens of Canada with respect to the effective
date of an application for the registration of an industrial design, and includes
a Member of the World Trade Organization.64
For the purposes of determining whether an application was filed more
than one year after publication,65 the foreign priority date does not apply in
determining the filing date. 66
7. Registration
An exclusive right for an industrial design is acquired by registration of the
design under the Act.67 During the existence of an exclusive right, no person
shall, without the license of the proprietor of the design,
(a) make, import for the purpose of trade or business, or sell, rent, or offer
or expose for sale or rent, any article in respect of which the design is
registered and to which the design or a design not differing substantially therefrom has been applied; or
(b) do, in relation to a kit, anything specified in paragraph (a) that would
constitute an infringement if done in relation to an article assembled
from the kit.68
63. Section 29(1). Section 20 of the Industrial Design Regulations provides that a request for
priority must be made in writing and indicate the date the application for registration of the
design was first filed in or for the foreign country, the name of the country and the number
assigned by that country to the application. If, at any time before the registration of the
design for which priority is sought, an application is made for a design that is identical to or
so closely resembles the design as to be confounded with it, the Commissioner must advise
the applicant in writing and request that the applicant provide the following documents
(a) a certified copy of the foreign application on which the request is based; and
(b) a certificate from the office in which the application referred to in paragraph (a) was
filed showing the date of its filing therein.
The request for priority is suspended until the certified copy and the certificate have been
filed.
64. Section 29(2).
65. Section 6(3).
66. Section 6(4).
67. Section 9.
Marking 379
After an application has been allowed, a certificate shall be signed by the

Minister, the Commissioner of Patents, or an officer, clerk or employee of the
Commissioners office stating that the design has been registered in accordance with the Act.69
In the absence of proof to the contrary, the certificate is sufficient evidence
of the design, the originality of the design, the name of the proprietor, the
person named as proprietor being proprietor, the commencement and term
of registration, and compliance with the Act.70
A certificate appearing to be issued under section 7 of the Act is admissible
in evidence in all courts without proof of the signature or official character of
the person appearing to have signed it.71
8. Marking
While the Act previously required that articles be marked with an indication
that they were protected by an industrial design registration,72 it no longer
contains such a requirement. However, it is prudent that articles be marked
with the capital letter D in a circle and the name, or the usual abbreviation
of the name of the proprietor of the design.
The Act provides that in any proceedings brought for infringement of a
design, a court must not award a remedy, other than an injunction, if the
defendant establishes that, at the time of the act that is the subject of the proceedings, the defendant was not aware, and had no reasonable grounds to suspect, that the design was registered.73 This defense is not available if the plaintiff
establishes that the capital letter D in a circle and the name, or the usual
abbreviation of the name of the proprietor of the design were marked on
(a) all, or substantially all, of the articles to which the registration pertains
and that were distributed in Canada by or with the consent of the proprietor before the act complained of; or
(b) the labels or packaging associated with those articles. 74
69.
70.
71.
72.
Subsection 7(1).
Subsection 7(3).
Subsection 7(4).
Industrial Design Act R.S.C. 1985, c.I-8 and see subsection 29.1(2) for the relevant transitional rule for applications filled before June 9, 1993 and see L.M. Lipski Ltd. v. Dorel Industries Inc. et al. [1988] 3 F.C. 594 (F.C.T.D.) concerning the effect of non-compliance.
73. Section 17 (1).
74. Section 17 (3).
380 Chapter 33 Industrial Designs
9. Term
Subject to payment of prescribed fees, the duration of the right granted is ten
years beginning on the date of registration of the design.75 In order to maintain the exclusive right the proprietor must pay to the Commissioner of
Patents an additional fee before the fifth anniversary of the registration. The
proprietor has a grace period of six months from the expiry of the fifth anniversary of the registration to maintain the registration for which a further fee
must be paid. If the design is not renewed within five years and six months,
the term expires at the end of that time.76
10. Assignment and License

The Act provides that every design, whether registered or unregistered, is
assignable in law, either as to the whole interest or any undivided part, by an
instrument in writing, which shall be recorded in the office of the
Commissioner of Patents on payment of the prescribed fees.77 If the proprietor assigns its rights prior to filing an application, the assignee is entitled to
apply to register the design.78 After an assignment is made, the name of proprietor at the time the article, labels, or packaging were marked should be
shown for the purposes of subsection 17(2) of the Act.79
Subsection 13(2) relates to the right to use a design. It provides that every
proprietor of a design may grant and convey an exclusive right to make, use,
and vend and to grant to others the right to make, use, and vend the design,
within and throughout Canada or any part thereof, for the unexpired term of
its duration or any part thereof. 80 Such a grant and conveyance shall be called
a license and must be recorded in the same manner as an assignment.81 The
use of the word exclusive refers to the rights available to the proprietor
under the Act, not the nature of the license. Both exclusive licenses and nonexclusive licenses may be granted.
75.
76.
77.
78.
Section 10.
Section 10(3) of the Act and Industrial Design Regulations, section 18.
Subsection 13(1).
Subsection 13(1) and see Milliken & Company et al. v. Interface Flooring Systems (Canada)
Inc (1994), 55 C.P.R. (3d) 30 (F.C.T.D.).
Infringement
11. Expungement and Alteration

Section 22 of the Act provides that the Federal Court may, on the information
of the Attorney General or at the suit of any person aggrieved by any omission without sufficient cause to make any entry in the Register of Industrial
Designs, or by any entry made without sufficient cause in the Register, make
such order for making, expunging or varying any entry in the Register as
the Court thinks fit, or the Court may refuse the application. The Federal
Court has exclusive jurisdiction to hear and determine proceedings under the
section.82
Section 22 is concerned with an omission without sufficient cause to make
an entry in the Register or by any entry made without sufficient cause in the
Register. In either case, the Federal Court may make such order with respect
to the costs of the proceedings as it thinks fit and decide any question that may
be necessary or expedient to decide for the rectification of the Register.83
The term person aggrieved has been given a wide interpretation.84
A person is aggrieved if, as one of the public, an impugned design registration prevents them from using it.85
12. Infringement
Section 9 of the Act provides that an exclusive right for an industrial design
may be acquired by registration of the design under the Act. A registration is
required and there is no protection for activities which occur before
registration.86 The exclusive right is limited to Canada and infringing activities must occur within Canada to be actionable.
Subsection 11(1) of the Act87 provides that during the existence of an exclusive right, no person shall, without the license of the proprietor of the design,
(a) make, import for the purpose of trade or business, or sell, rent, or offer
or expose for sale or rent, any article in respect of which the design is
82. Subsection. 22(4); Epstein v. O-Pee-Chee Co. Ltd. [1927] Ex. C.R. 156, [1927] 3 D.L.R. 160.
83. Subsection 22(2) and (3).
84. DeKuyper v. Van Dulken (1894), 24 S.C.R. 114; In Re Vulcan Trade Mark (1915), 51 S.C.R.
411, 24 D.L.R. 621.
85. Epstein v. O-Pee-Chee Co. Ltd., [1927] Ex. C.R. 156, [1927] 3 D.L.R. 160.
86. Ulextra Inc. v. Pronto Luce Inc. 2004 FC 590 (F.C.).
87. Section 11 was brought into force January 1, 1994 and is significantly different from the section that preceded it.
381
382
registered and to which the design or a design not differing substantially therefrom has been applied; or
(b) do, in relation to a kit, anything specified in paragraph (a) that would
constitute an infringement if done in relation to an article assembled
from the kit.
As previously set out, designs are registered in association with specifically
identified articles. Infringement will occur when the design or a design not
differing substantially therefrom has been applied to the article for which the
design was registered.
For the purposes of subsection 11(1), in considering whether differences
are substantial, the extent to which the registered design differs from any
previously published design may be taken into account.88
In order to determine whether infringement has occurred, the following
matters must be considered:
(a) were the activities of the defendant without the license of the proprietor of the design;
(b) did the defendant engage in one of the activities prescribed in section 11;
(c) was the allegedly infringing article an article in respect of which the
design has been registered; and
(d) was the design or a design not differing substantially from the design
applied to the allegedly infringing article.
b) License
Since subsection 11(1) expressly refers to the absence of license of the proprietor of the exclusive right, the absence of license is an essential element of the
cause of action for infringement. In order to succeed, a plaintiff must show
that the defendants actions were done without its license. Conversely, from
the defendants point of view license is a defense.
c) The Activities
The activities described in subsection 11(1)(a) consist of:
(a) making;
(b) importing for the purposes of trade or business; 89

89. See Hansen International Inc. v. Whirley Industries Inc. (2002), 22 C.P.R. (4th) 57 (F.C.T.D.).
Infringement
(c) selling or renting; or

(d) offering or exposing for sale or rent
any article in respect of which the design is registered and to which the design
or a design not differing substantially therefrom has been applied.
Section 11 has not been widely considered by the courts in Canada but the
section is similar to section 7 of the United Kingdom Registered Designs Act,
194990 which has been considered by the courts of that country.
The activities must also take place during the term of the exclusive right in
order to be actionable.91

In order to show that infringement has occurred, the plaintiff must show that
the defendant has engaged in at least one of the activities described in the section in relation to an article in respect of which the plaintiffs design has been
registered.
e) Whether a Design Not Diering Substantially from the

Design Has Been Applied
If the design itself has been applied to an article in respect of which the plaintiffs design has been registered, the application of the section is clear.
Frequently, there will be differences which must be considered to ascertain
whether the designs differ substantially.
Since a design refers to features . . . . that, in a finished article, appeal to
and are judged solely by the eye, infringement must be determined on an
ocular basis. The emphasis is on the visual image conveyed by the article.92
The appearance of the allegedly infringing article must be compared to the
appearance of the registered design. Reference must be made to the drawings
or photographs of the design and the description of it. It is appropriate to
view articles which embody the registered design although care must be taken
to avoid giving consideration to features not disclosed in the design.93
The Act provides that in considering whether differences are substantial,
the extent to which the registered design differs from any previously published design may be taken into account.
90.
91.
92.
93.
12, 13 & 14 Geo. 6, c. 88.

Section 10.
Interlego AG v Tyco Industries Inc. [1988] 3 W.L.R. 678 (P.C.).
Benchairs Limited v. Chair Centre Limited [1974] R.P.C. 429 (U.K.C.A.).
383
384
A design which has substantial originality may be entitled to a broader scope

of protection than a design which is close to designs which had been published
before it. If only small differences separate the registered design from the
designs which precede it, then equally small differences between the impugned
article and the registered design should be sufficient to avoid infringement.
Expert evidence is admissible to point out similarities and dissimilarities,
what is common to the trade, and what has been disclosed in previously published designs.
Where a registration relates to the features of shape and configuration of a
product, the exclusive right is accordingly for the product as a whole and
infringement must rest upon imitation of the shape or configuration as a
whole not just a part of the design.94 Where the design is limited to the shape
or configuration of the article, the plaintiff must show similarity approaching
identity.95
13. Actions for Infringement96

a) Jurisdiction
An action for infringement of a registered design may be brought in any court
of competent jurisdiction by the proprietor of the design or by an exclusive
licensee of any right in the design, subject to any agreement between the proprietor and the licensee.97 The proprietor of the design must be a party to
such an action.98
The Federal Court has concurrent jurisdiction to hear and determine any
action for the infringement of an exclusive right; and any question relating to
the proprietorship of a design or any right in a design.99
The Act provides that no remedy may be awarded for an act of infringement
committed more than three years before the commencement of the action for
infringement.100
94. Benchairs Limited v. Chair Centre Limited [1974] R.P.C. 429 (U.K.C.A.); UPL Group Ltd. v.
DUX Engineers Ltd. [1989] 3 N.Z.L.R. 135 (N.Z.C.A.).
95. Sommer Allibert (UK) Limited v. Flair Plastics Limited [1987] R.P.C. 599 (U.K.C.A.).
96. See Chapters 15 and 30.
99. Section 15.2 and see Chapter 30, part 11(c) concerning Declaratory Relief.
100. Section 18.
Remedies
14. Remedies
In any proceedings for infringement, the court may make such orders as the
circumstances require, including orders for relief by way of injunction and
the recovery of damages or profits, for punitive damages, and for the disposal
of any infringing article or kit.101
a) Injunction102
i) Interlocutory Injunction
An interlocutory injunction may be granted to restrain infringement until
trial.103
A plaintiff will be required, before such an interlocutory injunction is
granted, to provide to the court an undertaking to compensate the defendant
for any damages the defendant may suffer as the result of the grant of the injunction if, at trial, the plaintiff is unsuccessful.104 On the dissolution of an interlocutory injunction, the defendant is entitled to an enquiry as to the damages
sustained by reason of the injunction.105 If the validity of an industrial design
registration is attacked, this may lead to significant financial exposure.106
ii) Permanent Injunction107
Infringement may be restrained by the grant of an injunction at trial.
b) Damages or Prots
The assessment of damages or an accounting of profits is controlled by the
usual considerations applying in the case of trademark infringement or passing off. 108
101. Section 15.1.

103. Slim Line Design Ltd. v. Pacific Northwest Manufacturing Inc. (1999), 86 C.P.R. (3d) 498
(B.C.S.C.).
104. Rules of Civil Procedure, R.R.O 1990, Regulation 194 as amended Rule 40.03; Federal Court
Act, R.S.C. 1985, c. F-7 as amended, section 44.
105. Mattel Canada Inc v GTS Acquisitions Ltd. (1998), 82 C.P.R. (3d) 57 (F.C.T.D.); Algonquin
Mercantile Corporation v. Dart Industries Canada Ltd. (1983), 71 C.P.R. (2d) 11 (F.C.T.D.).
106. Algonquin Mercantile Corporation v. Dart Industries Canada Ltd. (1983), 71 C.P.R. (2d) 11
(F.C.T.D.), (1984) 1 C.P.R. (3d) 75 (F.C.A.).
108. See Chapter 15.
385
386
Punitive damages may be awarded.109
c) Delivery Up
Section 15.1 provides that the court may make such orders as the circumstances
require, including orders for the disposal of any infringing article or kit.
d) Defenses
In addition to the usual defenses to an action for infringement, the invalidity
of the registration of the design may be asserted without bring proceedings
for expungement.110 A claim of invalidity may be asserted on the basis that:
(a) the design is not the proper subject-matter for registration;111
(b) the design was published in Canada or elsewhere more than one year
prior to the application for registration;112
(c) the design is not original; 113 or
(d) the registered proprietor was not the author of the design.114
In addition, it may be alleged that the plaintiff is not entitled to any remedy,
other than an injunction, since the defendant was not aware, and had no reasonable grounds to suspect, that the design was registered.115 However, this
defense is not available if the plaintiff has marked the articles to which the
registration relates as required by the Act.116
109.
110.
111.
112.
113.
114.
115.
116.
See Chapter 30.

Clatworthy & Son Ltd. v. Dale Display Fixtures, Ltd. [1929] S.C.R. 429 (S.C.C.).
Canadian Wm. A. Rogers Ltd. v. International Silver Co. of Canada Ltd., [1932] Ex. C.R. 63.
Epstein v. O-Pee-Chee Co. Ltd., [1927] Ex. C.R. 156, [1927] 3 D.L.R. 160.
Clatworthy & Son Ltd. v. Dale Display Fixtures Ltd.. [1929] S.C.R. 429 (S.C.C.).
Angelstone Ltd. v. Artistic Stone Ltd., [1960] Ex. C.R. 286, 33 C.P.R. 155.
Section 17(1).
See part 8 of this chapter.
Table of Cases
88766 Canada Inc. v. Monte Carlo Restaurant Limited, 2007

FC 1174, 63 C.P.R. (4th) 391 (F.C.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 82n24
671122 Ontario Ltd. v. Sagaz Industries Canada Inc. [2001]
2 S.C.R. 983 (S.C.C.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 234n43
911979 Alberta Inc. v. Morin (2006), 51 C.P.R.
(4th) 128 (C.I.R.A.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 174n57
1013579 Ontario Inc. v. Bedessee Imports Ltd. (1997),
77 C.P.R. (3d) 163 (F.C.A.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 153n68
3925928 Manitoba Ltd. v. 101029530 Saskatchewan Ltd.
(2005), 44 C.P.R. (4th) 161 (F.C.) . . . . . . . . . . . . . . . . . . . . 157n90, 157n91, 158n101
A & W Food Services of Canada Inc. v. McDonalds Restaurants
of Canada Limited (2005), 40 C.P.R. (4th) 126 (F.C.). . . . . . . . . . . . . . . 118n1, 119n6
Abbot Laboratories Ltd. v. Apotex (1998), 81 C.P.R. (3d)
85 (Ont. Ct. Gen. Div.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 133n33
Abelsoft Corp. v. Fish (2008), 65 C.P.R. (4th) 174 (C.I.R.A.) . . . . . . . . . . . . . . . 177n71
Adacel Technologies Ltd. v. Nav Canada, 2006
FCA 227 (F.C.A.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 325n58
Adidas (Can.) Ltd. v. Colins Inc. (1978), 38 C.P.R.
(2d) 145 (F.C.T.D.). . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 89n80
Adidas Sportschuhfabriken Adi Dassler KG. v. Kinney Shoes of
Can. Ltd. (1971), 2 C.P.R. (2d) 227 (Ex. Ct.) . . . . . . . . . . . . . . . . . . . . . . . . . . . 140n12
Advance Magazine Publishers Inc. v. Marcellod Dusso,
WIPO case no. D2001-1049 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 171n40
Adventure Film Productions Ltd v. Tulley
(October 14, 1982) The Times, . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 189n18
Air Products Canada Ltd. v. Index Quebec Inc. (2003),
30 C.P.R. (4th) 212 (C.I.R.A.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 175n65
Aladdin Industries Inc. v. Canadian Thermos
Products Ltd., (1969) Ex. C.R. 80, (Ex.Ct.)
affirmed [1974] S.C.R. 845 (S.C.C.) . . . . . . . . . . . . . . . . . . . . . . . 36n70, 52n29, 85n44,
85n45, 87n62
A. Lassonde Inc. v. Registrar of T.M. (2003),
27 C.P.R. (4th) 316 (F.C.T.D.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 68n8
Algonquin Mercantile Corporation v. Dart Industries
Canada (1984), 1 C.P.R. (3d) 75 (F.C.A.) . . . . . . . . . . . . . . 374n36, 374n38, 385n106
387
388
Table of Cases
Algonquin Mercantile Corporation v. Dart Industries
Canada Ltd. (1983), 71 C.P.R. (2d) 11 (F.C.T.D.) . . . . . . . . . . . . . . 385n105, 385n106
Alkot Industries Ltd. v. Consumers Distributing Co. Ltd. (1986),
11 C.P.R. (3d) 276 (F.C.T.D.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 377n61
Allen v. Toronto Star Newspapers Ltd (1995), 63 C.P.R. (3d) 517
(Ont. Ct. (Gen. Div.)) reversed on appeal on other grounds
(1997), 36 O.R. (3d) 201 (Div. Ct.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 231n29
Allergan Inc. v. Lancme Parfums and Beaut & Cie (2007),
64 C.P.R. (4th) 147 (T.M.O.B.). . . . . . . . . . . . . . . . . . . . . . . . . . .42n24, 56n10, 107n16
Allied Signal Inc. v. Dupont Canada (1998),
78 C.P.R. (3d) 129 (F.C.T.D.) . . . . . . . . . . . . . . . . . . 158n93, 158n95, 158n97, 158n98
Alltemp Products Co. v. Bit Holder Inc. (2007),
63 C.P.R. (4th) 112 (T.M.O.B.). . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 108n20
Alta.Govt. Tel. v. C.R.T.C. [1989] 2 S.C.R. 225 . . . . . . . . . . . . . . . . . . . . . . . . . . . 247n18
Alticor Inc. v. Nutravite Pharmaceuticals Inc. (2004),
31 C.P.R. (4th) 12 (F.C.), 42 C.P.R. (4th) 107 (F.C.A.) . . . . . . . . . . . . . . . . . . . 153n67
Alticor Inc. v. Nutravite Pharmaceuticals Inc. (2005),
42 C.P.R. (4th) 107 (F.C.A.) . . . . . . . . . . . . . . . . . . . . . 95n13, 101n68, 103n84, 119n5
Aluminum Company of Canada v. Tisco Home Building
Products (1977), 33 C.P.R. (2d) 145 (F. C.T.D.) . . . . . . . . . . . . . . . . . . . . . . . . 133n30
American Cyanamid v. Ethicon [1975]
1 All E.R. 504 (H.L.) . . . . . . . . . . . . . . . . . . . . . . . . . . 145n33, 146n40, 146n44, 148n51
Amp Incorporated v. Utilux Proprietary Limited
[1970] R.P.C. 397 (U.K.C.A.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 370n8
Amp Incorporated v. Utilux Proprietary Limited
[1972] R.P.C. 103 (U.K.H.L.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 369n3, 370n8
Amusements Wiltron Inc. v. Mainville (1991),
40 C.P.R. (3d) 521 (Quebec Sup. Ct.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 233n36
Andres Wines Ltd. & E. & J. Gallo Winery (1975),
[1976] 2 F.C. 3, 25 C.P.R. (2d) 126 (F.C.A.) . . . . . . . . . . . . . . 42n16, 109n28, 116n91
Angelstone Ltd. v. Artistic
Stone Ltd., [1960] Ex. C.R. 286,
33 C.P.R. 155 (Ex. Ct.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 372n22, 373n24, 375n43,
375n44, 386n114
Anheuser-Busch Inc. v. Carling OKeefe Breweries
of Can. Ltd. (1982), 45 N.R. 126 (F.C.A.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 114n77
Anheuser-Busch Inc. v. Carling OKeefe Breweries
of Canada Ltd. (1986), 10 C.P.R. (3rd) 433 (F.C.A.) . . . . . . . . . . . . . . . . . . . . . 153n67
AnheuserBusch Inc. v. Carling O Keefe Breweries
of Can. Ltd. [1983] 2 F.C. 71 (F.C.A.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 80n1
Ann of Green Gables Licensing Authority Inc. v.
Avonlea Traditions Inc. (2000), 4 C.P.R. (4th) 289 (Ont. S. C. J.) . . . . . . . . . 189n14
Antocks Lairn Limited v. I. Bloohn Limited,
[1972] R.P.C. 219 (Ch. D.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 235n46
Anton Piller KG v. Manufacturing Processes Ltd,
[1976], 1 Ch.55 (Ch. Div.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 14850
Apotex Fermentation Inc. v. Novopharm Ltd [1998]
2 W.W.R. 725 (Man Q.B.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 157n87
Table of Cases 389

Apotex Inc. v. Glaxo Canada Inc. (1994),
58 C.P.R. (3d) 1 (F.C.T.D.) reversed on appeal
(1995) 64 C.P.R. (3d) 191 (F.C.A.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 269n22, 270n25
Apple Computer Inc. et al. v. Mackintosh Computer
Ltd. et al (1986), 10 C.P.R. (3d) 1 [1987]
F.C 173 (F.C.T.D.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 323n44, 323n45, 337n118
Apple Computer Inc v. Mackintosh Computers Ltd.,
[1988] 1 F. C. 673 (F.C.A.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 186n3
Arcon Canada Inc. v. Arcobec Aluminium Inc. (1984),
7 C.P.R. (3d) 382 (Que.S.C.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 232n34
Asbjorn Horgard A/S v. Gibbs/Nortac Industries Ltd.
(1987), 14 C.P.R. (3d) 314 (F.C.A.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . 132n26, 133n30
AstraZeneca AB v. Novopharm Ltd. (2003), 24 C.P.R.
(4th) 326 (F.C.A.), leave to appeal to the S.C.C.
refused 26 C.P.R. (4th) vi . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 14n23, 14n28
Astro Dairy Products Ltd. v. Compagnie Gervais Danone,
(1999), 87 C.P.R. (3d) 262 (F.C.T.D.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 98n37
AT&T Corp. v. Amjad Kausar, WIPO case no. D2003-327 . . . . . . . . . . . . . . . . 169n33
Ateliers Tango Argentin Inc. et al v. Festival dEspagne
et dAmerique Latine Inc. (1997), 84 C.P.R. (3d)
56 (Quebec Sup. Ct.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 321n31
Atlantic Promotions Inc. v. Registrar of Trade-marks
(1984), 2 C.P.R. (3d) 183 (F.C.T.D.) . . . . . . . . . . . . . . . . . . . . . . .30n31, 32n43, 28n20
Attorney General (Quebec) v. St.-Germain Transport (1994)
Inc., [2006] J.Q. No. 8429 (C. Q. (Crim. & Pen. Div.)) . . . . . . . . . . . . . . . . . . . . . 11n5
Attorney-General for New South Wales v. Butterworth & Co.
(Australia) Ltd. (1938) S.R.N.S.W. 195 . . . . . . . . . . . . . . . . . . . . . . . . . 247n13, 247n14
Attorney-General of Canada v. Effigi Inc. (2005),
41 C.P.R. (4th) 1 (F.C.A.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 63n23
Attorney-General v. De Keysers Royal Hotel Ltd.
[1920] A.C. 508 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 247n16
Auld Philips Ltd. v. Suzannes Inc (2005), 39 C.P.R.
(4th) 45 (F.C.), affirmed (2005), 46 C.P.R. (4th) 81 (F.C.A.) . . . . . . . . . . . . . . . 89n85
Austin Nichols & Co. v. Cinnabon Inc. (1997),
76 C.P.R. (3d) 45 (F.C.T.D.), 82 C.P.R. (3d) 513 (F.C.A.) . . . . . . . . . . . . . . . . 115n84
Austin Nichols & Co. v. Cinnabon Inc. (1998),
82 C.P.R. (3d) 513 (F.C.A.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 84n37
Bacardi & Co. v. Havana Club Holdings S.A., 2004 F.C.A. 220 (F.C.A.) . . . . . . 114n75
Bally Midway MFG Co. v. Coinex Video Games Inc. (1983),
72 C.P.R. (2d) 22 (F.C.T.D.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 324n52
Baroness Spencer-Churchill v. Cohen (1968),
55 C.P.R. 276 (T.M.O.B.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 27n10
Bata Industries Ltd. v. Warrington Inc (1985),
5 C.P.R. (3d) 339 (F.C.T.D.) . . . . . . . . . . . . . . . . . . . . . . . . . . 373n25, 373n29, 374n34
Baxter International Inc. v. P.T. Kalbe Frama TBK,
2007 FC 439 (F.C.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 84n37
390 Table of Cases

Beamscope Canada Inc. v. 2439-0692 Quebec Inc, (1991),
36 C.P.R. (3d) 1 (F.C.T.D.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 148n52
Beaver Knitwear Ltd. v. Registrar of Trade-marks (1986),
11 C.P.R. (3d) 257 (F.C.T.D.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 65n38
Beloff v. Pressdram Ltd. [1973]
1 All E.R. 241 (Ch.D.) . . . . . . . . . . . . . . . . . . . . . . . 291n13, 291n14, 292n 20, 234n40
Beloit Canada Lt6e v. Valmet Oy (1987),
16 C.P.R. (3d) 92 (F. C.A.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 157n91
Beloit Canada Lte/Ltd. et al. v. Valmet-Dominion Inc.
(now Valmet Montreal Inc.) (1997), 73 C.P.R. (3d) 321. (F.C.A.) . . . . . . . . . . 139n3
Benchairs Limited v. Chair Centre Limited [1974]
R.P.C. 429 (U.K.C.A.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 383n93, 384n94
Benson & Hedges (Canada) Ltd. v. Empresa Cubana
Del Tobacco (1975), 23 C.P.R. (2d) 274 (T.M.O.B.) . . . . . . . . . . . . . . . . . . . . . . 20n58
Benson & Hedges v. St. Regis (1968),
57 C.P.R. 1 (S.C.C.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 96n26
Bereskin & Parr v. Bartlett (2008), 70 C.P.R.
(4th) 469 (T.M.O.B.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 83n29
Best Canadian Motor Inns Ltd. v. Best Western International,
Inc., (2004), 30 C.P.R. (4th) 481 (F.C.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 29n24
Beverley Bedding & Upholstery Co. v. Regal Bedding &
Upholstering Ltd. (1982), 133 D.L.R. (3d) 255 (F.C.A.);
affirming, 110 D.L.R. (3d) 189 (F.C.T.D.). . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 115n85
Beverly Bedding & Upholstery Co. v. Regal Bedding &
Upholstering Ltd. (1980), 110 D.L.R. (3d) 189 47 C.P.R.
(2d) 145 (F.C.T.D.); (1982) 133 D.L.R. (3d) 255, 60 C.P.R. (2d) 70 (F.C.A.) . . . 96n22
Big Sisters Assn. v. Big Brothers of Canada (1996), 75 C.P.R.
(3rd) 177 (F.C.T.D.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 24n86, 174n64
Bishop v. Stevens (1984), 4 C.P.R. (3d) 349 (F.C.T.D.),
(1987), 18 C.P.R. (3d) 257 (Fed. C.A.), affirmed [1990]
2 S.C.R 647, 31 C.P.R. (3d) 394 (S.C.C.) . . . . . . . . . . . . . . . . . . . . . . . . 274n15, 274n16
Bishop v. Stevens, [1990] 2 S.C.R 647, 31 C.P.R.
(3d) 394 (S.C.C.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 272n7, 289n1, 304n55, 320n27
Bishop v. Stevens (1985), 4 C.P.R. (3d) 349 (F.C.T.D.);
aff d in part on other grounds (1987), 18 C.P.R. (3d) 257
(F.C.A.); affirmed [1990] 2 S.C.R. 467, 31 C.P.R. (3d) 394 (S.C.C.) . . . . . . . . 269n19
Black v. Molson Canada (2002), 21 C.P.R. (4th) 52 (Ont. S.C.J.) . . . . . 165n10, 173n52
Blue Crest Music Inc. v. Canusa Records Inc. (1974),
17 C.P.R. (2d) 149 (F.C.T.D.); revd on other grounds (1976),
30 C.P.R. (2d) 14 (F.C.A.); aff d, [1980] 1 S.C.R. 357 (S.C.C.) . . . . . 268n15, 269n20
Blue Crest Music Inc. v. Compo Co. Ltd. (1976), 30 C.P.R. (2d)
14 (F.C.A.); aff d, [1980] 1 S.C.R. 357 (S.C.C.) . . . . . . . . . . . . . . . . . . . . . . . . . 274n18
Bluefoot Ventures Inc. v. Ticketmaster (2007),
CanLII 55363 (On S.C.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 78n31
B. Manischewitz Co. of Can. v. Hartstone, [1953]
Ex. C.R. 1 (Ex. Ct.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 31n34
BMG Canada Inc. v. John Doe (2005), 39 C.P.R.
(4th) 97 (F.C.A.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 326n65, 327n66
Table of Cases 391

BMW Canada Inc. v. Nissan Canada Inc, (2007),
57 C.P.R. (4th) 81 (F.C.), 60 C.P.R. (4th)
181, 2007 FCA 255 (F.C.A.) . . . . . . . . . . . . . . . . . . . . . . . . . . 101n64, 131n24, 133n30
Board v. Board, [1919] A.C. 956 (J.C.P.C.). . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 315n3
Bojangles International, LLC v. Bojangles Cafe Ltd., (2006),
48 C.P.R. (4th) 427 (F.C.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 108n25
Bombardier Ltd. v. British Petroleum Co. Ltd., (1973),
10 C.P.R. (2d) 21 (F.C.A.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 48n5
Bonus Foods Ltd. v. Essex Packers Ltd. (1964),
43 C.P.R. 165 (Ex. Ct.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 119n9
Boston Pizza International Inc. v. Boston
Chicken Inc. (2003), 24 C.P.R. (4th) 150 (F.C.A.) . . . . . . . . . . . 14n23, 44n35, 45n37,
88n72, 89n83
Bourganis v. Glarentzos (1978), 19 O.R. (2d)
328 (H.C.J.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 145n36
Bousquet v. Barmish, (1991), 37 C.P.R. (3d) 516 (F.C. T. D.)
46 C.P.R. (3d) 510 (F.C.A.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 108n25
Bowden Wire Ltd. v. Bowden Brake Co. Ltd. (1913),
30 R.P.C. 580; 31 R.P.C. 385 (H.L.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 77n23, 78n28
Braintech Inc. v. Kostich (1999), 171 D.L.R. (4th)
46 (B.C.C.A.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 167n19
Re Breakthrough Films and Television (2006),
53 C.P.R. (4th) 240 (Copyright Bd.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 366n111
Brecks Sporting Goods Co. v. Magder, [1976] 1 S.C.R. 527 . . . . . . . . . . . . . . . . . 89n84
Breen v. Hancock House Publishers Ltd. (1985),
6 C.P.R. (3d) 433 (F.C.T.D.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 291n13
British Broadcasting Corporation v. Satellite Broadcasting Ltd.
[1992] Ch. 141 (Ch. D.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 293n26
British Drug Houses, Ltd. v. Battle Pharmaceuticals, [1944]
Ex. C.R. 239 (Ex. Ct.); affirmed [1946]
S.C.R. 50 (S.C.C.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .85n44, 85n45, 96n24, 101n66,
102n71, 103n77
British Leyland Motor Corporation v. Armstrong
Patents Co. [1982] F.S.R. 481 (Ch.D.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 223n14
British Sky Broadcasting Group Plc v. Sky Home Services Limited,
[2006] EWHC 3165 (U.K.Ch) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 131n19
British Telecom plc v. One In A Million [1998] 4 All E.R.
476 (U.K.C.A.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 131n20, 178n73
Broderick& Bascom Rope v. Reg. T.M. (1970),
62 C.P.R. 268 (Ex. Ct.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 84n33
Brouillette Kosie Prince v. Orange Cove-Sanger Citrus
Association, 2007 FC 1229 (F.C.). . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 84n38
Budget Rent-a-Car Corp. v. John Zuccarini
WIPO case No. D2000-1020. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 170n36
Building Products Ltd. v. BP Canada Ltd.
(1961), 36 C.P.R. 121 (Ex. Ct.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 132n29
Bulman Group Ltd. v. One WriteAccounting Systems Ltd.
(1982), 62 C.P.R. (2d) (F. C. T.D.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 325n55
392
Table of Cases
Burberrys v. J.C. Cording & Co. (1909),
26 R.P.C. 693 (Ch. D.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 134n38
Burrough Wellcome Inc. v. Novopharm Ltd. (1994),
58 C.P.R. (3d) 511 (F.C.T.D.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 107n14
Byrne v. Statist Co. [1914] 1 K.B. 622 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 235n45
Caala Homes South v. Alfred McAlpine Homes East Ltd.
[1995] F.S.R. 818 (Ch. D) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 239n62
Cadbury Schweppes Inc. v. FBI Foods Ltd. [1999]
1 S.C.R. 142, 83 C.P.R. (3d) 289 (S.C.C.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 158n104
Cadbury-Schweppes Pty. Ltd. v. Pub Squash
Co. Pty. Ltd., [1981] 1 All E.R. 213 (P.C.) . . . . . . . . . . . . . . . . . . . . . . . 131n21, 132n25
Cafe de Brasil, S.p.A. v. Walong Marketing Inc.,
(2006) FC 1063, 53 C.P.R. (4th) 322 (F.C.). . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 88n73
Cafe Supreme F. & P. Ltee. v. Sons P.G. Can. (1984),
3 C.I.P.R. 201 (F.C.T.D.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 31n38
Calumet Mfg Ltd. v. Mennen Canada Inc.; Gillette Canada
Inc. v. Mennen Canada Inc. (1992), 40 C.P.R. (3d) 76 (F.C.T.D.) . . . . . . . . . . 16n42
Can. Safeway Ltd. v. Man. Food & Commercial Workers,
Loc. 832, (1983), 73 C.P.R. (2d) 234 (Man. C.A.) . . . . . . . . . . . . . . . . . . . . . . . 142n19
Can. Shredded Wheat Co. v. Kellogg Co. of Can. Ltd., [1936]
O.R. 613 (Ont. C.A.); affirmed [1938]
1 All E.R. 618 (P.C.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 134n36
Can. Tampax Corp. v. Reg. T.M. (1975),
24 C.P.R. (2d) 187 (F.C.T.D.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 110n34
Canadian Tire Corporation, Limited v. Mike Rollo WIPO
case no. D2002-1069 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 171n41
Canada Post Corp. v. United States Postal Service
(2005), 47 C.P.R. (4th) 177 (F.C.) appeal dismissed
2007 FCA 10 (F.C.A.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 20n56, 22n65
Canada Post Corp. v. United States Postal Service (2005),
47 C.P.R. (4th) 177 (F.C.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 22n71
Canadian Admiral Corporation Ltd. v. Rediffusion Inc. et al.
[1954] Ex. C.R. 382, 20 C.P.R. 75 (Ex. Ct.) . . . . . . 182n15, 182n18, 192n32, 193n36,
272n2, 272n4, 360n79
Canadian Association of Broadcasters v. SOCAN (1994),
58 C.P.R. (3d) 190 (F.C.A.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 353n37
Canadian Broadcasting Corp. v. Quon (2003),
25 C.P.R. (4th) 519 (C.I.R.A.) . . . . . . . . . . . . . . . . . . 176n68, 176n69, 174n61, 177n71
Canadian Broadcasting Corporation v. Copyright
Appeal Board (1990), 30 C.P.R. (3d) 270 (F.C.A.) . . . . . . . . . . . . . . . . . . . . . . 353n39
Canadian Cable Television Assn. v. Canada
(Copyright Board) (1991), 34 C.P.R. (3d) 521 (F.C.A.) . . . . . . . . . . . . . . . . . . 348n14
Canadian Cable Television Assoc. v. Copyright Board (1993),
46 C.P.R. (3d) 359 (F.C.A.), leave to appeal to the
Supreme Court of Canada refused (1993), 51 C.P.R. (3d) v. . . . . . . . . . . . . . . 192n29
Canadian Council of Professional Engineers v. John
Brooks Co., 2004 FC 586, 35 C.P.R. (4th) 507 (F.C.) . . . . . . . . .32n42, 34n55, 34n56
Table of Cases 393

Canadian Council of Professional Engineers v.
Lubrication Engineers, Inc. (1992),
41 C.P.R. (3d) 243 (F.C.A.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 44n35, 109n26
Canadian Council of Professional Engineers v. Tekla Oyj,
(2008), 68 C.P.R. (4th) 228 (T.M.O.B.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 110n39
Canadian Generic Pharmaceutical Association v.
Sanofi-Synthelabo Inc. (2006),
60 C.P.R. (4th) 74 (T.M.O.B.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 16n43, 113n66
Canadian Jewish Congress v. Chosen People Ministries Inc
(2002), 19 C.P.R. (4th) 186 (F.C.T.D.) affirmed (2003),
27 C.P.R. (4th) 193 (F.C.A.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 22n67, 23n79
Canadian Olympic Association v. Allied Corp. (1990),
28 C.P.R. (3d) 161 (F.C.A.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .23n81, 24n83, 24n85
Canadian Olympic Association v. Konica Canada Inc.
(1991), 39 C.P.R. (3d) 400 (F.C.A.) . . . . . . . . . . . . . . . . . . . . . . . . .24n82, 48n5, 50n15
Canadian Olympic Association v. National Gym Clothing
(1985), 2 C.P.R. (3d) 145 (F.C.T.D.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 325n58
Canadian Olympic Association v. Technique Ltd. (1999),
3 C.P.R. (4th) 298 (F.C.A.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 24n86, 174n64
Canadian Performing Right Society Ltd. v.
Canadian National Exhibition Association [1934]
O.R. 610, [1934] 4 D.L.R. 154 (Ont. H.C.) . . . . . . . . . . . . . . . . . . . . . 275n26, 283n23,
283n24
Canadian Performing Right Society Ltd. v. Ming Yee (1943),
3 C.P.R. 64 (Alberta Dist. Ct.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 275n25
Canadian Private Copying Collective v. Amico Imaging Services
Inc. 2004 F.C. 469 affirmed 2004 FCA 412 (F.C.A.) . . . . . . . . . . . . . . . . . . . . 365n104
Canadian Private Copying Collective v. Canadian Storage
Media Alliance, 2004 FCA 424, 36 C.P.R. (4th) 289 (F.C.A.) . . . . . . . . . . . . . 363n98
Canadian Rehabilitation Foundation for the
Disabled v. Rehabilitation Foundation for the
Disabled, 2004 FC 1357, 35 C.P.R. (4th) 270 (F.C.) . . . . . . . . . . . . . . . . 22n71, 22n72
Canadian Schenley Distilleries Ltd. v. Canadas Man.
Distillery Ltd. (1975), 25 C.P.R. (2d) 1 (F.C.T.D.) . . . . . . . . . . . . . . . . . 35n67, 107n15
Canadian Shredded Wheat Co., Ltd. v. Kellogg Co.
of Canada, Limited, [1938] 1 All. E.R. 618 (PC.),
[1938] 2 D.L.R. 145 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 135n43
Canadian Shredded Wheat v. Kellogg, [1936]
O.W.N. 199 (Ont. H.C.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 85n49
Canadian Thermos Products Inc. v. Fagundes (2006),
50 C.P.R. (4th) 296 (C.I.R.A.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 174n63, 177n70
Canadian Tire Corp. v. Accessoires DAutos
Nordiques Inc. 2006 FC 1431 (F.C.) appeal
dismissed (2007), 62 C.P.R. (4th) 436 (F.C.A.) . . . . . . . . . . . . . 95n16, 96n22, 96n24,
102n71, 103n82, 103n83,
116n88, 116n91, 155n77
394 Table of Cases

Canadian Tire Corp. v. Automobility Distribution Inc.,
(2006), 51 C.P.R. (4th) 452 (T.M.O.B.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 102n75
Canadian Tire Corp. v. P.S. Partsource Inc. (2001),
11 C.P.R. (4th) 386 (F.C.A.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 86n55
Canadian Tire Corporation, Limited v. C.C.C.,
Kevin Lyan, WIPO case no. D2006-1049 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 170n36
Canadian Tire Corporation, Limited v. Digi Real Estate
Foundation, WIPO case no. D2006-117 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 172n49
Canadian Tire Corporation, Limited v. Mike Rollo
WIPO case no. D2002-1069 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 169n32
Canadian Wm. A. Rogers Ltd. v. International Silver Co.
of Canada Ltd., [1932] Ex. C.R. 63 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 386n111
Canavest House Ltd. v. Lett (1984), 2 C.P.R. (3d)
386 (Ont. H.C.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 235n48
Candrug Health Solutions Inc. v. Thorkelson, (2007),
60 C.P.R (4th) 35 (F.C.), 2008 FCA 100 (F.C.A.). . . . . . . . . . 30n30, 113n62, 165n10
Carling 0Keefe Breweries of Can. Ltd. v. Labatt
Brewing Co. (1982), 68 C.P.R. (2d)
1 (F.C.T.D.); 10 C.P.R. (3d) 433 (F.C.A.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 86n60
The Carphone Warehouse Limited v. Navigation
Catalyst Systems Inc. WIPO case no. D2008-0483 . . . . . . . . . . . . . . . . . . . . . . 168n28
Cartem Inc. v. Souhaits Renaissance Inc. (1982),
60 C.P.R. (2d) 1 (F.C.T.D.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 101n67
Carton Co. Ltd. v. Manchester McGregor Ltd.,
[1935] O.R. 144, [1935] 2 D.L.R. 94 (Ont. H.C.) . . . . . . . . . . . . . . . . . . . . . . . . 231n32
Caseware International Inc. v. Lee (2006),
51 C.P.R. (4th) 231 (C.I.R.A.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 177n71
Castlemore Marketing Inc. v. Intercontinental Trade
(1995), 64 C.P.R. (3d) (F.C.T.D.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 149n56
Catnic Components Ltd. et al v. Hill & Smith Ltd.
[1982] 9 R.P.C. 183 at 206 (Ch. D.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 223n15
CBM Kabushiki Kaisha v. Lin Trading Co. (1985),
5 C.P.R (3d) 27 (T.M.O.B.); affirmed (1987),
14 C.P.R. (3d) 32 (F.C.T.D.); affirmed (1988)
21 C.P.R. (3d) 417 (F.C.A.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 55n7
CBS Inc. v. Ames Records & Tapes Ltd. [1981]
2 All E.R. 812 (Ch. D.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 275n22
CCH Canadian Ltd. v. Law Society of Upper Canada (2002),
18 C.P.R. (4th) 161 (F.C.A.), (2004), 30 C.P.R. (4th) 1 (S.C.C.) . . . . . . . . . . . . 290n6
CCH Canadian Ltd. v. Law Society of
Upper Canada (2004),
30 C.P.R. (4th) 1 (S.C.C.) . . . . . . .275n20, 275n21, 275n22, 275n23, 275n24, 279n9,
281n17, 289n2, 290n4, 290n7,
291n8, 291n9, 291n10, 291n11,
291n12, 291n13, 291n14, 292n15,
292n16, 292n19, 292n20, 293n22,
293n24, 297n42, 298n45, 300n51
Cescinsky v. Routledge & Sons Ltd., [1916] 2 K.B. 325 . . . . . . . . . . . . . . . . . . . . 240n66
Table of Cases 395

Celanese Canada Inc. v. Murray Demolition Corp.,
(2006), 50 C.P.R. (4th) 241 (S.C.C.). . . . . . . . . . . . . . . . . . . . 148n54, 149n55, 149n57,
150n62, 152n63, 153n64
Centennial Grocery Brokers Ltd. v. Reg. T.M., [1972]
F.C. 257 (F.C.T.D.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 106n4
Centre Ice and Syntex Inc. v. Novopharm Ltd. (1991),
36 C.P.R. (3d) 129, (F.C.A.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 147n49
Centre Ice Ltd. v. National Hockey League (1994),
53 C.P.R. (3d) 34, (F.C.A.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 147n48
Cescinsky v. Routledge & Sons Ltd., [1916]
2 K.B. 325. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 240n67, 240n68
Chalet Bar B-Q (Canada) Inc. et al. v. Foodcorp Ltd. (1981),
66 C.P.R. (2d) 56, varied (1982), 55 C.P.R. (2d) 46 (F.C.A.) . . . . . . . . . . . . . . 123n27
Chappel & Co v. Redwood Music Ltd, [1980]
2 All E.R. 817 (H.L.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 236n51, 237n56
Cheap Tickets & Travel Inc. v. Emall.ca Inc. (2003),
25 C.P.R. (4th) 105 (C.I.R.A.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 174n58
Cheap Tickets and Travel Inc. v. Emall.ca Inc.,
2008 FCA 50 (F.C.A.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 86n59, 120n15
Cheerio Toys & Games Ltd. v. Cheerio Yo-Yo & Bo-Lo Co.
(1964), 43 C.P.R. 111 (Ex. Ct.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 159n110, 160n111
Cheerio Toys & Games Ltd. v. Dubiner (1964),
44 C.P.R. 134 (Ex. Ct.); affirmed [1966]
S.C.R. 206, ), 48 C.P.R. 226 (S.C.C.) . . . . . . . . . . . 74n6, 74n2, 75n16, 86n57, 98n40,
133n33, 134n40, 159n110
Cheung Kong (Holdings) Ltd. v. Living Realty Inc,
(1999) 4 C.P.R. (4th) 71 (F.C.T.D.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 78n29
Chiapetta v. Morales, WIPO case no. D2002-1103 . . . . . . . . . . . . . . . . . . . . . . . . 168n27
Choice Hotels International, Inc. v. Cox (2006),
54 C.P.R. (4th) 222 (C.I.R.A.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 174n63, 177n70
Christopher Bede Studios Limited v. United Portraits
Limited [1958] N.Z.L.R. 250 (Sup. Ct) . . . . . . . . . . . . . . . . . . . . . . . . . 230n21, 231n28
Ciba-Geigy Canada Ltd. v. Apotex Inc. (1992),
44 C.P.R. (3d) 289 (S.C.C.) . . . . . . . . . . . . . . . . 41n11, 121n19, 128n4, 128n5, 128n7,
129n8, 129n9, 130n13, 130n14,
131n22, 131n23, 131n24, 156n82
Ciba-Geigy Canada Ltd. v. Apotex Inc. [1992]
3 S.C.R. 120 (S.C.C.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 15n31
Ciba-Geigy Can. Ltd. v. Novopharm Ltd. (1986),
12 C.P.R. (3d) 76 (Ont. H.C.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 130n15
Ciba-Geigy Ltd. v. Novopharm Ltd. (1997),
77 C.P.R. (3d) 428 (F.C.T.D.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 145n36
Cie generale des establissements Michelin-Michelin &
Cie v. CAW-Canada (1996),
71 C.P.R. (3d) 348 (F.C.T.D.) . . . . . . . . . . . . . . . . . . . . . . . . . . . 49n6, 120n13, 125n36,
290n5, 292n17
396 Table of Cases

Circle Film Enterprises Inc. v. Canadian Broadcasting
Corporation (1957), 28 C.P.R. 5, [19561960] Ex. C.R. 166,
(Ex. Ct.), [1959] S.C.R. 602, 31 C.P.R. 57,
20 D.L.R. (2d) 211 (S.C.C.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 267n8
Circle Film Enterprises Inc. v. Canadian
Broadcasting Corporation [1959] S.C.R. 602,
31 C.P.R. 57 (S.C.C.) . . . . . . . . . . . . . . . . . . . . . . . . . . 242n75, 266n2, 269n20, 270n25
Citrus Growers Association Ltd. v. William G. Branson Ltd.
(1990), 36 C.P.R. (3d) 434 (F.C.T.D.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . 87n67, 90n86
Clairol International Corp. v. Thomas Supply &
Equipment Co. ([1968] 2 Ex. C.R. 552),
55 C.P.R. 176 (Ex. Ct.) . . . . . . . . . . . . . . . . . . . . . . . . . .49n6, 119n10, 124n31, 124n32,
124n33, 125n36
Clarkson Gordon v. Registrar of Trade-marks (1985),
5 C.P.R. (3d) 252 (F.C.T.D.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 31n35
Clatworthy & Son Ltd. v. Dale Display Fixtures Ltd.
[1929] S.C.R. 429 (S.C.C.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . 372n19, 373n23, 373n28,
373n33, 386n110, 386n113
Clorox Co. v. E.I. Dupont de Nemours and Co. (1995),
64 C.P.R. (3d) 79 (F.C.T.D.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 101n69
Clorox Co. v. Sears Canada Inc. 33 C.P.R. (3d)
48 (T.M.O.B.), 41 C.P.R. (3d) 483 (F.C.T.D.)
49 C.P.R. (3d) 217 (F.C.A.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 99n52
Clover Gift. Inc. v. Morrison (2005),
43 C.P.R. (4th) 380 (C.I.R.A.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 174n58
Coastal Culture Inc. v. Wood Wheeler Inc., (2007),
57 C.P.R. (4th) 261 (F.C.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 109n31
CocaCola Co. of Can. Ltd. v. PepsiCola Co. of Can. Ltd.
[1938] Ex. C.R. 263 at 276 (Ex. Ct.); reversed [1940]
S.C.R. 17 (S.C.C.); affirmed [1942] 2 W.W.R. 257 (P.C.) . . . . . . . . . . . . . . . . . . 98n38
Coca-Cola Co. v. Pepsi-Cola Co., [1938] Ex. C.R. 263
(Ex. Ct.); reversed [1940] S.C.R 17 (S.C.C.); affirmed
[1942] 2 W.W.R. 257 (P.C.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 96n26, 98n36, 98n37,
101n66, 102n74
Coca-Cola Ltd v. Pardhan (1999),
85 C.P.R. (3d) 489 (F.C.A.) . . . . . . . . . . . . . . . . . . . . . . . 48n5, 51n23, 122n21, 122n23
Cochrane Dunlop Hardware Ltd. v. Capital Diversified
Industries Ltd. (1976), 30 C.P.R. (2d) 176 (Ont. C.A.) . . . . . . . . . . . . . . 97n27, 98n39
College of Chiropodists of Ontario v. Canadian Podiatric
Medical Association (2004), 37 C.P.R. (4th) 219 (F.C.) . . . . . . . . . . . . . . . . . . . 23n80
Collins v. Rosenthal, (1974), 14 C.P.R. (2d) 143 (F.C.T.D.) . . . . . . . . . . . . . . . . 329n76
Columbia Picture Industries Inc. v. Robinson [1986]
3 All E.R. 338 (Ch. Div.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 149n60
Coming Attractions v.ComingAttractions.com,
NAF, case No. FA0003000094341 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 168n28
Commercial Signs v. General Motors Products of Canada Ltd. et al.
[1937] O.W.N. 58 (H.C.J.), [1937] 2 D.L.R. 310,
aff d [1937] 2 D.L.R. 800 (Ont.C.A.). . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 182n16
Table of Cases 397

Community Credit Union Ltd. v. Canada
(Registrar of Trade-marks), 2006 FC 1119 (F.C.) . . . . . . . . . . . . . . . . . . . . . . . 107n15
Compagnie Generale des Etablissements Michelin v. National
Automobile, Aerospace, Transportation and General Workers
Union of Canada (1996), 71 C.P.R. (3d), 348 (F.C.T.D.) . . . . . . . . . . . . . . . . . 281n18
Compo Co. v. Blue Crest Music [1980] 1 S.C.R. 357 . . . . . . . . . .272n6, 272n7, 273n10
Composers, Authors and Publishers Association
of Canada Ltd. v. CTV Television Network Ltd.
(1966), 48 C.P.R. 246 (Ex. Ct.) affirmed [1968] S.C.R. 676 (S.C.C.) . . . . . . . . 274n19
of Canada Ltd. v. Kiwanis Club of West Toronto
[1953] 2 S.C.R. 111, 19 C.P.R. 20 (S.C.C.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 311n68
of Canada Ltd. v. Maple Leaf Broadcasting Co. Ltd.,
[1953] Ex. C.R. 130, [1954] S.C.R. 624 . . . . . . . . . . . . . . . . . . . . . . . . . 352n33, 353n38
Composers, Authors and Publishers Association of
Canada Ltd. v. Western Fair Association (1950),
13 C.P.R. 26 (Ont. C.A.), [1951] S.C.R. 596, 15 C.P.R. 45, (S.C.C.) . . . . . . . . 310n66
Comstock Canada v. Electec Ltd., (1991),
38 C.P.R. (3d) 29 (F.C.T.D.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 375n41
ConAgra Foods, Inc. v. Featherstonehaugh & Co. (2002),
23C.P.R. (4th) 49 (F.C.T.D.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 49n12
Consorzio del Formaggio Parmigiano Reggiano v. La casa del
Latte di Bibulic Adriano, WIPO case no. D2003-0661 . . . . . . . . . . . . . . . . . . . 168n25
Consorzio del Prosciutto di Parma v. Maple Leaf
Meats Inc. (2001) 11 C.P.R (4th) 48 (F.C.T.D.) . . . . . . . . . . . . . . . . . . . 15n29, 29n23,
32n44, 89n83
The Co-operators Group Ltd. v. Artbravo Inc, (2006),
47 C.P.R. (4th) 460 (C.I.R.A.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 177n71
Corelli v. Grey (1913) 29 T.L.R 570 (Ch. D.) aff d
30 T.L.R. 116 (U.K.C.A.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 189n16
Countryside Caners Co. v. Registrar of Trade-marks,
(1981), 55 C.P.R. (2nd) 25 (F.C.T.D.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 80n7
C.P. Koch Ltd. et. al. v. Continental Steel Ltd. (1984),
82 C.P.R. (2d) 156 (B.C.S.C.), aff d (1985),
4 C.P.R. (3d) 395 (B.C.C.A.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 252n12, 333n98
Creamette Co. v. Famous Foods Ltd., [1933]
Ex. C.R. 200 (Ex. Ct.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 142n21
Crocs Canada Inc. v. Holey Sales Holdings Ltd. 2008 FC 188 (F.C.) . . . . . . . . . 196n49
Cross-Canada Auto Body Supply (Windsor)
Limited v. Hyundai Auto Canada, (2005) 43 C.P.R.
(4th) 21 (F.C.), affirmed 2006 FCA . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 133n65
Cross-Canada Auto Body Supply (Windsor) Limited v. Hyundai
Auto Canada (2006), 53 C.P.R. (4th) 286 (F.C.A.) . . . . . . . . . . . . . . . . . . . . . . . 86n54
Cross-Canada Auto Body Supply (Windsor) Limited v. Hyundai
Auto Canada, 2007 FC 580 (F.C.), 60 C.P.R. (4th) (F.C.),
2008 FCA 98, 65 C.P.R. (4th) 121 (F.C.A.) . . . . . . . . . . . . . . . . . 76n20, 76n60, 86n58,
89n84, 90n89, 120n15
398
Table of Cases
Cselko Associates Inc. v. Zellers Inc (1992),
44 C.P.R. (3d) 56 (Ont. Ct. (Gen. Div.)) . . . . . . . . . . . . . . . . 229n17, 232n35, 252n15
CTV Television Network Ltd. v. Canada (Copyright
Appeal Board) (1993), 46 C.P.R. (3d) 343 (F.C.A.),
leave to Appeal to the S.C.C. refused (1993),
51 C.P.R. (3d), v. (note) (S.C.C.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 348n14
Cushman & Wakefield, Inc. v. Wakefield Realty Corp. (2004),
37 C.P.R (4th) 212 (F.C.A.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 96n18
Cutter (Canada) Ltd. v. Baxter Travenol Laboratories of
Canada Ltd, (1987), 14 C.P.R. (3d) 449. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 145n38
D.& A.s Pet FoodN More Ltd. v. Seiveright, (2006),
48 C.P.R. (4th) 282 (F.C.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 178n73
Dableh v. Ontario Hydro (1990), 33 C.P.R. (3d), 544 (F.C.T.D.) . . . . . . . . . . . . 247n20
Dableh v. Ontario Hydro (1993), 50 C.P.R. (3d) 290 (F.C.T.D.),
68 C.P.R. (3d) 129 (F.C.A.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 146n41, 159n106
Danjaq Inc. v. Zervas (1997), 75 C.P.R. (3d) 295 (F.C.T.D.) . . . . . . . . . . . . . . . . . 50n17
David Dixon & Son Ltd. v. Cornwall Pants & Clothing Co. (1942),
2 C.P.R. 81 (Ont. S.C.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 158n96
Deeks v. Wells [1931] O.R. 818 (Ont. H.C.) affirmed [1931]
4 D.L.R. 533, (Ont. C.A.) affirmed [1933]
1 D.L.R. 353 (Ont. P.C.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 182n17, 329n76
Deeks v. Wells, [1933] 1 D.L.R. 353 (Ont. P.C.) . . . . . . . . . . . . . . . . . . . 328n72, 329n74
Def Lepp Music v. Stuart-Brown [1986]
R.P.C. 273 (U.K. Ch.). . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 272n5, 315n7
DeKuyper v. Van Dulken (1894), 24 S.C.R. 114 . . . . . . . . . . . . . . . . . . . . . . . . . . 381n84
De Montigny v. Cousineau, [1950] S.C.R. 297 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 4n11
Dennison Manufacturing Co. v. Min. of Nat. Revenue, [1988]
1 F.C. 492 (F.C.T.D.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 316n11
Dep. A.G. v. Biggs Laboratories (Can.) Ltd,. (1964),
42 C.P.R. 129 (Ex. Ct.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 30n32
Dep. A.G. v. v. Jantzen of Canada Ltd. (1964)[1965]
Ex. C.R. 227 (Ex. Ct.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 32n46, 32n47
Desjean v. Intermix Media, Inc., 2006 FC 1395,
57 C.P.R (4th) 314 (F.C.), 2007 FCA 365 (F.C.A.) . . . . . . . . . . . . . . . . . . . . . . 167n18
Desmarais v. Edimag Inc. et al. (2003), 26 C.P.R.
(4th) 295 (Quebec C.A.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 230n23
De Tervagne v. Beloeil (Town) [1993] 3 F.C. 227,
50 C.P.R. (3d) 419 (F.C.T.D.) . . . . . . . . . . . . . . . . . . 275n20, 275n24, 275n27, 283n22
In re Dickens [1935] Ch. 267 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 254n24
Dictionnaires Robert Canada SCC v. Libraire du
Nomande Inc. (1987), 16 C.P.R. (3d) 319 (F.C.T.D.) . . . . . . . . . . . . . 332n94, 333n99
Diners Club International Ltd. v. Planet Explorer
Inc. (2004) 32 C.P.R. (4th) 377 (C.I.R.A.). . . . . . . . . . . . . . . . . . . . . . . 175n66, 175n67
Dion Neckwear Ltd. v. Christian Dior, S.A. et al (1996),
71 C.P.R. (3d) 268 (T.M.O.B.); affirmed (2000),
5 C.P.R. (4th) 304 (F.C.T.D.); reversed (2003),
20 C.P.R. (4th) 155 (F.C.A.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 113n58
Table of Cases 399

Disney Enterprises Inc. v. Click Enterprises Inc. (2006),
49 C.P.R. (4th) 87 (Ont. Sup. Ct of Justice) . . . . . . . . . . . . . . . . . . . . . . . . . . . . 167n18
Dobran v. Bier, 29 C.P.R. 150, (Que. Q.B.). . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 231n27
Dolmage v. Erskine (2003), 23 C.P.R. (4th) 495 (Ont. S.C.J.) . . . . . . . . . . . . . . . 235n49
Donoghue v. Allied Newspapers Ltd., [1937] 3 All E.R. 503 (Ch. D.) . . . . . . . . . 227n7
Dover, Ltd. v. Nrnberger Celluloidwaren Fabrik
Gebrder Wolff [1910] 2 Ch. 25 (U.K.C.A.) . . . . . . . . . . . . . . . . . . . . 373n29, 373n31
Downing (Anglo-Canadian Music Co.) v. The General
Synod of the Church of England in Canada et al. [1943]
O.R. 99, 2 C.P.R. 171, (Ont. H.C.), [1943] O.R. 652,
3 C.P.R. 49 (Ont. C.A.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 232n33, 252n14, 254n23
Drackett Co. v. American Home Products Corp., [1968]
2 Ex. C.R. 89 (Ex. Ct.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 30n28, 31n36
DRG Inc. v. Datafile Ltd.(1987) 18 C.P.R. (3d)
538 (F.C.T.D.), (1991) 35 C.P.R. (3d) 243 (F.C.A.) . . . . . . . . 193n34, 193n35, 370n5
Dubiner v. Cheerio Toys and Games Ltd. [1966]
Ex. C.R. 801 (Ex. Ct.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 52n29, 158n101
Dunsmuir v. New Brunswick, 2008 SCC 9 (S.C.C.) . . . . . . . . . . . . . . . . . . . . . . . 116n87
Durable Electric Appliance Co. Ltd. v. Renfrew Electric
Products Ltd. et al. [1926] 4 D.L.R. 1004, [1928] S.C.R. 8. . . . . . . . . . . . . . . . . 374n35
Dynabec Ltee v. La Societe DInformtique R.D.G. (1985),
6 C.P.R. (3d) 332 (Quebec C.A.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 253n16
Easthaven, Ltd. v. Nutrisystems.com Inc. (2001),
14 C.P.R. (4th) 22 (Ont. Sup. Ct.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 167n19
Eclipse International Fashions Canada Inc. v. Shapiro
Cohen (2005), 48 C.P.R. (4th) 224 (F.C.A.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 82n23
Re Editors Assn. of Canada, New Certification Order (2002),
22 C.P.R. (4th) 21 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 239n64
Edward Chapman Ladies Shop Limited v. Edward Chapman
Limited (2006) 45 C.P.R. (4th) 321 (B.C. S.Ct.)
affirmed (2007), 60 C.P.R. (4th) 1, 2007 BCCA 370 (B.C. C.A.) . . . . . . . . . . . 135n46
Edward Chapman Ladies Shop Limited v. Edward
Chapman Limited, (2007), 60 C.P.R (4th) 1 (B.C.C.A.) . . . . . . . . . . . . . . . . . . 132n25
Elders Beverages (1975), Ltd. v. Registrar of Trade-marks (1979),
44 C.P.R. (2d) 59 (F.C.T.D.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 27n7
Elders Limited v. Private Company, WIPO case no. D2007-1099 . . . . . . . . . . . 171n45
Eldon Industries Inc. et al. v. Reliable Toy Co. Ltd. et al. [1966]
1 O.R. 409, 54 D.L.R. (2d) 97 44 C.P.R. 239 (Ont. H.C.J.)
affirmed 48 C.P.R. 109 (Ont C.A.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 193n34
Eldon Industries Inc. v. Reliable Toy Co. Ltd. (1966),
48 C.P.R. 109 (Ont. C.A.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 324n50
Elgin Handles Ltd. v. Welland Vale Manufacturing Co. (1964),
43 C.P.R. 20 (Ex. Ct.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 17n47
Eli Lilly & Co. v. Novapharm Ltd. (2000), 10 C.P.R. (4th) 10 (F.C.A.) . . . . . . . . 77n25
Emall.ca Inc. v. Cheap Tickets and Travel Inc.,
2007 FC 243, 56 C.P.R (4th) 82 (F. C.),
appeal dismissed, 2008 FCA 50 (F.C.A.). . . . . . . . . . . . . . . . . . .85n43, 90n87, 165n10
400 Table of Cases

Embee Electronic Agencies v. Agence Sherwood
Agencies, Inc., et al. (1979), 43 C.P.R. (2d) 285 (F.C.T.D.) . . . . . . . . . . . . . . . 144n30
Energy Absorption Systems, Inc. v. Y. Boissonneault & Fils Inc.
(1990), 30 C.P.R. (3d) 420 (F.C.T.D.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 223n16
Enterprise Rent-A-Car Co. v. Singer (1998),
79 C.P.R. (3d) 45 (F.C.A.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 40n3
Epstein v. O-Pee-Chee Co. Ltd. [1927]
Ex. C.R. 156 [1927] 3 D.L.R. 160 . . . . . . . . . . . . . . . . . . . . . 381n82, 381n85, 386n112
Re ERCC Statement of Royalties, 1999-2002.
(2002), 23 C.P.R. (4th) 352 (Copyright Board) . . . . . . . . . . . . . . . . . . . . . . . . . 362n89
E. Remy Martin & Co. S.A. v. Magnet
trading Corp. (HK) Ltd., (1988), 23 C.P.R (3d) 242 (T.M.O.B.) . . . . . . . . . . . 108n18
Re Erin Features #1 Ltd (1991), 8 C.B.R. (3d) 205 (B.C.S.C.) . . . . . . . . . . . . . . . 256n31
Eros-Equipe de Recherche Operationnelle en
Sante Inc. v. Conseillers en Gestion et Informatique
C.G.I. Inc, (2004), 35 C.P.R. (4th) 105 (F.C.) . . . . . . . . . . . . . 245n5, 248n21, 248n22
Ethicon Inc. v. Cyanamid of Can. Ltd. (1977),
35 C.P.R. (2d) 126 (F.C.T.D.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 103n79
Euro-Excellence Inc. v. Kraft Canada Inc. (2007),
59 C.P.R (4th) 353 (S.C.C.) . . . . . . . . . . . . . . . . . . . . . . . . . 260n3, 278n6, 280, 280n10,
280n11, 280n12, 322n35
The Evangelical Fellowship of Canada v. Canadian
Music Rights Agency (1999), 1 C.P.R. (4th) 497 (F.C.A.) . . . . . . . . . . . . . . . . 363n99
Experience Hendrix LLC v. Purple Haze Records Ltd.
[2005] EWHC 249 (U.K.Ch.), appeal dismissed [2007]
EWCA Civ 501 (U.K.C.A.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 201n4
Express File Inc. v. HRB Royalty Inc. (2005), 39 C.P.R. (4th) 59 (F.C.). . . . . . . . 50n22
Express Newspapers plc. v. News (UK) ltd. [1990]
3 All E.R. 376 (Ch.D.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 228n11, 228n14
Express Newspapers PLC v. Liverpool Daily Post & Echo PLC,
[1985] 3 All E.R. 680 (Ch.D.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 228n15
Fairmount Resort Properties Ltd. v. Fairmount Hotel
Management, L.P. (2008), 67 C.P.R. (4th) 404 (F.C.) . . . . . . . . .87n63, 87n64, 44n31
Farris, Vaughan, Mills & Murphy v. Kabushiki Kaisha
Yaskawa Denki (2008), 68 C.P.R. (4th) 220 (T.M.O.B.) . . . . . . . . . . . . . . . . . . . 82n22
Farside Clothing Ltd. v. Caricline Ventures Ltd. (2001),
16 C.P.R. (4th) 482 (F.C.T.D.), affirmed (2002),
22 C.P.R. (4th) 321 (F.C.A.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 98n35
Re F.G.(Films) Ltd. [1953] 1 W.L.R. 483 (Ch. D.) . . . . . . . . . . . . . . . . . . . . . . . . . 189n18
Fibergrid Inc. v. Precisioneering Ltd. (1991),
35 C.P.R. (3d) 221 (F.C.T.D.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 28n19, 33n50
Fiesta Barbecues Ltd. v. General Housewares Corp. (2003),
28 C.P.R. (4th) 60 (F.C.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 29n25
Figgie International Inc. v. Citywide Machine Wholesale Inc. (1993),
50 C.P.R. (3d) 89 (F.C.T.D.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 114n78
FileNET Corp. v. Registrar of Trade-marks (2001), 13 C.P.R. (4th)
385 (F.C.T.D.) affirmed (2002), 22 C.P.R. (4th) 328 (F.C.A.) . . . . . . . . . . . . . . . . . .73
Table of Cases 401

Fjord Pacific Marine Industries Ltd. v. Reg. T.M., [1975]
F.C. 536 (F.C.T.D.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 107n8
Fly By Night Music v. Record Wherehouse (1975),
20 C.P.R. (2d) 263 (F.C.T.D.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 207n34
Folkes v. Greensleeves Publishing Ltd (1997),
76 C.P.R. (3d) 360 (Ont. Ct. (Gen. Div.))
affirmed 85 C.P.R. (3d) 144 (Ont. C. A.). . . . . . . . . . . . . . . . . . . . . . . . . . 139n5, 315n8
Foodcorp Ltd. v. Chalet Bar BQ (Can.) Inc. (1981),
55 C.P.R. (2d) 46 (F.C.T.D.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 97n35
The Football Association Premier League Ltd. v. Panini
UK Ltd., [2003] EWCA Civ 995 (U.K.C.A.). . . . . . . . . . . . . . . . . . . . . . . . . . . . 302n53
Forge Moderne Inc. v. Registrar of Trade-marks (1967),
51 C.P.R. 1993 (Ex. Ct.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 27n5
Francis Day & Hunter Ltd. et al. v. Bron [1963]
2 All E.R. 16 (Ch. D.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 273n11, 328n71
Frank Reddaway & Co. Ltd. v. George Banham & Co. Ltd.,
[1896] A.C. 199 (H.L.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 134n34
Fulham Football Club (1987) Limited et al. v. Domains
by Proxy Inc. WIPO case no. D2009-0331 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 172n47
FWS Joint Sports Claimants Inc. v. Border Broadcasters Inc.
(2001), 16 C.P.R. (4th) 61 (F.C.A.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 361n88
FWS Joint Sports Claimants v. Copyright Board (1991),
36 C.P.R. (3d) 483 (F.C.A.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 188n11
Galanos v. Registrar of Trade Marks (1982),
69 C.P.R. (2d) 144 (F.C.T.D.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 27n8
Galerie dart du petit Champlain Inc v. Thberge (2002),
17 C.P.R. (4th) 161 (S.C.C.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 261n5
Gandy v. Canada (Commissioner of Patents) (1980),
47 C.P.R. (2d) 109 (F.C.T.D.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 370n7, 377n58
Gattuso v. Gattuso Corp. Ltd., [1968] 2 Ex. C.R. 609 (Ex. Ct.) . . . . . . . . . . . . . . . 75n15
Geac Canada Ltd. v. Prologic Computer Corp. (1989),
25 C.P.R. (3d) 565 (B.C.S.C.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 329n76
General Electric Co. v. Online Sales Inc.,
WIPO case no. D2000-0343 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 169n32
General Motors Corp. v. Bellows, [1947] Ex. C.R. 568
(Ex. Ct.); affirmed [1949] S.C.R. 678 (S.C.C.) . . . . . . . . . . . . . 28n19, 33n52, 100n53,
100n54, 85n44
General Motors Corp. v. Bellows, [1949] S.C.R. 678 (S.C.C.) . . . . . . . . . . . . . . . . . . . . . .
General Motors of Canada v. Decarie Motors Inc. (2000),
9 C.P.R. (4th) 368 (F.C.A.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 27n12, 135n41
General Motors v. Bellows, [1947] Ex. C.R. 568 (Ex. Ct.);
affirmed [1949] S.C.R. 678 (S.C.C.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 97n29, 101n63
Generation Nouveau Monde Inc. v. Teddy S.P.A. (2006),
51 C.P.R. (4th) 385 (T.M.O.B.). . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 113n61
Gen. Mills Can. Ltd. v. Procter & Gamble Inc. (1985),
6 C.P.R. (3d) 551 (T.M.O.B.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 50n14
402
Table of Cases
Geoffrey Inc. v. Not The Usual, WIPO case no. D2006-0882 . . . . . . . . . . . . . . . 170n39
Gerber Garment v. Lectra Systems Ltd. [1997] R.P.C. 443
(U.K.C.A.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 158n94
Gerhard Horn Investments Ltd. v. Registrar of
Trade-marks (1983), 73 C.P.R. (2d) 23 (F.C.T.D.) . . . . . . . . . . . . .27n6, 27n9, 27n11
Gesco Industries Inc v. Sim & McBurney (2000),
9 C.P.R. (4th) 480 (F.C.A.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 50n19, 50n21
Glaxo Canada Inc. v. Apotex Inc. (1995), 64 C.P.R. (3d) 191
(F.C.A.), revg (1994), 58 C.P.R. (3d) 1 (F.C.T.D.) . . . . . . . . . . . . . . . . . . . . . . 3245n8
Glaxo Group Limited v. Defining Presence Marketing
Group (Manitoba) (2004), 35 C.P.R. (4th) 528,
BCICAC case no. 0020 (CIRA) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 17475n64
Glaxo Wellcome Inc. v. Novopharm Ltd. (2000),
8 C.P.R. (4th) 448 (F.C.T.D.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 16n42
Glaxo Wellcome Plc. v. M.N.R. (1998), 81 C.P.R.
(3d) 372 (F.C.A.), leave to appeal to the Supreme Court
of Canada dismissed 82 C.P.R. (3d) vi . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 326n65
Glen Oak Inc. v. Smith & Nephew Inc. (1996),
68 C.P.R. (3d) 153 (F.C.A.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 142n22
Global Upholstery Co. Ltd. v. Galaxy Office Furniture Ltd (1976),
29 C.P.R. (2d) 145 (F.C.T.D.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 231n30, 374n37
Globe Media International Corp. v. Dawn Internet
Telephony Systems Inc, (2006),
53 C.P.R. (4th) 258 (C.I.R.A.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 174n58
Godfrey v. Lees [1995] E.M.L.R. 307 (Ch. D) . . . . . . . . . . . . . . . . . . . . . . . . . . . . 238n61
Gondos v. Hardy (1982), 64 C.P.R. (2d) 145 (Ont. H.C.) . . . . . . . . . . . 328n71, 329n75
Google Inc. v. Fraser (2005), 42 C.P.R. (4th) 560 (C.I.R.A.) . . . . . . . . . . . . . . . . 177n71
Gould Estate et al. v. Stoddart Publishing Co. Ltd. (1996),
74 C.P.R. (3d) 206 (Ont. Gen. Div.) affirmed (1998),
80 C.P.R. (3d) 161 (Ont. C.A.) . . . . . . . . . . . . . . . . . . . . . . . . 182n19, 228n11, 228n12
Gould v. Minister of National Insurance et al. [1951]
1 All E.R. 368 (U.K.K.B.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 234n41
Government of Canada v. Bedford (2003), 27 C.P.R.
(4th) 522 (C.I.R.A.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 174n58, 174n63
Governor & Co. v. Sears Canada Inc. (2002),
26 C.P.R. (4th) 457 (T.M.O.B.). . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 12n12
Grand Hotel of Caledonia Springs v. Wilson, [1904] A.C. 103 . . . . . . . . . . . . . . 135n41
Grapha-Holding Ag v. Illinois Tool Works Inc. (2008),
68 C.P.R. (4th) 180 (F.C.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 82n24
Great Atlantic & Pacific Tea Co. v. Reg. TM. [1945]
Ex. C.R. 233 (Ex. Ct.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 74n7
Great Lake Hotels Ltd. v. Noshery Ltd. (1968),
56 C.P.R. 165 (Ex. Ct.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 32n45
Green v. Broadcasting Corp. of N.Z. [1989] 2 All E.R. 1056 (P.C.) . . . . . . . . . . 189n12
Gribble v. Manitoba Free Press Co., [1931]
3 W.W.R. 570, [1932] 1 D.L.R. 169 (Man. C.A.) . . . . . . . . . . . . . . . . . 180n2, 325n54,
325n55, 325n56
Grignon v. Roussel (1991), 38 C.P.R (3d) 4 (F.C.T.D.) . . . . . . . . . . . . . . . . . . . . 269n21
Table of Cases 403

GSW Ltd. v. Great West Steel Industries Ltd. (1975),
22 C.P.R. (2d) 154.(F.C.T.D.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 97n33
Guido Berlucchi & C.S.r.l. v. Brouilette Kosie Prince,
2007 FC 245 (F.C.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 82n19
Gula v. B. Manischewitz Co., [1946] Ex. C.R. 570 (Ex. Ct.);
affirmed (1947), 8 C.P.R. 103 (S.C.C.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 31n34
Gulf Canada Ltd. v. Tug Mary Mackin, [1984]
1 F.C. 884 (F.C.A.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 144n29
Hadley and Others v. Kemp [1999] E.M.L.R. 589
(U.K.Ch D) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 239n62
Hager v. E.C.W. Press Ltd. (1998), 85 C.P.R. (3d)
289 (F.C.T.D.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 228n11, 333n100
Hansen International Inc. v. Whirley Industries Inc. (2002),
22 C.P.R. (4th) 57 (F.C.T.D.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 382n89
Hardees Food Systems Inc. v. Hardee Farms International Ltd.
(1982), 63 C.P.R. (2d) 86 (F.C.T.D.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 114n73
Harold Drabble Ltd. v. Hycolite Mfg. Co. (1928),
44 T.L.R. 264 (U.K.Ch. D.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 235n47
Harris Knitting Mills v. Reg. T.M. (1982), 66 C.P.R. (2d)
158 (F.C.T.D.); (1985), 4 C.P.R. (3d) 488 (F.C.A.) . . . . . . . . . . . . . . . . . . . . . . . . 8n29
Hassenfeld Bros. Inc. et al. v. Parkdale Novelty Co. Ltd.,
[1967] 1 Ex. C.R. 277 (Ex. Ct.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 375n44
Havana House Cigar & Tobacco Merchants Ltd. v. Skyway
Cigar Store (1998), 81 C.P.R. (3d) 203 (F.C.T.D.) . . . . . . . . . . . . . . . . . . . . . . . . 87n66
Hawley v. Canada (1990), 30 C.P.R. (3d) 534 (F.C.T.D.) . . . . . . . . . . . . . . . . . . . 246n12
Hay and Hay Construction Co. Ltd. v. Sloan et al. [1957] O.W.N. 445 . . . . . . . 333n95
Heinzman v. 751056 Ontario Limited (1990),
34 C.P.R. (3d) 1 (F.C.T.D.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 14n24, 76n20
Hill v. Church of Scientology of Toronto [1995] 2 S.C.R. 1130 (S.C.C.) . . . . . 334n106
H J Heinz Co. of Canada Ltd v. Edan Sales Inc (1991),
35 C.P.R. (3d) 213 (F. C.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 122n24
Hodgens v. Beckingham [2003] EWCA CIV 143 (U.K.C.A.) . . . . . . . . . . . . . . . 239n64
Home Juice Co. v. Orange Maison Ltee. [1970] S.C.R. 942 (S.C.C.) . . . . . . . . . . 30n33
Honest Eds Limited v. Imbrogno (2006), 58 C.P.R. (4th) 168 (C.I.R.A.) . . . . . 177n71
Honey Dew Ltd. v. Rudd [1929] Ex. C.R. 83 (Ex. Ct.) . . . . . . . . . . . . . . . . . . . . . . 51n25
Hopton Wood Stone Firms Ltd. v. Gething (1910), 27 R.P.C. 605 . . . . . . . . . . . 135n41
Housden v. Marshall, [1958] 3 All E.R. 639 (Ch. D.) . . . . . . . . . . . . . . . . . . . . . . 228n13
House of Kwong Sang Hong International Ltd. v. Borden
Ladner Gervais LLP, 2001 FCA 346 (F.C.A.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . 84n40
Hubbard v. Vosper, [1972] 1 All E.R.1023 (U.K.C.A.) . . . . . . 291n13, 292n20, 293n25
Hughes, W.J. & Sons Corn Flower Ltd. v. Morawiec (1970),
62 C.P.R. 21 (Ex. Ct.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 17n50
Hughes v. Sherrif, [1950] O.R. 206 (Ont. S.C.);
12 C.P.R. 79 (Ont. C.A.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 131n20, 157n92
Hurlburt Co. Ltd. v. Hurlburt Shoe Co., [1925] S.C.R. 141 (S.C.C.) . . . . . . . . . 136n47
Hutton v. Canadian Broadcasting Corporation (1990),
29 C.P.R. (3d) 398 (Alberta. Q.B.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 329n75
404
Table of Cases
Imperial Chemical Industries PLC v. Apotex (1989),
27 C.P.R. (3d) 345, (F.C.A.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 147n48
Imperial Developments Ltd. v. Imperial Oil Ltd. (1984),
79 C.P.R. (2d) 12 (F.C.T.D.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 28n2, 8114n74
Imperial Tobacco Co. v. Philip Morris (1976),
27 C.P.R. (2d) 205 (Reg. T. M.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 44n31
Imperial Tobacco Co. v. Registrar of Trade-marks [1939]
2 D.L.R. 65 (Ex. Ct.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 17n46
Re Industrial Design Application No. 19960991 (2000),
5 C.P.R. (4th) 317 (Patent Appeal Bd) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 373n23
21 C.P.R. (4th) 339 (Patent Appeal Bd.) . . . . . . . . . . . . . . . . 373n23, 373n30, 373n29
In Re Industrial Design Application No. 1997-1768 (1999),
3 C.P.R (4th) 254 (Patent Appeal Bd.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 376n47
In Re Vulcan Trade Mark (1915), 51 S.C.R. 411, 24 D.L.R. 621 . . . . . . . . . . . . . 381n84
14 C.P.R. (4th) 213 (Patent Appeal Bd.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 376n53
Re Industrial Design Application No. 1998-2348 (2001),
14 C.P.R. (4th) 63 (Patent Appeal Bd) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 376n46
Industrial Design Application No. 1999-0058 (2003),
29 C.P.R. (4th) 93 (Pat. App. Bd.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 373n32
Industrial Design Application No. 2000-2268/95949 (2006),
56 C.P.R. (4th) 154 (Patent Appeal Bd. and
Commissioner of Patents). . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 376n51, 376n52
Industrial Design Application No. 20011238 (2004),
30 C.P.R. (4th) 571 (Pat. App. Bd.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 373n31
Inform Cycle Ltd. v. Rebound Inc., (2006) ABQB 825
(Alberta Q.B, Master), appeal dismissed (2007)
ABQB 319 (Alberta Q.B.) 67 C.P.R. (4th) 151 (Alberta Q.B.) . . . . . . . . . . . . . 178n73
I. N. Newman Limited v. Richard T Adlem [2005]
EWCA Civ. 741 (U.K.C.A.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 130n18
Institut National des Apellations dOrigine v. Brick
Brewing Co., Ltd., (1995), 66 C.P.R. (3d) 351 (T.M.O.B.) . . . . . . . . . . . . . . . . 108n18
Institut National des appellations dorigine
des vins & eaux-de-vie v. Andres Wines Ltd. (1987),
60 O.R. (2d) 316, 16 C.P.R. (3d) 385 (Ont. H.C.),
affirmed 30 C.P.R. (3d) 279 (Ont. C.A.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 157n85
Insurance Corporation of British Columbia v. Registrar
of Trade-marks, (1979), 44 C.P.R. (2d) 1 (F.C.T.D.) . . . . . . . . . . . . . . . 22n69, 23n77
Interlego A.G. v. Tyco Industries Plc. [1989] A.C. 217, [1988]
3 W.L.R. 678) (P.C.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 181n11, 182n12,
183n24, 369n3, 383n92
Internet Movie Database, Inc. v. 384128 Canada Inc., (2005),
46 C.P.R. (4th) 223 (C.I.R.A.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 177n70
Invacare Corp. v. Everest & Jennings Canadian Ltd. (1987),
14 C.P.R. (3d) 156 (F.C.T.D.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 159n107
Irvine v. Talksport Ltd. [2002] All E.R. 414 (U.K.Ch. Div.),
affirmed [2003] All E.R. 881 (U.K.C.A.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 131n19
Table of Cases 405

Irwin Toy Ltd. v. Marie-Anna Novelties Inc. (1986),
12 C.P.R. (3d) 145 (Ont. H.C.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 146n42
Ito-Int. Terminal Operators Ltd. v. Miida Electronics Inc., [1986]
1 S.C.R. 752 (S.C.C.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 315n5
ITV Technologies Inc. v. WIC Television Ltd. (2003),
29 C.P.R. (4th) 182 (F.C.T.D.), (2005),
38 C.P.R (4th) 481 (F.C.A.) . . . . . . . . . . . . . . . . . . . . . . . 29n21, 29n22, 36n69, 165n12
Ivy Lea Shirt Co. v. 1227624 Ontario Ltd. (2001)
11 C.P.R. (4th) 489 (F.C.T.D.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 51n26, 81n16
J.A. & M. Cote Ltee v. B.F. Goodrich Co. (1949),
14 C.P.R. 33 (Ex. Ct.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 90n89
Jeffrey Rogers Knitwear Productions Ltd. et al. v. R.D. International
Style Collections Ltd. (1986), 19 C.P.R. (3d) 217 (F.C.T.D.) . . . . . . . . . . . . . . 252n12
Jennings v. Stephens [1936] 1 All E.R. 409 (U.K.C.A.) . . . . . . . . . . . . . . . . . . . . . . 272n3
John Labatt Ltd. v. Carling Breweries Ltd. (1974),
18 C.P.R. (2d) 15 (F.C.T.D.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 29n23
John Labatt Ltd. v. Molson Breweries, a Partnership (2000),
5 C.P.R. (4th) 180 (F.C.A.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 35n61, 35n63, 35n64,
44n34, 116n88
John Labatt Ltd. v. Rainier Brewing Co. (1984),
80 C.P.R. (2d) 228 (F.C.A.), reversing (1982)
68 C.P.R. (2d) 266 (F.C.T.D.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 83n23
John Maryon Int., Ltd. v. New Brunswick Telephone (1982),
141 D.L.R. (3d) 193 (N.B.C.A.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 227n8
Jones v. Dragon Tales Productions Inc. (2002),
27 C.P.R. (4th) 369 (T.M.O.B.). . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 108n17
Jordan & Ste. Michelle Cellars Ltd. v. Gillespies & Co. (1985),
6 C.P.R. (3d) 377 (F.C.T.D.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 31n34, 31n37
Jordan & Ste-Michelle Cellars Ltd./Les Caves Jordan & Ste-Michelle
Ltee. v. T.G. Bright & Co. (1984), 81 C.P.R (3d) 103,
2 C.I.P.R. 45 (F. C.A.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 32n46
Jordan Ste-Michelle Cellars Ltd v. Andres Wines Ltd. (1985),
6 C.I.P.R. 49 (F.C.T.D.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 21n59
J-Star Industries, Inc. v. Berg Equipement Co. (Canada) Ltd,
(1992), 45 C.P.R. (3d) 72 (F.C.T.D.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 114n76
Kantel v. Grant, Nisbet & Auld Ltd. [1933] Ex. C.R. 84 . . . . . . . . . . . . . 189n12, 274n15
Katz v. Cytrynbaum (1983), 76 C.P.R. (2d) 276 (B.C.C.A.) . . . . . . . . . . . . . . . . . 262n10
KayserRoth Can. (1969) Ltd. v. Fascination Lingerie Inc, (1971),
3 C.P.R. (2d) 27 (Ex. Ct.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 119n8
Kellogg Co. v. Imperial Oil Ltd. (1996), 67 C.P.R. (3d) 426
(Ont. Ct. (Gen. Div.)) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 113n64
Kellogg Salada Canada Inc. v. Maximum Nutrition Ltd. (1992),
43 C.P.R. (3d) 349 (F.C.A.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 97n32
Kelly v. Cinema Houses Ltd. [1932] Macg. Cop. Cas. 362 (U.K.C.A.) . . . . . . . . 189n16
Kenrick & Co. v. Lawrence & Co. (1890), 5 Q.B. 99 (Q.B.D.) . . . . . . . . . . . . . . . 193n36
Kenrick v. Lawrence (1890), 25 Q.B.D. 99 (Q.B.D.) . . . . . . . . . . . . . . . . . . . . . . . 228n10
406
Table of Cases
Kimberly-Clark of Can. Ltd. v. Molnlycke Aktiebolag (1982),
61 C.P.R. (2d) 42 (F.C.T.D.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 103n80
Kirkbi Ag et al v. Ritvik Holdings Inc (2002), 20 C.P.R. (4th)
224 (F.C.T.D.) appeal dismissed (2003), 26 C.P.R. (4th)
1 (F.C.A.), appeal dismissed (2005)
43 C.P.R. (4th) 385 (S.C.C.) . . . . . . . . . . . . . . .17n45, 128n5, 132n27, 139n4, 154n69
Kirkbi Ag et al v. Ritvik Holdings Inc. (2005)
43 C.P.R. (4th) 385 (S.C.C.) . . . . . . . . . . . . . . . . . . 12n8, 17n49, 128n3, 95n9, 128n4,
132n26, 132n28, 135n43
Re Kobblensky (1969), 62 C.B.R. 20 (Ont. Reg. Bankruptcy) . . . . . . . . . . . . . . . 254n22
Knight v. Beyond Properties Pty Ltd., [2007] EWHC 1251 (Ch. D.) . . . . . . . . . . 128n6
Koffler Stores Ltd. v. Reg. T.M., (1976), 28 C.P.R. (2d) 113 (F.C.T.D.) . . . . . . . 110n36
Kraft Canada Inc. v. Euro Excellence Inc. (2004),
33 C.P.R. (4th) 246 (F.C.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 329n80, 337n118
Kraft Canada Inc. v. Euro Excellence Inc.(2007),
59 C.P.R. (4th) 353 (S.C.C.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 326n62
Kraft Ltd. v. Canada (Registrar of Trade-marks) (1984),
1 C.P.R. (3d) 457 (F.C.T.D.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 50n18, 50n20
Kun Shoulder Rest Inc. v. Josepk Kun Violin (1998),
83 C.P.R. (3d) 331 (F.C.T.D.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 133n33
Labatt Brewing Co. v. Benson & Hedges (Canada),
(1996), 67 C.P.R. (3d) 258 (F.C.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 116n86
Ladbroke (Football) Ltd. v. William Hill (Football) Ltd. [1964]
1 All E.R. 465 (H.L.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 181n10, 182n14
Lake Ontario Cement Ltd. v. Registrar of Trade-marks
(1976), 31 C.P.R. (2d) 103 (F.C.T.D.) . . . . . . . . . . . . . . . . . . . . . .34n55, 34n57, 64n32
Laurin v. Champagne (1991), 38 C.P.R. (3d) (F.C.T.D.) . . . . . . . . . . . . . . . . . . . 268n12
Lauri v. Renad, [1892] 3 Ch. 402 (U.K.C.A.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 239n65
Law Society of British Columbia v. Canadian Domain Name
Exchange Corp. (2002), 22 C.P.R. (4th) 88 (B.C. S.C.) . . . . . . . . . . . . . . . . . . . 178n73
The Law Society of Upper Canada v. CCH Canadian
Limited (2004) 30 C.P.R. (4th) 1 (S.C.C.) . . . . . . . . . . . . . . . . . 181n8, 181n9, 183n23,
191n23, 237n58
Lending Tree, LLC v. Lending Tree Corp., 2006 FC 373,
48 C.P.R. (4th) 355 (F.C.) affirmed 2007 FCA 70 (F.C.A.) . . . . . . . . . 111n44, 115n79
Levi Strauss & Co. v. Registrar of Trade-marks, (2006),
51 C.P.R. (4th) 434 (F.C.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 80n7
Lifestyle Homes v. Randall Homes (1990), 30 C.P.R. (3d)
76 (Man. Q.B.); affirmed 33 C.P.R. (3d) 505 (Man. C.A.) . . . . . . . . . . . . . . . . 329n75
Life Underwriters Association v. Provincial Association of
Quebec Life Underwriters 1989 F.C. 570,
22 C.P.R. (3d), (F.C.T.D.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 13n16
Lightning Fastener Co. v. Colonial Fastener Co., [1936]
Ex. C.R. 1 (Ex. Ct.); [1937] S.C.R. 36 (S.C.C.) . . . . . . . . . . . . . . . . . . . . . . . . . . 158n98
Linoleum Manufacturing Co. v. Nairn (1878), 7 (U.K.Ch. D.) 834 . . . . . . . . . . 134n39
Lin Trading Co. v. CBM Kabushiki Kaisha (1988),
21 C.P.R. (3d 417 (F.C.A.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 49n9, 82n20
Table of Cases 407

Liquidators of the Maritime Bank of Canada v. Receiver General
of New Brunswick (1892), A.C. 437 (P.C.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 244n3
L.M. Lipski Ltd. v. Dorel Industries Inc. et al. [1988]
3 F.C. 594 (F.C.T.D.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 379n72
Long v. Tucker [1985] 2 F.C. 534 (F.C.T.D.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 88n74
Lottery Corp. v. Western Gaming Systems Inc. (2002),
25 C.P.R. (4th) 572 (T.M.O.B.). . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 108n18
Louis Vuitton Malletier S.A. v. 486353 B.C. Ltd. 2008
BCSC 799 (B.C. S.C.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 158n100
Re LTI Corp. Industrial Design Application 1998-2446 (2003),
25 C.P.R. (4th) 256 (Patent Appeal Board and
Commissioner of Patents). . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 369n3, 376n55
Lubrication Engineers Inc. v. Canadian Council of
Professional Engineers (1992), 41 C.P.R. (3d) 243 (F.C.A.). . . . . . . . . . . . . . . . 32n41
Lubrizol Corp. v. Imperial Oil Ltd. (1996), 71 C.P.R (3d) 26 (F.C.A.) . . . . . . . 158n101
Macdonald Estate v. Martin [1990] 3 S.C.R. 1235 . . . . . . . . . . . . . . . . . . . . . . . . . 152n63
Magasins Greenberg Lte v. Imports-Export Ren Derby
(Canada) Inc. (1995), 61 C.P.R. (3d) 133 (F.C.T.D.). . . . . . . . . . . . . . . . . . . . . 196n46
Magder v. Brecks Sporting Goods Co. [1976]
1 S.C.R. 527 (S.C.C.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 76n20, 88n76
Magnotta Winery Corporation v. Vintners Quality
Alliance (2001), 17 C.P.R. (4th) 45 (F.C.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 22n71
Maison Cousin (1980) Inc. v. Cousins Submarines Inc.,
2006 FCA 409, 60 C.P.R (4th) 369 (F.C.A.) . . . . . . . . . . . . . . . . . . . . . . 99n51, 116n90
MAI Systems Corp. v. Banwell Computer Services Inc. (1992),
41 C.P.R. (3d), 57 (Ont. Ct. (Gen. Div.)) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 149n59
Manhattan Industries Inc. v. Princeton
Manufacturing Ltd. (1971), 4 C.P.R. (2d) 6 (F.C.T.D.) . . . . . . . . .49n7, 49n8, 49n13
Manitoba (A.G.) v. Metropolitan Stores (MTS) Ltd. (1987),
38 D.L.R (4th) 321 (S.C.C.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 147n47, 147n50
Mansell v. Star Printing & Publishing Co. of Toronto Ltd., [1937]
3 All E.R. 912, [1937] A.C. 872, [1937] 4 D.L.R. 1.
(Ont. -J.C.P.C.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 193n33
Maple Leaf Broadcasting Co. Ltd. v. Composers,
Authors and Publishers Association of Canada Ltd. (1953),
18 C.P.R. 1 (Ex. Ct.), [1954] S.C.R. 624, 21 C.P.R. 45 (S.C.C.) . . . . . . . . . . . . 353n40
Marc-Aurele v. Ducharme (1976), 34 C.P.R. (2d) 155 (Fed. T.D.) . . . . . . . . . . . 158n99
Marcus v. Quaker Oats Co. of Can./Cie Quaker Oats
du Canada (1985), 4 C.I.P.R. 212 (F.C.T.D.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . 75n11
Marineland Inc. v. Marine Wonderland & Animal Park Ltd.,
[1974] 2 F.C. 558, 16 C.P.R. (2d) 97 (F.C.T.D.) . . . . . . . . . . . . . . . . . . . . 42n15, 50n22
Marks & Clark v. Cristall U.S.A. Inc., (2007),
59 C.P.R. (4th) 475 (T.M.O.B.). . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 82n21
Marks & Clark v. Sparkles Photo Limited [2005] FC 1012 . . . . . . . . . . . . 51n26, 81n16
Marotta v. R. [1986] 2 F.C. 221 (F.C.T.D.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 233n36
Massie & Renwick Ltd. v. Underwriters Survey
Bureau Ltd. et al., [1940] S.C.R. 218, [1940] 1 D.L.R. 625 . . . . . . . . . 232n33, 241n72
408 Table of Cases

Massino De Beradinis v. Decaria Hair Studio, (1984),
2 C.P.R. (3d) 319 (T.M.O.B.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 109n29, 109n30
Mastini v. Bell Telephone Co. of Can. (1971),
18 D.L.R. (3d) 215 (Ex. Ct.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 154n69
Matol Biotech Labratoriees Ltd. v. Jurak Holdings Ltd.
(2008), 69 C.P.R (4th) 321 (F.C.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 28n14
Mattel, Inc. v. 3894207 Canada Inc. (2006)
SCC 22, 49 C.P.R (4th) 321 (S.C.C.) . . . . . . . . . . . . 10n2, 10n3, 10n4, 14n25, 35n67,
85n46, 94n6, 94n8, 95n9, 95n10, 95n12,
95n14, 95n15, 95n16, 95n17, 96n19,
96n25, 97n28, 97n29, 97n30, 98n39,
98n42, 99n45, 99n46, 99n48, 100n56,
100n57, 101n60, 101n61, 101n63, 101n64,
103n85, 116n87, 155n78, 155n80, 155n81
Mattel Canada Inc v. GTS Acquisitions Ltd (1998),
82 C.P.R. (3d) 57 (F.C.T.D.) . . . . . . . . . . . . . . . . . . . . . . . . . 145n34, 145n37, 385n105
Max Mara Fashion Group S.R.L. v. Provigo
Distribution Inc., (2005), 46 C.P.R. (4th) 112 (F.C.) . . . . . . . . .97n31, 99n49, 112n56
MCA Canada Ltd v. Gillberry & Hawke Advertising
Agency Ltd. (1976), 28 C.P.R, (2d) 52 (F.C.T.D.) . . . . . . . . . . . . . . . . . . . . . . . 270n26
McCurdy Enterprises Ltd. v. Shamrock Spring
Water Inc (2005) 45 C.P.R. (4th)
55 (Nfld and Lab. Sup. Ct. T.D.) . . . . . . . . . . . . . . . . . . . . . . . . . .74n3, 75n11, 142n20
McDonalds Corp. v. Coffee Hut Stores Ltd (1994),
55 C.P.R. (3d) 463, (1996), 68 C.P.R. (3d) 168 (F.C.A.) . . . . . . . . . . . . 98n43, 101n65
McDonalds Corp. v. Dep. A.G. Can. (1977),
31 C.P.R. (2d) 272 (F.C.T.D.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 43n26
McDonalds Corp. v. Silcorp. Ltd. (1989),
24 C.P.R. (3d) 207 (F.C.T.D.), 41 C.P.R. (3d) 67 (F.C.A.) . . . . . . . . . . . . . . . . . 98n43
McDonalds Corp. v. Yogi Yorgurt Ltd (1982),
66 C.P.R. (2d) 101 (F.C.T.D.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 98n43
M.C.I. Communications Corp. v. M.C.I. Multinet
Communications Inc. (1995), 61 C.P.R. (3d) 245 (T.M.O.B.) . . . . . . . . . . . . . . 78n29
McMullan Brothers v. Web Names Limited,
WIPO case no. D2004-0078 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 171n40
Mead Johnson & Co. v. G.D. Searle Co. (1967),
65 D.L.R. (2d) 56 (Ex. Ct.). . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 103n78
Mellor v. Australian Broadcasting Commission, [1940] A.C. 491, 2 All E.R. 20
(Austr.J.C.P.C.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 192n28, 223n13
Mentmore Manufacturing Company Limited et al v.
National Merchandising Manufacturing Company Inc. (1978),
89 D.L.R. (3d) 195, 40 C.P.R. (2d) 164 (F.C.A.) . . . . . . . . . . . . . . . . . . 144n27, 323n46
Merchandising Corporation of America Inc. v.
Harpbond Ltd. [1983] F.S.R. 32 (U.K.C.A.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . 193n33
Meubles Domanis v. Guccio Gucci S.P.A. (1992),
43 C.P.R. (3d) 372 (F.C.A.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 121n18, 136n47
Table of Cases 409

Michelin & Cie v. Astro Tire & Rubber Co. of Can. (1981),
67 C.P.R. (2d) 254 (T.M.O.B.); affirmed
69 C.P.R. (2d) 260 (F.C.T.D.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 703n80
Microsoft Corp. v. Microscience Corp. (2005),
41 C.P.R. (4th) 565 (C.I.R.A.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 177n70, 177n71
Microsoft Corporation v. 9038-3746 Quebec Inc. (2007),
57 C.P.R. (4th) 204 (F.C.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 279n8
Mihaljevic v. British Columbia (1988),
23 C.P.R. (3rd) 80 (F.C.T.D.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 23n78
Millar v. Taylor (1769), 4 Burr. 2401, 5 Bac. Abr. 598 . . . . . . . . . . . . . . . . . . . . . 247n15
Milliken & Company et al. v. Interface Flooring Systems
(Canada) Inc. (1994), 55 C.P.R. (3d) 30 (F.C.T.D.). . . . . . . . . . . . . . . . . . . . . . 380n78
Milliken & Company et al. v. Interface Flooring Systems
(Canada) Inc. (1998), 83 C.P.R. (3d) 470 (F.C.T.D.),
affirmed (2000) 5 C.P.R. (4th) 209 (F.C.A.) . . . . . . . . . . . . . . . . 195n43, 252n13, 370n6
Minnesota Educational Computing Corp. v. MECC
(Software) Inc. (1992), 41 C.P.R. (3d) 186 (F.C.T.D.). . . . . . . . . . . . . . . . . . . . 148n52
Minolta-QMS, Inc. v. Cheng-Lang Tsai, 2006 FC 1249 . . . . . . . . . . . . . . . . . . . . 112n51
Miranda Aluminum Inc. v. Miranda Windows & Doors Inc.
2009 FC 669 (F.C.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 28n14
Miss Universe Inc. v. Bohna (1994), 58 C.P.R. (3d) 381 (F.C.A.) . . . . . . . . . . . . . 96n21
Mister Transmission (International) Ltd. v. Registrar
of Trade-marks (1978), 42 C.P.R. (2d) 11 (F.C.T.D.) . . . . . . . . . . . . . . . 13n18, 77n26
Mitel Corporation v. Registrar of Trade-marks (1984),
79 C.P.R. (2d) 202 (F.C.T.D.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 31n38, 31n39
Modern Houseware Imports Inc v. International
Sources Ltd. (2000), 4 C.P.R (4th) 155 (F.C.T.D.) . . . . . . . . . . . . . . . . . . . . . . . 324n53
Molson Breweries v. John Labatt Ltd,. (2000),
5 C.P.R. (4th) 180 (F.C.A.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 16n42
Molson Canada v. Oland Breweries Ltd. (2002),
19 C.P.R. (4th) 201 (Ont. C.A.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 135n45
Molson Companies Ltd. v. Moosehead Breweries Ltd.
(1990) 32 C.P.R. (3d) 363 (F.C.T.D.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 51n24
Molson Cos. Ltd. v. Halter, (1976), 28 C.P.R. (2d)
158 (F.C.T.D.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 49n10, 50n16, 82n26, 84n34
Molson Cos. Ltd. v. John Labatt Ltd. (1981),
58 C.P.R. (2d) 157 (F.C.T.D.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .27n7, 34n56, 97n32
Montreal Locomotive Works, Ltd. v. Montreal [1947]
1 D. L. R. 161 (H.L.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 235n44
Montreal Trust Co. of Canada et al. v. Scotia
McLeod Inc. et al. (1994), 15 B.L.R. (2d.) 160 (Ont. Ct.,
(Gen. Div.)), (1995). 26 O.R. (3d) 481 (Ont. C.A.) . . . . . . . . . . . . . . . . . . . . . . 323n47
Montres Rolex S.A. v.Balshin (1992), 45 C.P.R. (3d) 174 (F.C.A.) . . . . . . . . . . . 140n12
Montres Rolex S.A. v. M.N.R. (1987), 17 C.P.R. (3d) 507 (F.C.T.D.). . . . . . . . . 140n12
Montykola Investments v. Robert D. Sutherland Architects (1996),
150 N.S.R. (2d) 281 (N.S.C.A.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 252n15
Moore Dry Kiln Co. Canada Ltd. v. U.S. Natural
Resources Inc. (1976), 30 C.P.R. (2d) 40 (F.C.A.) . . . . . . . . . . . . . . . . . . . . . . . . 15n30
410 Table of Cases

Morang and Co. v. LeSueur [1911] 45 S.C.R. 95 (S.C.C.) . . . . . . . . . . . . . . . . . . . 251n8
Moreau v. St. Vincent, [1950] Ex. C.R. 198, 12 C.P.R. 32,
[1950] 3 D.L.R. 713 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 182n16, 228n9
Morguard Investments Ltd. v. De Savoye [1990] 3 S.C.R. 1077 . . . . . . . . . . . . . 166n14
Motel 6 Inc. v. No. 6 Motel Ltd. (1981),
56 C.P.R. (2d) 44 (F.C.T.D.) . . . . . . . . . . . . . . . . . . . . . . .41n14, 42n16, 42n17, 50n22,
252n11, 252n12
Mougey v. Janzen, (2007), 62 C.P.R. (4th) 230 (T.M.O.B.) . . . . . . . . . . . . . . . . . 108n17
Mr Submarine Ltd. v. Amandista Investments Limited (1986),
11 C.P.R. (3d) 425 (F.C.T.D.), reversed (1987) 19 C.P.R.
(3d) 3 (F.C.A.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 95n16, 98n39, 155n80,
99n47, 99n51, 100n55
Mr. Transmission (International) Ltd. v. Reg. T.M. [1979]
1 F.C. 787 (F.C.T.D.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 63n24
Muffin House Inc. v. Muffin House Bakery Ltd. (1985),
2 C.P.R. (3d) 272 (T.M.O.B.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 108n23
Murjani International Ltd. v. Universal Impex Co. (1985),
5 C.P.R. (3d) 115 (T.M.O.B.), (1986), 12 C.P.R. (3d) 481 (F.C.T.D.) . . . . . . . . 28n17
Murray v. Imperial Chemical Industries Ltd. [1967] Ch. 1038 (U.K.Ch) . . . . . . 260n2
Muzak Corp. v. Composers, Authors and Publishers
Association of Canada Ltd. [1953] 2 S.C.R. 182 . . . . . . . . . 275n20, 275n23, 275n24
Nabisco Brands Ltd./Nabisco Brands Ltee v. Perfection
Foods Ltd. (1985), 8 C.I.P.R. 133 (T.M.O.B.),
12 C.P.R. (3d) 456 (F.C.T.D.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 111n44
Nabisco Brands Ltd. v. Perfection Foods Ltd. (1985),
7 C.P.R. (3d) 468 (T.M.O.B.), (1986), 12 C.P.R. (3d) 456 (F.C.T.D.) . . . . . . . . 31n40
National Breweries v. Paradis, [1925] S.C.R. 666,
[1925] 3 D.L.R. 875 (S.C.C.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 344n13
National Corn Growers Association v. Canada
(Canadian Import Tribunal) (1990),
74 D.LR. (4th) 449 (S.C.C.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 4n12
National Hockey League v. Pepsi-Cola Canada (1995),
59 C.P.R. (3d) 216 (B.C.C.A.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 119n9
Natures Path Foods Inc. v. Jiva Manufacturing &
Distributing Inc., (2007), 63 C.P.R. (4th) 64 (T.M.O.B.) . . . . . . . . . . . . . . . . . 108n19
Nature Co. v. Sci-Tech Educational Inc. (1992),
41 C.P.R. (3d) 359, (F.C.A.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 147n48
Nelson Burns & Co. Ltd. v. Gratham Industries Ltd.
(1981), 59 C.P.R. (2d) 113 (Ont. H.C.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 145n35
Netboard Inc. v. Avery Holdings Inc., (2005),
48 C.P.R. (4th) 241 (F.C.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 149n56
Netupsky, et al v. Dominion Bridge Co. Ltd (1971),
24 D.L.R. (3d) 484 (S.C.C.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 261n8, 262n9
Neudorf v. Nettwerk Productions Limited (1999)
3 C.P.R. (4th) 129 (B.C.S.C.). . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 239n63
Nightingale Interloc Ltd. v. Prodesign Ltd., (1984),
2 C.P.R. (3d) 535 (T.M.H.O.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 51n27
Table of Cases 411

Nintendo of America, Inc. v. Pokemonplanet.net
WIPO case no. D2001-1020 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 168n24
Nintendo of America Inc v. Coinex Video Games Inc. (1982),
69 C.P.R. (2d) 122 (F.C.A.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 149n58, 149n61
Nissan Canada Inc. v. BMW Canada Inc. (2007)
60 C.P.R. (4th) 181 (F.C.A.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 50n14
Nokia Corporation v. Phonestop, WIPO case no. D2001-1237 . . . . . . . . . . . . . 171n41
Noshery Ltd. v. Penthouse Motor Inn Ltd. (1969),
61 C.P.R 207 (Ont. H.C.). . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 160n111
Novopharm Ltd. v. Aktiebolaget Astra (1996),
68 C.P.R. (3d) 117 (F.C.T.D.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 115n79
Novopharm Ltd. v. Bayer Inc. (2000), 9 C.P.R. (4th) 304 (F.C.A.) . . . . . . . . . . . . 15n32
Novopharm Ltd v. Astra AB (2002),
21 C.P.R. (4th) 289 (F.C.A.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 109n31, 109n32
Novopharm Ltd v. Ciba-Geigy Canada Ltd (2001),
15 C.P.R. (4th) 327 (F.C.A.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 109n31, 109n32
Noxzema Chemical Co. v. Sheran Manufacturing (1968),
55 C.P.R. 147 (Ex. Ct.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 88n74
NRCC Statement of Royalties, Tariff No. 3 Use and supply of
Background Music (20032009), (2006), 52 C.P.R. (4th)
189 (Copyright Board). . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 205n22
N.W.L. Ltd. v. Woods, [1979] 1. W.L.R. 129 (H.L.) . . . . . . . . . . . . . . . . . . . . . . . 146n45
Office Cleaning Services v. Westminster Window and
General Cleaners (1946), 63 R.P.C. 39 (H.L.). . . . . . . . . . . . . . . . . . . . . . . . . . . 134n37
Oil Changer, Inc. v. Name Administration, Inc.,
WIPO case no. D2005-0530 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 168n27
Omega Engineering, Inc. v. Omega SA (2006),
56 C.P.R. (4th) 210 (F.C.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 85n47, 90n90
Ontario Assn. of Architects v. Assn. of Architectural
Technologists (2002), 19 C.P.R. (4th) 417 (F.C.A.)
reversing (2001) 9 C.P.R. (4th) 501 (F.C.T.D.) . . . . . . . . . . . . . . . . . . . . 22n67, 23n79
Ontario Association of Architects v. Association of
Architectural Technologists of Ontario [2003]
1 F.C 331, 19 C.P.R. (4th) 417 (F.C.A.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 22n71
Operation Dismantle Inc. v. Queen [1983]
1 F.C. 745 (F.C.A.) [1985] 1 S.C.R. 441 . . . . . . . . . . . . . . . . . . . . . . . . 247n16, 247n17,
329n79, 332n91
Orkin Exterminating Company v. Pestco Co. of Can.
(1984), 47 O.R. (2d) 265 (Ont. H.C.) (1985), 50 O.R.
(2d) 726 (5 C.P.R. (3d) 433) (Ont. C.A.) . . . . . . . . . . . . . . . . . . . . . . . . 129n12, 132n25
Oshawa Group Ltd. v. Registrar of Trade-marks (1980),
46 C.P.R. (2d) 145 (F.C.T.D.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 29n22, 30n30
Oshawa Holdings Ltd. v. Fjord Pacific Marine
Industries Ltd. (1980), 47 C.P.R. (2d) 86 (F.C.T.D.);
affirmed 36 N.R. 71 (F.C.A.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 99n47
Oxford Pendaflex Can. Ltd. v. Korr Marketing Ltd. (1982),
64 C.P.R. (2d) 1 (S.C.C.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 128n1, 129n11, 130n16
412
Table of Cases
Pankajkumar Patel v. Allos Therapeutics Inc., an unreported
decision of the UK High Court of Justice, Chancery Division,
dated June 13, 2008, 2008 W.L. 2442985 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 173n52
Parfums de Coeur, Ltd. v. Christopher Asta 2009 FC 21,
71 C.P.R. (4th) 82 (F.C.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 88n78
Park Avenue Furniture Corp. v. Wickes/ Simmons
Bedding Ltd., (1991), 37 C.P.R. (3d) 413 (F.C.A.) . . . . . . . . . . . . . . . . 102n73, 109n26
Parke, Davis & Co. v. Empire Laboratories Ltd.,
(1963), [1964] Ex. C.R. 399, 41 C.P.R. 121 (Ex. Ct.),
affirmed [1964] S.C.R., 43 C.P.R. 1 (S.C.C.) . . . . . . . . . . . . . . . 17n46, 86n57, 121n20,
121n16, 130n17, 134n35,
135n43, 135n44
Parker-Knoll Ltd. v. Registrar of Trade-marks (1977),
32 C.P.R. (2d) 148 (F.C.T.D.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 50n16
Parmalat Canada Inc. v. Sysco Corporation 2008 FC 1104,
69 C.P.R (4th) 349 (F.C.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 11n45, 108n18, 115n79
Paul Couvette Photographs v. The Ottawa Citizen (1985),
7 C.P.R. (3d) 552 (Ont. Prov. Ct.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 231n27
Peak Innovations Inc. v. Meadowland Flowers Ltd. 2009
FC 661 (F.C.T.D.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 332n93
Pearce v. Ove Arup Partnership Ltd. [1997]
2 W.L.R. 779 (Ch. D.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 272n5, 315n7
Peer International Corporation v. Termidor Music Publishers Ltd.
[2006] EWHC 2883 (U.K. Ch.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 253n21
Pepper King Ltd. v. Sunfresh Ltd (2000), 8 C.P.R. (4th)
485 (F.C.T.D.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 120n13
Pepsico Inc. v. Reg. T.M., [1976] 1 F.C. 202 (F.C.T.D.) . . . . . . . . . . . . . . . . . . . . 110n34
Performing Right Organization of Canada v. Lion dOr (1981)
Ltee (1987), 17 C.P.R. (3d) 542 (F.C.T.D.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 283n23
Performing Rights Organization of Canada Ltd. v. Canadian
Broadcasting Corporation (1986),
7 C.P.R.. (3d) 433 (F.C.A.) . . . . . . . . . . . . . . . . . . . . . . . . . . . 348n13, 353n37, 353n38
Pernod Ricard v. Molson Canada, (2007), 60 C.P.R.
(4th) 338 (T.M.O.B.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 133n63
Pfizer Canada Inc. v. Canada (1986), 10 C.P.R. (3d) 268 (F.C.T.D.) . . . . . . . . . . 245n8
Pfizer Inc. v. Canada (1999), 2 C.P.R. (4th) 298 (F.C.),
affirmed 250 N.R. 66 (F.C.A.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 4n10
Philco International Corp. v. Registrar of Trade-marks (1980),
48 C.P.R. (2d) 86 (F.C.T.D.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 38n76
Philip Morris Inc v. Imperial Tobacco Ltd. (1985),
7 C.P.R. (3d) 254 (F.C.T.D.) affirmed 17 C.P.R. (3d)
289 (F.C.A.), leave to appeal to the S.C.C. refused
19 C.P.R. (3rd) vi . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 14n28, 75n15
Phillip Morris Inc. v. Imperial Tobacco (1987),
13 C.P.R. (3d) 289 (F.C.T.D.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 81n8, 82n26
Phones4U Ltd. v. Phone4u.co.uk Internet Ltd., [2006]
EWCA Civ 244 (U.K.C.A.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .119n7, 128n7, 134n37
Table of Cases 413

Pierre Fabre Medicament v. Smithkline Beecham Corporation,
2004 FC 811 (F.C.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 96n23, 103n79
Pilkington Brothers (Can.) Ltd. v. International Molded
Plastics Inc. (1957), 27 C.P.R. 79 (Reg. T.M.) . . . . . . . . . . . . . . . . . . . . . . . . . . . 44n28
Pisticelli v. Liquor Control Board of Ontario (2001),
14 C.P.R. (4th) 181 (F.C.T.D.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 23n73
Pizza Pizza Ltd. v. Canada (Registrar of Trade-marks) (1989),
26 C.P.R. (3d) 355 (F.C.A.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 17n48, 97n34
Pizza Pizza Ltd v. Reg. TM. (1982), 67 C.P.R.
(2nd) 202 (F.C.T.D.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 31n35, 33n51
Planet Earth Productions Inc. v. Rowlands (1990),
30 C.P.R. (3d) 129 (Ont. Sup. Ct.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 230n25
Plough (Canada) Ltd. v. Aerosol Fillers Inc. (1979),
45 C.P.R. (2d) 194 (F.C.T.D.) affirmed 53 C.P.R. (2d) 62 (F.C.A.) . . . . .50n16, 80n2,
81n9, 81n12, 82n25, 82n26, 84n39
Poolman v. Eiffel Productions S.A. (1991), 35 C.P.R.
(3d) 384 (F.C.T.D.). . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 252n23
Porter v. Don the Beachcomber (1966), 48 C.P.R. 280 (Ex. Ct.) . . . . . . . . . . . . . . 50n22
Ports International Ltd. v. Reg. Trade-marks [1984]
2 F.C. 119 (F.C.T.D.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 49n11, 82n26
Possian v. Canadian Olympic Association (1996),
74 C.P.R. (3d) 509 (F.C.T.D.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 315n6
Potato Distributor v. Eastern Trust (1955), 35 C.B.R. 161 (P.E.I. C.A.) . . . . . . 256n30
Powell v. Head (1879), 12 Ch. D. 686 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 240n66
Prairie Maid Cereals Ltd. v. Christie, Brown & Co. (1965),
48 C.P.R. 289 (B.C.C.A.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 130n15
Preston v. 20th Century Fox Canada Ltd. (1990), 33 C.P.R. (3d)
242 (F.C.T.D.) affirmed (1993), 53 C.P.R. (3d) 407 (F.C.A.) . . . . . . . 189n15, 329n75
Prise de parole Inc. v. Gurin diteur Lte, (1995) 66 C.P.R. (3d)
257 (F.C.T.D.), appeal dismissed 73 C.P.R. (3d) 557 (F.C.A.) . . . . . . . 214n4, 333n99
Prism Hospital Software Inc. v. H.M.R.I.. (1994), 57 C.P.R.
(3d) 129 (B.C.S.C.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 333n96
Pro Arts, Inc. v. Campus Crafts Holdings Ltd. (1980),
50 C.P.R. (2d) 230 (Ont. H.C.) . . . . . . . . . . . . . . . . . . . . . . . . 230n22, 230n24, 231n28
Pro-C Ltd. v. Computer City, Inc. (2000), 7 C.P.R. (4th) 193
(Ont. Sup. Ct.), reversed on other grounds, 55 O.R. (3d) 577,
14 C.P.R. (4th) 441 (Ont. C.A.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 165n13, 167n19
Procter & Gamble Pharmaceuticals Canada, Inv. v.
Novopharm Ltd. (1996), 68 C.P.R. (3d) 461 (F.C.T.C.) . . . . . . . . . . . . . . . . . . . 245n8
Procter & Gamble v. Bristol-Myers Canada Ltd. (1978),
39 C.P.R. (2d) 145 (F.C.T.D.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 323n44
Proctor & Gamble Inc. v. Colgate-Palmolive Canada Inc,
[2007] T.M.O.B. No. 1 (T.M.O.B.). . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 17n48
Productions Avanti CinVido Inc. v. Favreau (1999),
1 C.P.R. (4th) 129 (Quebec C.A.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 292n18
Profekta International Inc. v. Lee (1997),
75 C.P.R. (3d) 369 (F.C.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 333n105, 340n1
414
Table of Cases
Promafil Canada Ltee. v. Munsingwear Inc. (1993),
44 C.P.R. (3d) 59 (F.C.A.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .51n26, 81n16, 90n89
Promotions C.D. Inc. v. Sim & McBurney 2008 FC 1071 (F.C.). . . . . . . . . . . . . . 84n38
Pro Swing Inc. v. Elta Golf Inc., [2006] 2 S.C.R 612 (S.C.C.). . . . . . . . . . . . . . . . . 139n3
Pulse Microsystems Ltd. v. SafeSoft Systems Inc. (1996),
67 C.P.R. (3d) 202 (Man. C.A.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 149n59
Pyrrha Design Inc. v. 623735 Saskatchewan Ltd (2004),
30 C.P.R. (4th) 310 (F.C.), 2004 FCA 423 (F.C.A.) . . . . . . . . . . . . . . . . . . . . . . 196n47
Queen v. James Lorimer (1984), 77 C.P.R. (2d) 262 (F.C.A.) . . . . . . . . . . . . . . . 329n78
R. v. Adelphi Book Store Limited (1972), 7 C.P.R. (2d) 166
(Sask. C.A.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 344n16
R. v. B.E.S.T. Plating Shoppe Ltd. (1987), 59 O.R. (2d) 145
(Ont. C.A.). . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 157n88
R. v. Bellman [1938] 3 D.L.R. 548 (N.B.C.A.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . 247n13
R. v. Eldorado Nuclear Ltd.,[1983] 2 S.C.R .551 . . . . . . . . . . . . . . . . . . . . . . . . . . 248n21
R. v. Ghnaim (1988), 28 C.P.R. (3d) 463 (Alberta Prov. Ct.),
affirmed in part (1989) 32 C.P.R. (3d) 487 (Alberta C.A.) . . . . . . . . 343n11, 343n12,
342n9
R. v. J.P.M. (1996), 67 C.P.R. (3d) 152 (N.S.C.A.) . . . . . . . . . . . . . . . . . . . . . . . . . . 341n7
R. v. James Lorimer & Co. Ltd. (1984), 77 C.P.R. (2d) 262 (F.C.A.). . . . . 245n6, 245n7
R. v. Laurier Office Mart, Inc. (1994), 58 C.P.R. (3d) 403
(Ont. Ct. Pro. Div.), affirmed (1995), 63 C.P.R. (3d) 229
(Ont. Ct. Gen. Div.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 269n21, 341n6, 342n9,
342n10, 343n11
R. v. Sansregret [1985], 1 S.C.R. 570 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 340n4
R. v. Sault Ste. Marie [1978] 2 S.C.R 1299,
85 D.L.R. (3d) 161 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 340n1, 340n3, 340n5, 344n14
R. v. Throux [1993], 2 S.C.R. 5 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 340n4
R. v. Thomas Fuller Construction Co (1958) Ltd. [1980]
1 S.C.R. 695 (S.C.C.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 315n2
Randall Homes Ltd. v. Harwood Homes Ltd. (1987),
17 C.P.R. (3d) 372 (Man. Q.B.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 330nn81
Ratiopharm Inc. v. Laboratoiries Riva Inc., (2006),
51 C.P.R. (4th) 415 (F.C.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 97n32, 101n70
Ray Plastics Ltd. v. Canadian Tire Corporation, Limited
(1995), 62 C.P.R. (3d) 247 (Ont. Gen. Div.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . 143n25
Ray Plastics Ltd. v. Dustbane Products Ltd. (1990),
33 C.P.R. (3d) 219 (H.C.J.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 130n13
Realestate World Services v. Realcorp Inc., (1993),
48 C.P.R. (3d) 397 (T.M.O.B.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 112n54
Reckitt & Colman Products Ltd. v. Borden Inc. [1990]
1 E.R. LL 873 (H.L.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 130n13, 130n17, 156n82
Reg. T.M. v. Cie Int. pour LInformatique Cii Honeywell
Bull S.A. (1985), 4 C.P.R. (3d) 523 (F.C.A.) . . . . . . . . . . . . . . . . . . . . . . . 51n27, 81n15
Registrar of Trade-marks v. Aciers (1978), 40 C.P.R. (2d)
28 (F.C.A.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 37n74
Table of Cases 415

Registrar of Trade-marks v. Canadian Olympic Association
(1982), 67 C.P.R. (2d) 59 (F.C.A.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 22n66
Registrar of Trade-marks v. Coles Bookstores Ltd., [1974]
S.C.R. 438 (S.C.C.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 27n3
Registrar of Trade Marks v. Frank J. Provenzano (1978),
40 C.P.R. (2d) 288 (F.C.A.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 33n48
Registrar of Trade-marks v. G.A. Hardie & Co., [1949]
S.C.R. 483 (S.C.C.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 31n38, 35n66
Registrar of Trade-marks v. Harris Knitting Mills Ltd. (1985),
4 C.P.R. (3d) 488 (F.C.A.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 81n14
Remington Rand Corp. v. Philips Electronics N.V. (1995),
64 C.P.R. (3rd) 467, leave to appeal to the S.C.C. dismissed
67 C.P.R. (3rd) vi (S.C.C.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 16n44
Remo Imports Ltd. v. Jaguar Cars Limited, 2007 FCA 258,
60 C.P.R. (4th) 130 (F.C.A.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 88n78, 89n79, 89n81,
89n82, 91n93, 122n26,
129n9, 131n24, 135n45
Renwal Mfg. Co. Ltd. v. Reliable Toy Co. Ltd. et al.
[1949] Ex. C.R. 188, 9 C.P.R. 67 (Ex. Ct.) . . . . . . . . . . . . . . . 373n24, 375n41, 375n43
Research in Motion Ltd v. Atari Inc, (2007),
61 C.P.R. (4th) 193 (Ont. S.C.J.). . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 332n92
Rex v. Bellman, [1938] 3 D.L.R. 548, 13 M.P.R. 37, 70 C.C.C. 171 . . . . . . . . . . . 247n14
R. Griggs Group v. 359603 Canada Inc (2005),
47 C.P.R. (4th) 215 (T.M.O.B.). . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 108n18
Ribbons (Montreal) Ltd. v. Belding Corticelli Ltd.,
[1961] Ex. C.R. 388, 36 C.P.R. 65 (Ex. Ct.) . . . . . . . . . . . . . . 374n36, 374n37, 375n40
Richfield Oil Corp. v. Richfield Oil Corp. of Can. Ltd.,
[1955] Ex. C.R. 17 (Ex. Ct.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 133n32
Rickless v. United Artists Corporation, [1988]
Q.B. 40 (U.K.C.A.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 254n25
Ridout & Maybee LLP v. Omega SA. 2004 FC 1703 (F.C.) . . . . . . . . . . . . . . . . . . 83n27
Ritchie v. Sawmill Creek Golf & Country Club (2003),
27 C.P.R. (4th) 220 (Ont. S.C. J.), 35 C.P.R. (4th) 163
(Ont. Div. Ct.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 251n11, 262n11
RJR-Macdonald Inc. v. Canada (Attorney General)
[1994] 1 S.C.R. 311, 54 C.P.R. (3d) 114 (S.C.C.) . . . . . . . . . . . . . . . . 146n40, 146n45,
147n46, 147n50
Robert C. Wian Enterprises Inc. v. Mady (1965),
46 C.P.R. 147 (Ex. Ct.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 35n64, 87n69
Robert D. Sutherland Architectss Ltd. v. Montykola
Investments Inc. (1996), 73 C.P.R. (3d) 269 (N.S. C.A.) . . . . . . . . . . . . . . . . . . 262n9
Robert Simpson Co. Ltd. v. Simpsons-in-the-Strand Ltd. (1980),
49 C.P.R. (2d) 16 (Ont. H.C.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 143n26
Robertson v. The Thompson Corporation (1999),
43 O.R 161 (Ont Ct. (Gen. Div.): (2001),
15 C.P.R. (4th) 147 (Ont. Sup. Ct. of Justice);
(2004) 34 C.P.R. (4th) 161 (Ont. C.A.); (2006)
52 C.P.R. (4th) 417 (S.C.C.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 321n29
416 Table of Cases

Robertson v. Thompson Corporation (2006),
52 C.P.R. (4th) 417 (S.C.C.) . . . . . . . . . . . . . . . . . . 236n52, 237n57, 237n56, 236n50,
261n4, 261n7
Roberts v. Canada, [1989] 1 S.C.R. 322 (S.C.C.) . . . . . . . . . . . . . . . . . . . . . . . . . . . 315n4
Robin Ray v. Classic F.M. P.L.C. [1998] F.S.R. 622 (Ch. D) . . . . . . . . . . . . . . . . 238n61
Rogers, Bereskin & Parr v. Reg. T.M. (1986), 9 C.P.R.
(3d) 260 (F.C.T.D.). . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .80n5, 80n6, 81n15
Rolls-Royce plc v. Fitzwilliam (2002), 19 C.P.R. (4th) 1 (F.C.T.D.) . . . . . . . . . . 178n73
Rookes v. Bernard, [1964] 1 All E.R. 367 (H.L.) . . . . . . . . . . . . . . . . . . . . . . . . . 333n101
Rothbury International Inc. v. Canada (Minister
of Industry) (2004), 36 C.P.R. (4th) 203 (F.C.) . . . . . . . . . . . 370n7, 373n26, 373n27,
377n58
Royal Bank of Canada v. Body Blue Inc. (2008),
42 C.B.R (5th) 125 (Ont. S.C.J.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 256n31
Royal Bank of Canada v. Canadian Imperial Bank of
Commerce (1994), 57 C.P.R. (3d) 483 (F.C.T.D.) . . . . . . . . . . . . . . . . . . . . 11415n78
Royal Doulton Tableware Ltd. v. Cassidys Ltd. (1984),
1 C.P.R. (3d) 214, [1986] F.C. 357 (F.C.T.D.) . . . . . . . . . . . . . . .55n7, 85n48, 332n91
Royal Roads University v. Canada (2003),
27 C.P.R. (4th) 240 (F.C.T.D.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 24n82
Royal Winnipeg Ballet v. Minister of National Revenue,
2006 FCA 87 (F.C.A.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 234n43
Rucker Co. v. Gavels Vulcanizing Ltd. (1985),
7 C.P.R. (3d) 294 (F.C.T.D.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 223n16
Rudder v. Microsoft Corp (1999), 2 C.P.R. (4th)
474 (Ont. Sup. Ct); Kanitz v. Rogers Cable Inc. (2002),
58 O.R. (3d) 299 (Ont. Sup. Ct.). . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 167n20
Saccone & Speed Ltd. v. Registrar of Trade-marks (1982)
67 C.P.R. (2d) 119 (F.C.T.D.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 51n26, 81n16
Sadhu Singh Hamdard Trust v. Canada
(Registrar of Trade-marks (2006)), 47 C.P.R. (4th) 373 (F.C.),
affirmed on appeal 2007 FCA 355, 62 C.P.R (4th) 245 (F.C.A.) . . . . . . . 68n4, 106n6
Samsonite Canada Inc. v. Costco Wholesale Corporation (1993),
48 C.P.R. (3d) 5 (F.C.T.D.); (1995) 61 C.P.R. (3d) 293 . . . . . . . . . . . . . . . . . . . 269n22
Sapodilla Co. v. Bristol-Myers (1974), 15 C.P.R. 152 (T.M.O.B.); . . . . . . . . . . . 108n17
Saskatoon Star Phoenix Group Inc. v. Noton (2001), 12 C.P.R.
(4th) 4 (Sask. Q. B.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 178n73
Saxon Industries Inc. v. Aldo Ippolito & Co. (1982), 66 C.P.R.
(2d) 79 (F.C.T.D.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 88n74
Schering Can. Inc. v. Pentagone Laboratories Ltd. (1985),
6 C.P.R. (3d) 261 (F.C.T.D.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 144n28
Schmeiser et al. v. Monsanto Canada Inc., (2004), 31 C.P.R.
(4th) 161 (S.C.C.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 158n101, 159n105
S.C. Johnson & Son, Inc. v. Reg. T.M. (1981), 55 C.P.R. (2d) 34
(F.C.T.D.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 82n17, 82n18
S.C. Johnson & Son, Ltd. v. Marketing International Ltd. [1980]
1 S.C.R. 99 (S.C.C.). . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 28n18, 33n49
Table of Cases 417

Scotch Whiskey Association v. Glenora Distillers
International Ltd. 2008 FC 425, 65 C.P.R (4th) 441,
reversed 2009 FCA 16, 76 C.P.R (4th) 1 (F.C.A.) . . . . . . . . . . . .20n58, 21n60, 21n61
SC Prodal 94 SR v. Spirits International B/V. (2009)
73 C.P.R. (4th) 439 (F.C.A.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 86n61
Sealy Sleep Products Ltd. v. Simpson-Sears Ltd. (1960),
33 C.P.R. 129 (Ex. Ct.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 102n74
See You In-Canadian Athletes Fund Corp. v. Canadian Olympic
Committee (2007), 57 C.P.R. (4th) 287 (F.C.), appeal
dismissed 2008 FCA 124, 65 C.P.R (4th ) 421 (F.C.A.) . . . . . . .22n70, 23n26, 23n73
Seiko Time Can. Ltd. v. Consumers Distributing Co. (1980), 50 C.P.R.
(2d) 147 (Ont. H.C.), affirmed 6 C.P.R.(201) 222 N
reversed [1984] 1 S.C.R. 583 1 C.P.R. (3d) 1 (S.C.C.) . . . . . 122n24, 122n25, 123n29,
128n2, 136n51, 136n48
Sequa Chemicals Inc. v. United Colour and Chemicals Ltd.
(1992), 44 C.P.R. (3d) 371 (F.C.T.D.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 87n65
Shell Canada Limited v. P.T. Sari Inco Food Corporation,
2008 FCA 279, 68 C.P.R. (4th) 390 (F.C.A.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 33n52
Shell International Petroleum Company Limited v. Alfred Donovan
WIPO case no. D2005-0538 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 168n24
Shredded Wheat Co. v. Kellogg Co. of Can. Ltd., [1936]
O.R. 613 (Ont. C.A.); affirmed [1938] 2 D.L.R. 145 (P.C.) . . . . . . . . . . . . . . . . . 139n2
Sim & McBurney v. Majdell Manufacturing Co. (1986),
11 C.P.R. (3d) 306 (F.C.T.D.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 82n17
Sim & McBurney v. Netlon Ltd. (2004), 41 C.P.R. (4th) 455 (T.M.O.B.) . . . . . . 82n21
Simmons v. Heath Laundry Co. [1910] 1 K.B. 543 (U.K.C.A.) . . . . . . . 233n37, 234n39
Simpson Strong-Tie Company, Inc. v. Peak Innovations
2008 FC 52 (F.C.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 115n83
Six Continents Hotels, Inc. v. Virgin Enterprises Ltd. (2005),
42 C.P.R. (4th) 364 (C.I.R.A.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 174n56
Slim Line Design Ltd. v. Pacific Northwest Manufacturing Inc. (1999),
86 C.P.R. (3d) 498 (B.C.S.C.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 385n103
Slumber-Magic Adjustable Bed Co. v. Sleep-King
Adjustable Bed Co.(1984), 3 C.P.R. (3d) 81 (B.C.S.C.) . . . . . . . . . . . 183n23, 237n56,
325n55, 333n98
Smart & Biggar v. Attorney General of Canada, 2006
FC 1542 (F.C.), 58 C.P.R (4th) 42, 2008 F.C.A. 129,
65 C.P.R. (4th) 303 (F.C.A.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 83n29
Smith & Nephew Inc. v. Glen Oak Inc. (1996), 68 C.P.R. (3d)
153 (F.C.A.) leave to appeal to S.C.C. refused [1996] S.C.C.A.
No. 433 (S.C.C.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 122n22
Re Smith Kline & French Can. Ltd., Application for T.M. for
Circle Design (1984), 10 C.P.R. (3d) 246; . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 15n32
Smith, Kline & French v. Reg. T.M. No. 2 (1987),
9 F.T.R. 129 (F.C.T.D.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 15n31
Smith Kline & French Can. Ltd. v. Novopharm Ltd. (1982),
62 C.P.R. (2d) 36 (Ont. H.C.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 156n83
418 Table of Cases

Smith Kline and French Can. Ltd. v. Apotex Inc. (1986),
12 C.P.R. (3d) 479 (Ont. H.C.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 130n15
Smithkline Beecham Corporation v. Pierre Fabre Medicament (2001),
11 C.P.R. (4th) 1 (F.C.A.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 96n23
Snow v. The Eaton Centre (1982), 70 C.P.R. (2d) 105 (Ont.H.C.J.) . . . . . . . . . . . 215n5
Sociedad Agricola Teresa Ltda v. Vina Leyda Limitada,
2007 FC 1301 (F.C.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 32n44
Re Societe des Auteurs, Recherchistes, Documentalistes
et Compositeurs designation application (1999),
86 C.P.R. (3d) 481 (Copyright Board) . . . . . . . . . . . . . . . . . . . . . . . . . . 361n88, 362n95
Society of Composers, Authors and Music Publishers of Canada v.
Canadian Association of Internet Providers,
2004 SCC 45, 32 C.P.R. (4th) 1 (S.C.C.) . . . . . . . . . . . . . . . . . . . . . . . 166n14, 166n15,
116n16, 166n17
Society of Composers, Authors and Music Publishers
of Canada v. Maple Leaf Sports & Entertainment Ltd (2005),
40 C.P.R. (4th) 28 (F.C.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 355n50
Sommer Allibert (UK) Limited v. Flair Plastics Limited [1987]
R.P.C. 599 (U.K.C.A.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 384n95
Re Song Corp. (2002), 19 C.P.R. (4th) 235 (Ont. Sup. Ct. of Justice) . . . . . . . . . 258n41
Spalding v. Gamage (1915), 32 R.P.C. 273 (H.L.) . . . . . . . . . . . . . . . . . . 136n48, 136n49
Sparling v. Quebec [1988] 2 S.C.R. 1015 (S.C.C.) . . . . . . . . . . . . . . . . . . . . . . . . . 248n22
Specialty Sprts Ltd. v. Kimpex International Inc. (1997),
72 C.P.R. (3d) 538 (F.C.T.D.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 196n48
Spiros Pizza & Spaghetti House Ltd. v. Riveria Pizza Inc. (2005),
39 C.P.R. (4th) 527 (Alberta Q.B.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 77n27
Stadium Corporation of Ontario Limited v. Wagon-Wheel
Concessions Ltd.[1989] 3 F.C. 132 (F.C.T.D.) . . . . . . . . . . . . . . . . . . . . . . . . . . . 23n74
Staffordshire Potteries Ltd. v. Registrar of Trade-marks
(1976), 26 C.P.R. (2d) 134 (F.C.T.D.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 32n41
Standard Coil Products (Canada) Ltd. v. Standard Radio Corp.
(1971), 1 C.P.R. (2d) 155 (F.C.T.D.), affirmed (1976), 26 C.P.R.
(2d) 288 (F.C.A.). . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 35n60
Standard Industries Ltd. v. Rosen [1955] 4 D.L.R. 363, 24 C.P.R. 41
(Ont. H.C.J.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 134n34, 333n97
Standard Oil Co. v. Registrar of Trade-marks (1968),
55 C.P.R. 49 (Ex. Ct.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 27n4
Steinberg v. Belgium Glove & Hosiery Co. of Canada Ltd. (1953),
19 C.P.R. 56 (Ex. Ct ) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 135n42
Stephen Cleeve v. Domains by Proxy Inc./Consumer Protection,
WIPO case no. D2007-731 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 169n30, 169n31
Stevenson Jordan & Harrison Ltd. v. Macdonald & Evans,
[1952] 1 T.L.R. 101, 69 R.P.C. 10 (U.K.C.A.) . . . . . . . . . . . . . . . . . . . 233n37, 234n41,
234n42, 235n45
Stevens v. Robert Simpson Co. Ltd. et al. (1964), 41 C.P.R. 204
(Ont. C.A.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 182n16, 228n9
Table of Cases 419

Re Stewart House Publishing Inc (2003), 24 C.P.R. (4th)
488 (Ont. Sup. Ct of Justice) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 122n21, 122n23
Stuart v. Barrett [1994] E.M.L.R. 448 (Ch. D) . . . . . . . . . . . . . . . . . . . . . . . . . . . . 238n61
Sun Microsystems, Inc. v. Talmex Management Services
NAF case no. FA0206000114621 (August, 2002) . . . . . . . . . . . . . . . . 169n32, 170n37
Sunny Crunch Foods Ltd. v. Reg. T.M. (1982), 63 C.P.R.
(2d) 201 (F.C.T.D.). . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 64n28
Sunshine Biscuits Inc. v. Corporate Foods Ltd. (1982),
61 C.P.R. (2d) 53 (F.C.T.D.), . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 9798n35
Sun World International Inc. v. Parmalat Dairy & Bakery Inc. (2007),
60 C.P.R. (4th) 291, 2007 FC 641 (F.C.) (Prothonotary) affirmed
(2007) 60 C.P.R. (4th) 300, 2007 FC 861 (F.C.) . . . . . . . . . . . . . . . . . . . . . . . . . 116n86
Sutherland v. V2 Music Ltd., [2002] EMLR 568 (U.K. Ch Div.), . . . . . . . . . . . . . 128n6
Syntex Inc. v. Apotex Inc. (1984), 1 C.P.R. (3d) 145 (F.C.A.);
reversing 69 C.P.R. (2d) 264 (F.C.T.D.) . . . . . . . . . . . . . . . . . . . . . . . . 124n30, 146n45
Syntex Inc. v. Novopharm Limited,(1991), 36 C.P.R (3d) 129
(F.C.A.), leave to appeal to the S.C.C. refused [1991] 3 S.C.R. xi . . . . . . . . . . 147n48
Taft Broadcasting Co. v. Rogers Cable T. V. Ltd. (1974),
18 C.P.R. (2d) 94 (Fed. T.D.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 143n25
Takara Co. Ltd. v. Gamex International Inc. (1989),
28 C.P.R. (3d) 575 (F.C.T.D.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 316n11
Tate v. Fullbrook, [1908] 1 K.B. 821 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 189n13
Tate v. Thomas, [1921] 1 Ch. 503 (U.K.C.A.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . 190n22
Tedesco v. Bosa (1992), 45 C.P.R. (3d) 82 (Ont. Ct. Gen. Div.) . . . . . . . . . . . . . . 251n8
Teledyne Industries Inc. v. Lido Industrial Products Ltd. (1982),
68 C.P.R. (2d) 204 (F.C.T.D.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 159n108
Telemedia v. 624654 Ont. Ltd. (1987), 17 C.P.R. (3d)
355 and 570 (F.C.T.D.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 144n32
Tl Mtropole Inc. v. Bishop [1990] 2 S.C.R. 467 . . . . . . . . . . . . . . . . . . . . . . . . 208n40
Telewizja Polska Canada Inc. v. Radiopol Inc. 2006 FC 584,
52 C.P.R. (4th) 445 (F.C.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 336n111, 336n113
Telstra v. Nuclear Marshmallows, WIPO case no. D2000-0003 . . . . . . . . . . . . . 171n42
Tesco Stores Limited v. Elogicom, [2006] EWHC 403 (Ch. D.) . . . . . . . . . . . . . 165n13
T.G. Bright & Co. v. Andres Wines (1986),
12 C.P.R. (3d) 1 (F.C.A.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 64n28, 64n31
Thaigem Global Marketing Limited v. Sanchai Aree,
WIPO case no. D2002-0358 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 168n26
Therrien v. Schola Inc. [1982] 1 F.C. D-864 (F.C.T.D.) . . . . . . . . . . . . . . . . . . . . 309n64
Thomas & Betts, Ltd. v. Panduit Corp. (2000),
4 C.P.R. (4th) 498 (F.C.A.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 16n44, 135n43
Thomas J. Lipton Ltd. v. Salada Foods Ltd., (No. 3), (1979),
45 C.P.R. (2d) 157 (F.C.T.D.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . .30n29, 31n37, 32n46
Thomas Management Ltd. v. Alberta (Minister of
Environmental Protection) (2006), 397 A.R. 339, 2006
ABCA 303 (Alberta C.A.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 333n102
420 Table of Cases

Thomson Research Assoc. Ltd. v. Registrar of Trade-marks (1982),
67 C.P.R. (2d) 205 (F.C.T.D.); affirmed (1983),
71 C.P.R. (2d) 287 (F. C.A.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 33n53
Those Characters From Cleveland Inc. v. User51235,
WIPO case no. D2006-0950 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 170n38
Thrifty, Inc. v. Malaker (2006), 50 C.P.R. (4th) 459 (C.I.R.A.) . . . . . . . 175n65, 177n70
Thurston Hayes (Hays) Developments Ltd. v. Horn Abbot Ltd.
(1985), 5 C.P.R. (3d) 124 (Fed. C.A.); reversing in part 4 C.P.R.
(3d) 376 (Fed. T.D.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 159n110
Ticketmaster Corp. v. Brown, WIPO case no. D2001-0716 . . . . . . . . . . . . . . . . 169n32
Ticketmaster Corp. v. Woofer Smith WIPO case No. D2003-0346 . . . . . . . . . . 170n36
Titan Linkabit Corp. v. S.E.E. Electronic Engineering Inc. (1992),
44 C.P.R. (3d) 469 (F.C.T.D.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 315n6
Tolofson v. Jensen [1994] 3 S.C.R. 1022 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 166n15
Tommy Hilfiger Licensing Inc. v. International Clothiers Inc. (2003),
29 C.P.R. (4th) 39 (F.C.T.D.), reversed (2004),
32 C.P.R. (4th) 289 (F.C.A.) . . . . . . . . . . . . . . . . . . . . . . . . . . 120n14, 121n20, 123n28
Tommy Hilfiger Licensing Inc. v. Produits de Qualite I.M.D.
Inc. (2005), 37 C.P.R. (4th) 1 (F.C.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 90n90, 120n14
Toronto Carton Co. Ltd. v. Manchester McGregor Ltd.,
[1935] O.R. 144, [1935] 2 D.L.R. 94. (Ont. H.C.) . . . . . . . . . . . . . . . . 229n16, 230n22
Toronto-Dominion Bank v. TM Watchdog, (2005), 47 C.P.R.
(4th) 171 (C.I.R.A.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 172n49
Tradition Fine Foods Ltd. v. Groupe Traditionall Inc. (2006),
51 C.P.R. (4th) 342 (F.C.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 97n32, 116n89
Tradition Fine Foods Ltd. v. The Oshawa Group Limited (2005),
44 C.P.R. (4th) 81 (F.C.A.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 118n1
Turban Brand Products Ltd. v. Khan (1980),
52 C.P.R. (2d) 71 (F.C.T.D.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 90n86
Turbo Resources Ltd. v. Petro-Can Ltd. (1989),
24 C.P.R. (3d) 1 (Fed. C.A.) . . . . . . . . . . . . . . . . . . . . . . . . . . 146n42, 146n43, 148n51
2 For 1 Subs Ltd. v. Ventresca, (2006), 48 C.P.R.
(4th) 311 (Ont. S.C.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 131n19
Tyburn Productions Ltd v. Conan Doyle [1991] Ch. 75 (U.K.Ch. D.) . . . . . . . . 272n5
U&R Tax Services Ltd. v. H&R Block Canada Inc. (1995),
62 C.P.R. (3d) 257 (F.C.T.D.) . . . . . . . . . . . . . . . . . . . . . . . . 325n55, 333n96, 336n110
Ulextra Inc. v. Pronto Luce Inc. 2004 FC 590 (F.C.) . . . . . . . . . . . . . . . . . . . . . . . 381n86
Ultravite Laboratories Ltd. v. Whitehall Laboratories Ltd., [1964]
Ex. C.R. 913 (Ex. Ct.) reversed [1965] S.C.R. 734 (S.C.C.) . . . . . . . . . . . . . . . . 103n75
Underwriters Survey Bureau Ltd. et al. v. Massie & Renwick
Ltd. [1938] Ex. C.R. 103, [1940] S.C.R. 218 (S.C.C.) . . . . . . . . . . . . . . 227n1, 333n104
Underwriters Survey Bureau Ltd. v. Massie & Renwick Ltd.,
[1942] Ex. C.R. 1 (Ex. Ct) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 332n94
Uniformes Town & Country Inc. v. Labrie (1992),
44 C.P.R. (3d) 514 (F.C.A.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 375n40
Unilever Canada Inc. v. Superior Quality Foods, Inc.,
(2007) 62 C.P.R. (4th) 75 (T.M.O.B.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 31n39
Table of Cases 421

UniNet Technologies Inc. v. Communication Services Inc. (2005),
39 C.P.R. (4th) 1 (B.C.C.A.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 167n18
Uniroyal Engineered Products, Inc. v. Nauga Network Services,
WIPO case no. D2000-0503 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 168n25
Unisys Corp. v. Northwood Technologies Inc. (2002), 29 C.P.R.
(4th) 115 (T.M.O.B.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 99n50
United Artists Corp. v. Pink Panther Beauty Corp.
(1998), 80 C.P.R. (3d) 247 (F.C.A.) . . . . . . . . . . . . . .99n47, 101n66, 101n69, 101n70,
102n72, 102n75, 112n57
United Food and Commercial Workers International
Union v. Sharyn Sigurdur (2005) BCSC 1904 (B.C.S.C.) . . . . . . . . . . . . . . . . . 178n73
United Grain Growers Ltd. v. Lang Michener (2001), 12 C.P.R.
(4th) 89 (F.C.A.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 81n12, 84n33
Unitel Communications Inc. v. Bell Canada (1995), 61 C.P.R. (3d)
12 (F.C.T.D.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 91n93
Unitel International Inc. v. Canada (Registrar of Trade-marks) (1999),
86 C.P.R. (3d) 467 (F.C.T.D.) affirmed (2000),
9 C.P.R. (4th) 127 (F.C.A.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 63n23
University of London Press Ltd. v. University Tutorial
Press Ltd. [1916] 2 Ch. 601 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 181n10, 186n2, 186n4,
234n38, 293n23
UPL Group Ltd. v. DUX Engineers Ltd. [1989]
3 N.Z.L.R. 135 (N.Z.C.A.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 384n94
Valles Steak House v. Tessier (1980), 49 C.P.R. (2d)
218 (F.C.T.D.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 41n14, 42n18
Veuve Clicquot Ponsardin Maison Fonee en 1772 v.
Boutiques Cliquot Lte (2000), 7 C.P.R. (4th)
189 (F.C.T.D.), (2004), 35 C.P.R. (4th) 1 (F.C.A.),
[2006], 1 S.C.R 824, 49 C.P.R. (4th) 401 (S.C.C.) . . . . . . . . . . . . 94n6, 95n11, 96n19,
96n20, 98n39, 100n57, 100n58,
100n59, 103n81
Veuve Clicquot Ponsardin v. Boutiques Cliquot [2006]
1 S.C.R 824, 49 C.P.R. (4th) 401 (S.C.C.) . . . . . . . . . . . . . . . 124n32, 124n33, 124n34,
125n37, 125n38, 135n45
Viacom International Inc. v. Harvey Ross Enterprises, Ltd. (2003),
29 C.P.R (4th) 243 (C.I.R.A.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 176n69
Vibe Ventures LLC v. 3681441 Canada Inc. 2005 FC 1650,
45 C.P.R. (4th) 18 (F.C.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 102n72
Viceroy Homes Ltd. v. Ventry Homes Inc. (1991), 34 C.P.R.
(3d) 385 (Ont.Ct.)(Gen. Div.), (1996), 69 C.P.R. (3d) 459 (Ont. C.A.) . . . . . 182n13
Vidotron Lte. v. Industries Microlec Produits lectroniques Inc. (1992),
45 C.P.R. (3d) 1. (S.C.C.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 157n89
Vigneux et al. v. Canadian Performing Right Society Ltd. [1942]
Ex. C.R. 129, [1943] S.C.R. 348, 2 C.P.R. 251 (S.C.C.), (1943),
4 C.P.R. 65 (P.C.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 355n54
Visa International Service Assn. v. Visa Motel Corp. (1984),
1 C.P.R. (3d) 109 (B.C.C.A.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 119n8
422
Table of Cases
Vivat Holdings Ltd. Levi Straus & Co. (2005),
41 C.P.R. (4th) 8 (F.C.T.D.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 113n63
Vorvis v. Insurance Corporation of British Columbia (1989),
58 D.L.R. (4th) 193 (S.C.C.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 333n103
Wall v. Horn Abbot Ltd. (2007), 2007 NSSC 197 (N.S.S.C.) . . . . . . . . . . . . . . . . 327n67
Walt Disney Productions v. Triple Five Corp. (1994),
53 C.P.R. (3d) 129 (Alta C.A.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 129n11
Walter v. Lane [1900] A.C. 539 (H.L.) . . . . . . . . . . . . . . . . . . . . . . . . . . . 228n11, 228n14
Warner Bros.-Seven Arts Inc. v. CESM TV Ltd (1969),
58 C.P.R. (2d) 97 (Ex Ct.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 324n52
Warner Brothers-Seven Arts Inc. v. CESM-TV Ltd. (1971),
65 C.P.R. 215 (Ex. Ct) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 261n6, 274n15
Waterlow Publishers Limited v. Rose et al. (1995),
22 F.S.R. 207 (U.K.C.A.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 237n59
WCC Containers Sales Limited v. Haul-All Equipment
Ltd. (2003), 28 C.P.R. (4th) 175 (F.C.T.D.) . . . . . . . . . .16n40, 17n50, 91n93, 91n94,
122n26, 372n18
Wellcome Foundation Ltd. v. Apotex Inc., (1997),
82 C.P.R. (3d) (F.C.T.D.). . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 159n108
Werner Motors Co. v. Gamage Ltd (1904),
21 R.P.C. 137, 621 (U.K.C.A.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 372n15
Western Clock Co. v. Oris Watch Co. Ltd. [1931] 2 D.L.R. 775,
[1931] Ex. C.R. 64 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 90n91
Westfair Foods Ltd. v. Jim Pattison Industries Ltd. (1989),
26 C.P.R. (3d) (B.C.S.C.) affirmed 30 C.P.R. (3d) 174 (B.C.C.A.) . . . . . . . . . . 134n37
Westinghouse Brake & Saxby Signal Co. v. Varsity Eliminator Co. (1935),
52 R.P.C. 295 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 136n50
White Consolidated Industries, Inc. v. Beam of Canada
Inc. (1991), 39 C.P.R. (3d) 94 (F.C.T.D.) . . . . . . . . . . . . . . . . . . .15n30, 75n11, 75n15
WIC TV Amalco Inc. v. ITV Technologies, Inc. (2005),
38 C.P.R. (4th) 481 (F.C.A.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 132n27
Wiebe Door Services Ltd. v. M.M.R. [1986] 3 F.C. 553 (Fed. C.A.) . . . . . . . . . . 234n43
Wilhelm Layher GmbH v. Anthes Industries Inc. (1986),
8 C.P.R. (3d) 187 (F.C.T.D.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 90n86
Wilkinson Sword (Can.) Ltd. v. Juda (1966),
51 C.P.R. 55 (Ex. Ct.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . .37n73, 38n77, 75n10, 75n12,
76n20, 89n84, 142n20
Windsurfing Intl Inc. v. Novaction Sports Inc. (1988),
18 C.P.R. (3d) 230 (F.C.T.D.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 144n32
Winter Garden Theatre (London) Ltd.. v. Millennium
Productions Ltd., [1948] A.C. 173 (H.L.), . . . . . . . . . . . . . . . . . . . . . . 262n12, 262n13
Wool Bureau of Canada, Ltd. v. Queenswear (Canada) Ltd.
(1980), 47 C.P.R. (2nd) 11 (F.C.T.D.) . . . . . . . . . . . . . . . . . . . . .13n18, 13n19, 112n56
W.R. Grace & Co. v. Union Carbide Corp. (1987),
14 C.P.R. (3d) 337 (F.C.A.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 43n27, 44n34
Wrigley Canada Inc. v. Brain Wave Holdings Inc. (2006),
52 C.P.R. (4th) 124 (C.I.R.A.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 174n59
Table of Cases 423

WWF-World Wide Fund for Nature aka WWF International v. Moniker
Online Services LLC, WIPO case no. D2006-0975 . . . . . . . . . . . . . . . . . . . . . . 170n39
Your Golf Travel Limited v. Hardelot Holidays Limited,
WIPO case no. D2007-1058 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 169n30
Zamacos v. Douville et al. (1943), 2 C.P.R. 270 (Ex. Ct.) . . . . . . . . . . . . . . . . . . . 266n1
ZYX Music GmbH v. King [1995] 3 All E.R. 1 (U.K. Ch. D.)
appeal dismissed [1997] 2 All E.R. 129 (U.K.C.A.) . . . . . . . . . . . . . . . 191n24, 207n34
Index
Abandonment, 223
Acquired distinctiveness, 14
applicability, 34
determination, 3536
evidence required, 35
Acquisition, of Copyright
conditions of, 18081
publication, definition of, 181
Actions for infringement, defenses. See also
Infringement entries
consent of, 123
denial , 123
invalidity of, 122
ownership of, 123
plaintiffs own goods, 123
Actions in courts, copyright parties
authors, 321
copyright owner, 32021
defendants, 32223
persons deriving rights from owners,
32122
Advertisement
of trademark application, 6465
Agricultural-industrial exhibition/fair,
performance at, 310
Allowance, under Trade-marks Act, 68
American Society of Composers, Authors,
and Publishers (ASCAP), 350
Anonymous work, terms of protection,
21819
Anticybersquatting Consumer Protection
Act, 178
Anton Piller orders, granting order,
conditions for, 149
purpose of, 14849
safeguards in, 15053
supervising solicitors role, 150
Applications, for industrial designs, 37578
filed in foreign country, priorities in, 37778
identifying design features, 377
requirements of, 37577
Applications, for trademark registration

advertisement, 6465
amendments, 6263
based on foreign registration and use,
4243
content, 6061
disclaimer, 64
examination of, 6364
Architectural work
under Copyright Act, 192
exception in copyright, 309
Article, definition under Copyright
Act, 194
Artistic craftsmanship, under Copyright
Act, 193
Artistic works, under Copyright Act
exceptions, 309
industrial design, protection
of, 194
meaning of, 19293
protected works, 19293
rights associated with, 19394
Assigning license
and copyright, 262, 269
Assigning trademarks
distinctiveness of, 76
effectiveness of, 7576
scope of, 74
territorial assignments of, 7475
Assignment, of copyright
assignor, rights of, 251
author as first owner, limitations
of, 253
construction of, 252
licenses, 254
partial assignments, 25051
physical things, transfer of possession
of, 253
registration of, 254
rights, extent of, 250
in writing, 25152
425
426
Index
Author name change/suppression,
in copyright, 344
Authors of copyright
author, definition of, 227
computer-generated work, 228
first owner of, 227
Bad faith in domain name disputes,
definition of
in CDRP, 17677
in UDRP, 17071
Badges of fraud, passing off, 131
Bankruptcy
copyright, reversions of, 257
licenses, 25556
property of bankrupt, 255
proposals, 256
Bankruptcy and Insolvency Act, 256, 257
Benchers of the Law Society, 297
Berne Convention, in Canada, 23, 266
Broadcasters communication signal, 209
copyright, first owner of, 211
in live event, 211
protected work, 209
Broadcasting Act, 210, 306
Canada Customs and Revenue Agency
(CCRA), 141
Canada Gazette, 206, 210, 351, 353
Canada-United States Free Trade
Agreement, 306
Canadian Intellectual Property Office
(CIPO), 12
Canadian Intellectual Property Office,
Wares and Services Manual, 60
Canadian Internet Registration Authority
(CIRA), 165
CDRP WHOIS Privacy Policy, 17778
Certificate of registration, of trademarks, 58
Certification mark definition of, 1213
Certification mark, 61
Charitable bodies, performance by, 311
Cinematographic works
contracting out, 203
under Copyright Act, 188, 18990
maker, concept of, 240
rights in, 190
terms of protection, 221
CIRA Domain Name Dispute Resolution
Policy (CDRP)
applicable disputes, 17374
bad faith, 17677

confusingly similar domain name, 17475
history of, 173
no legitimate interest, 17576
procedure, 177
WHOIS privacy policy, 17778
Civil remedies, for infringement of
copyright, 316319, 325, 329337
Collective society, and copyright
General Regime, proposed tariffs filing of,
35859
Performing Rights and of
Communication Right Societies, duty
of, 35152
private copying, 364
retransmission, 36062
Collective works, in copyright ownership, 236
Commissioned work, in copyright
ownership, 232
Commissioner of Patents, industrial designs
application requirements, 375
design definition of, 369
originality of, 372
term of, 380
Common law rights, 5
Common law trademark, 168
Communication signal, and copyright, 210,
222, 24041, 318
Companies Creditors Arrangement Act,
257n36
Compensation, acts done before recognition
of copyright, 366
Compilations, under Copyright Act, 183, 237
Computer programs
definition under Copyrights Act, 186
exception in copyright of, 301
Concurrent rights
under common law rights, 133
registration of trademarks, 71
Confusing trademarks
degree of resemblance, 1023
from bilingual perspective, 96
famous trademarks, 100101
inherent distinctiveness of, 9798
from mythical consumer perspective, 95
nature of trade, 101
nature of wares, services, and business,
99100
other circumstances, 103
statutory framework of, 9497
usage duration of, 99
Index
Constitution Act 1867, 244, 315
Constitutional and Charter values, 290
fair dealing, 28993
Contempt proceedings, under permanent
injunction, 157
Contract of service, in copyright ownership
employment or apprenticeship, 23235
in photograph copyright of, 231
Control test, in contract of service, 23334
Conventions, implementation of, 24
Copyright
acquisition, 18081
compilations, 183
definition of, 6
derivative works, 183
fixation, 182
originality, 18182
Copyright Act
Copyright Board. See Copyright Board
paragraph 27(2)(a), attempt to sell or rent
infringing works, 281
paragraph 27(2)(e), purpose of secondary
infringement, 280
rights, definition of, 272
section 2, exclusive distributor of books,
284
section 2.7, about exclusive licenses, 261
section 3, for telecommunication, 355
section 3, rights of work, 272
section 3, sole right to exercise, 25051
section 6, term of protection, 218
section 6.1, anonymous work, 218
section 6.2, pseudonymous work, 21819
section 7, for posthumous work, 219
section 9, copyright for joint authorship,
220
section 10, for photographs, 22021
section 11.1, for cinematographic work,
221
section 12, about Crown copyright, 221,
244
section 13(2), ownership in absence of
agreement, 22829
section 13(4), about assignments right of,
250, 252
section 14(1), rights limitations, 253
section 14(2), work pass, 216
sections 15 and 26, rights of performers
performance, 272
section 18, rights of sound recording, 272
section 21, rights of communication
signal, 272
section 27(1), direct infringement, 272

section 27(2), copyright infringement, 279
section 27(4), infringing copies
production of, 282
section 27(5), infringing performances in
theatres, 283
section 27.1, importation of book, 284
section 28.1, moral rights infringement
of, 273
section 28.2, rights to integrity of work,
273
section 29, research or private study,
29293
section 29.1, criticism or review, 293
section 29.2, news reporting, 292
sections 29 to 32.2, application, for
exceptions, 289
section 30.1, for library, 298
section 30.21, for archiving, 299
section 30.3, machines installed, 299301
section 30.5, library and archives of
Canada, 311
section 30.6, computer programs, 301
section 30.7, work in another work,
incidental inclusion of, 302
section 30.8, ephemeral recordings,
3024
section 30.9, pre-recorded recordings,
3045
section 31, copyright owners license
section 31(2), retransmission, 3057
section 32, perceptual disabilities, 3078
section 32.1(1), statutory
obligations, 308
section 32.2(1)(a), artistic works, 309
section 32.2(1)(b), architectural works
and sculptures, 309
section 32.2(1)(c), public lecture,
newspaper report of, 309
section 32.2(1)(d), public recitation
of, 310
section 32.2(1)(e), address of a political
nature at public meeting, 310
section 32.2(2), agricultural or
agricultural-industrial exhibition or
fair, performance at, 310
section 32.2(3), religious, educational,
charitable, or fraternal bodies, 311
section 32.3, equitable remuneration, 311
section 34, about delivery up, 337
section 36(1), persons deriving tights, 321
427
428 Index
Copyright Act (cont.)
section 38.1, exclusive licensees, 285
section 38(1)(a), infringing copies
possession, 33031
section 38(1)(b), owner and seizure rights,
33031
section 42(1), offences, 34142
section 43, offences, 343
section 45, exceptions of imported copies,
31920
section 45, exceptions to secondary
infringement, 279, 285
section 53, certified copies, 268
section 55, for Registers and indices, 267
section 56, application for registration,
267
section 57(1), assignment registration of,
254
section 57(3), license to assignment, 254
section 61, correcting clerical errors, 268
section 64(1), useful articles, eye appealing
features of, 19596
section 64(2), useful articles, features of,
197
Copyright Act, collective administration of
collective society, definition of, 351
performers performances of works, 350
performing rights, 351
proposed tariffs, filing of, 352
Copyright Board, 347
compensation, determination of, 366
equitable remuneration, tariff regulation
of, 354
function of, 347, 349
jurisdiction of, 34748
market power, regulation of, 353
member of, 347
powers of, 34850
rights of, 347
Copyright Office, 266
Copyright ownership, during employment,
232238
Copyright protection
artistic works, 19297
dramatic works, 18890
literary works, 18688
musical works, 19192
Copyright registration
applying for, 26667
admissibility of, 268
effect of, 26870
evidence of, 269
notice of assignment or license, 269

rectification of, 268
statutory notice of, 270
varying presumptions, 270
Country code TLDs (ccTLDs), 162
Country of origin and trademarks
of applicant, 4243
meaning of, 40
non-Canadian trademark owners, 4
trademark registrability, 4345
Country of the Union, 18n53, 41
Criminal Code, 344
Criminal offences, and copyright
categories of, 340
penalties, 343
Criminal remedies, and copyright
Criminal Code, 344
criminal proceedings, 340
Criticism or review, fair dealing in copyright
purpose of, section 29.1, 293
Crown copyright
Crown, the, 244
defenses to, 245
definition of, 245
federal policy relating to, 246
in government departments, 244
rights available to, 245
rights under Copyright Act, 246
Crown immunity, 24748
Crown prerogative, 24647
Customs Act, 142, 319
Customs Tariff, 316
Damage assessment of, and infringement of
copyright, 33233
Defenses, passing off, 133
absence of reputation or goodwill, 13335
concurrent right, 133
defendants own name, 13536
descriptive words, 134
geographical words, 135
functionality, 135
lack of distinctiveness, 133
plaintiffs own goods, 136
using registered trademark, 135
Definitions, in copyright
book, 285
educational institutions, 294
exclusive distributor, 284
fair dealing, 289
libraries, archives, and museums, 29697
Index
new media retransmitter, 307
performance, 283n21
plate, 282
research, fair dealing, 292
Definitions, in industrial designs
distinguishing guise, trademarks, 372
finished article, 370
pattern or ornament, 370
publication, 374
shape and configuration, 369
Delay and acquiescence, in infringement and
passing-off actions, 153
Derivative works, under Copyright Act, 183
Descriptive trademarks, 28
characteristics of, 31
clearly, concept of, 30
coined words, 33
deceptively misdescriptive, 28, 30
disclaimer, 3334
in English, 3031
first impression, 2930
in French, 3031
of persons employed, 3132
place of origin of, 32
quality of, 31
suggestive words, 3233
Descriptive words, under common law
rights, 134
Design, definition under Copyright Act, 194
Design, under Industrial Design Act
article, utilitarian function of, 369
commissioner of patents, 369
definition of, 369
infringement, 381
features, description of, 377
finished article, 370
kits, 371
new design and pre-existing designs, 373
originality, determination of, 373
pattern or ornament, 370
section 5.1, limitations of, 369
section 13(2), assignment, 380
sets, 370
shape and configuration of, 369
unmagnified vision of, 370
validity of, registration by employee, 375
Devolution, of copyright, 25455
Devolution of, moral rights, 216
Direct infringement, in copyright
by agents and employees, 275
authorizing infringement, 27475
definition of, 272
sole right, 27274

Disclaimer
for descriptive trademarks, 3334
during trademark prosecution, 64
Discovery
in infringement and passing-off actions,
153
infringement of copyright, 32627
Distinctiveness
trademarks, 1315
Distinguishing guise, of trademarks
definition of, 15
functionality concept, 17
conditions for registration, 16
Domain names
actions in the courts, 178
.ca domain names, 165
description of, 16263
gTLD domain names, 16365
parts of, 162
registration of, 6
Domain names, applicable disputes
in CDRP, 17374
in UDRP, 16869
Domain names, confusingly similar
in CDRP, 17475
in UDRP cases, 169
.ca Domain Names, 165
Dramatic works, copyright protection,
34344
cinematographic works, 18990
Drawings, under Copyright Act, 193
Economic reality test, in contract of service,
235
Educational bodies, performance by, 311
Educational institutions, exceptions under
copyright
definition of, 294
excepted activities, 29496
literary collections, 296
Eleven-point maple leaf designs, disclaimer
of, 64
Engravings, in copyright, 192, 231
Ephemeral recordings, exception in
copyright of, 3024
Equitable remedies
for infringement and passing-off actions,
146, 159
429
430 Index
Equitable remuneration, right to
entitlement, 2045
performers rights, 206
points of attachment, 2056
royalty amount of, 206
Evidence at trial, and infringement of
copyright, 32728
certification of registration, as evidence,
328
circumstantial evidence, 328
expert evidence, 32829
presumptions, 328
Evidence at trial, in infringement and
passing-off actions, 15456
infringement of, 155
plaintiffs ownership, 154
Exceptions, in Copyrights Act
application of, 289
computer programs, 301
educational institutions, 29496
ephemeral recordings, 3024
fair dealing, 28993
libraries, archives, museums, 29699
machines photo copy, 299300
miscellaneous exceptions, 30911
perceptual disabilities, persons with,
3078
pre-recorded recordings, 3045
statutory obligations, 308
incidental inclusion of, 302
Exclusive distributor of books, rights, and
copyright, 28485
Exclusive license, and copyright,
26061
Canadian exclusive licensee, rights of,
28081
Exemption Order for New Media
Broadcasting Undertakings, 306
Expungement, in Federal Court
grounds for, 8889
jurisdiction of, 85
limitations, 8788
person interested, 87
procedure, 86
Expungement, under section 45 of
Trade-marks Act
appeal of, 84
evidence of, 8183
hearing of, 8384
non-use effect of, 83
summary procedure, 8081
Expungement and alteration, in industrial

designs, 381
Fair dealing, exceptions under copyright
criticism or review, 293
determining factors, 292
excepted activities, 28990
meaning of, 29092
news reporting, 293
research or private study, 29293
Federal Copyright Act, 6
Federal Court
actions for infringement, industrial
designs, 384
expungement and alteration, industrial
designs, 381
Federal Court, for registration expungement
of trademarks
grounds of, 8891
jurisdiction of, 84
limitations of, 8788
person interested in, 87
procedure of, 85
Federal Court copyright, rectification
of, 268
Federal legislation, relating to trademarks, 10
Federal Parliament, 4
Federal regulatory scheme, 132
Fixation, under Copyright Act, 183
Forum non conveniens doctrine, 139,
31516
Fraternal bodies, performance by, 311
Functionality, for passing-off claim, 135
General Agreement on Tariffs and Trade
(GATT), 3
General Regime, collective administration
background of, 356
proposed tariffs, filing of,358
rights under sections 3, 15, 18, and 21,
35659
tariff or agreement, 35758
Generic TLDs (gTLDs) domain names, 162,
16365
accredited registrars, 16364
expired domain deletion policy, 164
inter-registrar transfer policy, 164
Geneva Conventions Act, 18
Geographical words, under common law
rights, 135
Get-up goods or services, under common
law rights, 128, 133
Index
definition of, 129
disclaimer, use of, 130
role, in purchase process, 130
Goodwill
definitions of, 12325
depreciation of, 119, 123, 124
descriptive words or marks, 134
geographical word or marks, 135
lack of distinctiveness, 133
Governor in Council, Copyright Board,
349, 350
Grey market goods, 122
ICANN consensus policies, in Internet
Expired Domain Deletion Policy, 164
Inter-Registrar Transfer Policy, 16465
Uniform Domain Name Dispute
Resolution Policy, 164
Idea, in trademark resemblance, 103
Illegitimate market goods. See Grey market
goods
Immigration and Refugee Protection Act, 205
Implementation of treaties, 4
Implied licenses, and copyright, 26162
Imported copies, seizures under copyright
exceptions, 31920
for importation of books, 317
for procedure of, 31819
for works, 31617
Impugned domain name
in CDRP, 174
in UDRP, 169, 172
Industrial Design Act, 67, 372
in comparison with Copyright Act, 19495
Industrial Design Regulations
application requirements, 37576
examiner, role of, 376
Industrial designs
actions for infringement of, 384
and other intellectual property rights,
37172
application of, 37578
assignment and license of, 380
definition of, 36971
expungement and alteration of, 381
infringement of, 38184
marking of, 379
originality of, 37274
proprietor of, 37475
publication of, 374
remedies of, 38586

term of, 380
Infringement, and passing-off action
Anton Piller orders of, 14853
delay and acquiescence, 153
discovery of, 153
evidence at trial, 15456
interim proceedings for, 14042
interlocutory injunctions, 14548
jurisdiction, 139
limitation period, 154
parties to, 14244
pleadings, 144
remedies, 15660
Infringement secondary, in copyright
infringing works, sale or rental of, 281
knowledge of, 279
parallel importation of books, 28485
performances in theatres, 283
secondary infringement, 278, 282
Infringement, in industrial designs
activities of, 38283
design registration, related article, 383
exclusive right, 38182
license, 382
substantial differences, 38384
Infringement, of trademark
exceptions of, 119
grey market goods, 122
in comparison with passing-off claim, 121
invalidity, 12021
plaintiff and elements for success, 120
statutory framework, 11820
trademark use, 120
Infringement authorization of, and
copyright
by agents and employees, 275
definition, 275
right to authorize, 274
Infringing performances, in theaters, 283
Infringing works, and secondary
infringement of copyright
importation of, 27981
possession of plates, for copies, 282
possession of, 282
sale or rental of, 281
Infringement of copyright
actions in courts, 32023
Anton Piller orders, 325
discovery, 32627
evidence at trial, 32729
imported copies, seizures of, 31620
431
432
Index
Infringement of copyright (cont.)
interloculary injunctions, 325
jurisdiction, 31516
limitation period, 327
pleadings, 32325
remedies, 32937
summary applications, 32526
Injunction, industrial design remedies, 385.
See also Infringement, and passing-off
action
Integrity of work, rights to, 21415
Intellectual Property Rights, industrial
designs, 37172
copyright, 371
patent, 37172
trademarks, 372
Interim proceedings, for infringement and
passing-off action, 14042
for detention by minister, 14142
for interim custody, 140
Interloculary injunctions, and infringement
of copyright, 325
Interlocutory injunctions, in infringement
and passing-off actions
balance of convenience, 14748
irreparable harm, definition of, 147
purpose of, 145
serious question to be tried, 146
test for granting of, 146
International Convention for the Protection
of Performers, Producers, Phonograms,
and Broadcasting Organizations, Rome
Convention, 3
International obligations, 24
Internet
click wrap agreement, 167
cross-border transactions, 166
domain names. See Domain names
International Organization for Standards
(IOS), 162
Internet Corporation for Assigned Names
and Numbers (ICANN), 16263, 165
Internet Protocol (IP) number, 162
legacy root, 162
Internet Corporation for Assigned Names
and Numbers (ICANN), 16263, 165
gTLD Domain Names, 16365
Interpretation Act, 244, 247
Invalid registration of trademarks, 70, 71
Joint authorship works, in copyright
ownership
authors interest, nature of, 23940

contribution, nature of, 23839
statutory definition, 238
two or more authors, 238
Jurisdiction, for infringement of trademark,
139
forum non conveniens doctrine, 139
territorial rights of, 139
Law Society of Upper Canada, 297
Libraries, archives, and museums,
exceptions under copyright
definition of, 29697
excepted activities of, 29799
Library and archives of Canada, 311
Library and Archives of Canada Act, 311
Licenses by Copyright Board, 26263
Limitation period, in infringement and
passing-off actions
under section 39, Federal Courts Act, 154
Literary works, and copyright protection
computer programs, definition of, 18687
distinguishing characteristic of, 186
Machines installed
in educational institutions, libraries,
archives, museums, excepted activities
299301
Madrid Protocol, 4
Maker, meaning under Copyright Act, 189
Market power, by copyright owners, 353
Marking industrial designs, 379
Mens rea, in criminal proceedings, 340
Misrepresentation, in passing-off claim,
13031
Moral rights, meaning under Copyrights
Act, 214
Musical works, under Copyright Act,
19192, 34344
meaning, 191
Name, under the Trade-marks Act, 27
Neighboring rights, under copyright
broadcasters communication signal,
20911
performers rights, 200206
sound recordings, 2069
Newspaper, magazine, and periodicals
contribution to, 23536
Index
News Reporting, fair dealing in copyright
purpose, section 29.2, 293
Nice Agreement on the Classification of
Goods and Services, 4
Nominal damages, and infringement of
copyright, 333
Non-distinctive trademarks, 8990
Non-infringement-designs, eye appealing
features of useful articles,
features of, 19597
Non-registrable trademarks, 89
North American Free Trade Agreement
(NAFTA), 2, 3, 206, 316
Official marks
definition of, 2122
public authority, 22
Registrar of Trademarks, 23
test of resemblance, 24
Olympic and Paralympic Marks Act, 24,
26, 38
Ontario Class Proceedings Act, 1992, 321
Ontario Limitations Act, 2002, provincial
limitations of, 154
Order, in photograph copyright of, 230
Ordinary license, and copyright, 260, 261
Organization or integration test, in contract
of service, 234
Originality, under Copyright Act, 181
Overseeing proposed tariffs, for copyright,
35253
Ownership presumptions, in copyright,
24142
Owners of Copyright, retroactive license,
35666
Parallel importation of books, 283
exclusive distributor, 284
exclusive distributors rights, nature of,
28485, 284n26
statutory damages for, 285
Paris Convention for the Protection of
Industrial Property, 2, 56
Parties, in infringement and passing-off
actions
defendants, 143
directors and officers, 14344
licensee, 143
plaintiff, 142
Parties right, concerning Anton Piller orders
search, conduct of, 151
search-and-seize evidence, 151
solicitor-client privilege, procedure, 15051

supervising solicitor, role of, 150
Passing-off claim, and infringement of
trademark, 5, 121. See also Good-will
Passing-off claim, under common law
rights
competitors, 13233
damage of, 129, 131
functionality and goodwill, 135
misrepresentation of, 12829, 13031
relevant date of, 132
reputation or goodwill of, 128, 129
statutory cause of, 132
tort, nature of, 12829
trade dress or get-up of, 128, 12930
Patent Act, 247, 372
Patent infringement, profit calculation, 159
Perceptual disabilities, exception in
copyright of, 3078
Performance, under Copyright Act, 192,
200201
Performers performance
and copyright, 318
in copyright ownership, 24041
Performers rights, and copyright
Canada and Rome Convention countries,
2013
equitable remuneration, 2046
protected work, 200201
WTO countries, performers rights, 204
Performing Right Society, 350, 35153
collective administration of, 35056
proposed tariffs, overseeing of, 35253
Photograph, in copyright ownership, 192
author of, 229
ordered for valuable consideration,
23031
Plant Breeders Rights Act, 21, 38
Plates making or possession of,
in copyright, 343
Pleadings, and infringement of copyright
notice of claim, 32324
particulars of, 325
statement of claim, 324
statement of defense, 32425
Pleadings, in infringement and passing-off
actions, 144
basic requirements, 144
particulars, 144
433
434 Index
Portraits, in copyright, 232
Posthumous work, terms of protection, 219
Pre-recorded recordings, exception in
copyright of, 3045
Prima facie case
disputes under UDRP, 168
under criminal proceedings, concerning
copyright, 340
in granting, Anton Piller orders, 149
permanent injunction, 15657
plaintiff s ownership, in registered
trademark, 154
serious question to be tried, 146
Private copying, and copyright, 36365
Profits or damages, in infringement and
passing-off actions
account of profits, 15859
alternative remedies, 157
damages, assessment of, 15758
Prohibited designations, under Trade-marks
Act, 2021
Prohibited marks, 38
definition of, 17
list of, 1819
Proposed tariffs filing of, copyright, 352
Proposed trademarks, 61
Proposed use marks, 5758
Proprietary licenses, and copyright, 322
Proprietor, industrial designs, 37475
Provincial legislation, relating to trademarks,
1011
Pseudonymous work, term of protection,
21819
Publication, industrial designs, 374
Public authority, and official marks, 22
Public lecture, newspaper report of,
exception in for copyright, 309
Public Notice CRTC 1999197, 210n48, 306
Public recitation of extracts, exception for
copyright, 310
Punitive or exemplary damages, and
infringement of copyright, 33334
Quebec, and Charter of French language, 11
Radio performances, other than theatres, 355
royalties, 35556
Recognized trademarks, 11
Registered trademark, 15
Registered trademark, under common law
rights, 135
Registered trademarks, confusion with
section 6, statutory framework, 3637

section 15, associated marks, 3738
Register of Copyrights, 267
rectification of, 268
Registrar Accreditation Agreement, 165
Registrar of Copyrights, 268
Registrar of Trademarks, 14, 20, 23
Registration
copyrights. See Copyrights
industrial designs, 37879
trademarks. See Trademark registration
Regulations, Copyright Board, 34950
applications and notice, time, 349
Governor in Council, 349, 350
internal affairs, 349
practice and procedure, 349
Relevant date, in passing-off claim, 132
Religious bodies, performance by, 311
Remedies, and infringement of copyright
account of profits, 334
assessment of statutory damages, 33637
availability of statutory damages, 336
costs, 337
damages, 33234
declaratory relief, 332
delivery up, 337
infringing copies, possession of, 33031
permanent injunction, 32930
statutory damages, 33435
Remedies, for infringement and passing-off
actions
costs, 160
destruction, exportation or other
disposition of offending wares, 15960
permanent injunction, 156, 157
profits or damages, 15759
under Trade-marks Act, 156
Remedies, in industrial designs, 38586
damages or profits, 385
defenses, 386
delivery up, section 15.1, 386
injunction, 385
Research or private study, fair dealing in
copyright
private study, 292, 293
purpose of, section 29, 29293
research, meaning of, 292
Retransmission, exception in copyright of,
3057
Retransmission regime, 36063
background of, 360
claims by non-members, 362
Index
retransmission collective societies, 360
Rome Convention countries, 3
contracting out, 203
meaning of, 201
performers performance, right associated
with, 2012,
points of attachment, 203
right to equitable remuneration,
2056
sound recording, rights associated with,
2078
WTO countries, 204
Royal Canadian Mounted Police
(R.C.M.P.), 19
Royalties and copyright
fixing, effect of, 355
radio performances, other than theatres,
35556
Safe guards, in Anton Piller orders
conduct of search, 151
procedure after search, 152
rights of parties, basic protection, 15051
setting aside order, 153
solicitor-client privilege, 15253
Sculpture
under copyright, 192
exception in for copyright, 309
Secondary infringement, of copyright
distribute, 282
elements to be established of, 27879
infringing works, 27982
knowledge of, 279
possession of plates, 282
prejudice of copyright owner, 281
rights, nature of, 278
Secondary meaning, 14. See also Acquired
distinctiveness, in trademarks
descriptive words, 134
in geographical names, 135
Second Level Domain (SLD), 162
Skill, and judgement under Copyright Act, 181
Slogan/tagline, under Trade-marks Act, 11
Society of Composers, Authors, and Music
Publishers of Canada (SOCAN), 350
Sole license, and copyright, 260
Sole right, in direct infringement of
copyright
consent or license, 27374
intention to infringe, 273
nature of, 27273
Sound recording
and copyright, 18990, 318
in copyright ownership, 24041
and equitable remuneration, 209
meaning of, 2067
Spirits, protected geographical indications
for, 21
Statutory obligations, exception in for
copyright, 308
Summary applications, under infringement
of copyright, 32526
Sunrise Period, in domain names, 163
Supreme Court of Canada, 150
applicability of national laws, 166
about copyright infringement, fair dealing
exceptions, 289
about the Crown, 248
about famous trademarks, 100101
determination of fairness,
fair dealing, 290
library, statutory definition of, 297
Surname, under trademarks, 27
Term, in industrial designs, 380
Title name, change/suppression, 344
Top Level Domain (TLD), 6, 162
Tort, for passing off, 12829
damage, 131
goods or services, get up of, 128
misrepresentation of, 13031
nature of, 128
plaintiff, requirements of, 128
relevant date of, 132
reputation or goodwill, plaintiff, 129
trade dress or get up of, 12930
unfair trading, protection from, 128
Trade dress, under common law rights, 129.
See also Get-up goods or services, under
common law rights
Trademark
abandonment of, 90
acquired distinctiveness. See Acquired
distinctiveness, in trademarks
color, 61
country of origin, 56
definition of, 1112
deviating use of, 5152
distinctiveness, 1315
federal legislation, 10
importance of, 48
435
436 Index
Trademark (cont.)
invalidity, under non-statutory grounds,
8889
licensee for, 58
making known in Canada, 55
making known, 4142
prohibited marks, 1517
provincial legislation, 1011
purpose of, 10
registered and used abroad, 5657
services, 50
use in Canada, 4546
use of, 48
for ware or service names, 36
Trademark Law Treaty, 4
Trademark license
availability of, 77
control by owner, 78
proceedings for infringement, 78
Trademark notice, advantages of, 6970
Trademark opposition, 106
amendments to, 111
appeal, 115
counter statement of, 11011
evidence, framework of, 11112
grounds for, 1078
hearing, 114
material dates for, 1089
onus of proof, 11213
statement of opposition content of,
10910
time for filing and extension, 1067
Trade-mark Opposition Board, 16, 103
Trademark protection
for domain names, 165
renewal period, 7172
Trademark registration
advertisement, 6465
agent, 90
allowance, 68
amendments, 62
applications, 4243, 55
availability, to applicants, 4344
country of origin, 4344
disclaimer, 64
entitlement, 54, 9091
examination of, 6364
misappropriation of, 8889
non-use in Canada, 82
notification to client, 6364
refusal of, 63
registration, 69
rights, 54, 5657

in trademark assignment, 7576, 76
Trademarks, confusing
from bilingual perspective, 96
inherent distinctiveness of, 9798
from mythical consumer perspective, 95
nature of trade, 101
nature of wares, services, and business,
99100
resemblance, 1023
surrounding circumstances, 9596
usage duration of, 99
Trade-marks Act, 45, 10, 6062
certification marks, 1213
confusing trademarks, 94103
content of the application, 6061
country of origin, meaning of, 5
descriptive words or marks, 134
distinguishing guise, 12
domain names, 6
domain name registration, 165
entitlement, 54
geographical word or marks, 135
official marks, 2124
pleadings, basic requirements, 144
proposed trade-mark, 12
protected geographical indications, 21
recognized trademarks, 11
restrictions of, 69
rights, acquisitions of, 4045
scope, 54
section 4(1), wares, 4849
section 10, for prohibited designation, 20
section 12(1), registrable trademarks, 26
section 14, for non-Canadian trademark
owners, 15, 27
section 17, concurrent rights, 71
section 18, invalid registration of,
7071
section 19, owners rights, 118
section 20, owners right to infringement,
11819
section 21, concurrent protection of
rights, 71
section 22, depreciation of goodwill of
trademark, 12425
section 30, content of application, 63,
6465
section 45, summary procedure for
expungement, 8081
section 48(1), trademark transferability, 74
section 48(2), distinctiveness of, 76
Index
section 50, to use a trademark license,
77, 82
section 53, proceedings for interim
custody, 140
section 56, appeals, 85
section 9(1), prohibited marks of,
2324, 174
sections 11.12 and 11.12, for protected
geographical indications, 21
sections 7(b) ad 7(c), prohibitions, 13233
Trade-marks Opposition Board, 16, 103, 111
Trade name, definition of, 54n3. See also
Name, for registration
Trade-Related Aspects of Intellectual
Property Rights (TRIPS), 23, 180, 200
article 19 of, 80
Treasury Board Manual
Information and Administrative
ManagementCommunications, 246
Treaties, implementation of, 24
Unfair trading, under common law
rights, 128
Uniform Domain Name Dispute Resolution
Policy (UDRP)
applicable disputes, 16869
bad faith, 17071
confusingly similar domain name, 169
history of, 167
no rights or legitimate interest, 16970
procedure of, 17273
Useful article, definition under Copyright

Act, 194
Utilitarian function, definition under
Copyright Act, 194
Valuable considerations, in photograph
copyright of, 23031
Value-based or differential profit
approach, 159
Voluntary disclaimers, in trademark
registration, 64wwWaiver, 21516
benefits, under Copyrights Act, 216
Wares, and trademark use
exported from Canada, 51
normal course of trade, 49
notice of association, 4950
transfer of property or possession, 49
Wines, protected geographical indications
for, 21
WIPO Copyright Treaty, 3
WIPO Performance and Phonograms
Treaty, 3
Withdrawal of consent, for licensing, 262
Work incidentally included in another work,
exception in copyright of, 302
Works of joint authorship, terms of
protection, 220
World Trade Organization (WTO), 2, 5, 56,
180, 204
Written notice of secondary infringement, in
copyright, 279
437

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