Trade-mark Update: Masterpiece v. Alavida (Part 2)

It’s worth reviewing the concept of confusion in this landmark case. Confusion is a central concept in Canadian trade-mark law. 

The Supreme Court of Canada’s (SCC) decision in Masterpiece Inc. v. Alavida Lifestyles Inc., 2011 SCC 27 made it clear that, when comparing two trade-marks, the test for confusion is based upon the hypothetical assumption that the marks are used in the same geographical area, regardless of whether this is actually the case.  For the owner of a registered mark to enjoy exclusive use throughout Canada, that mark can’t be confusing with another trade‑mark anywhere in the country (registered or unregistered).  The actual location where the marks are used is not relevant for the purpose of this test, since the court assumes for the purpose of the test that the marks were used in the same place.

Next, remember it is the use of a trade‑mark and not registration itself that confers priority and the exclusive right to the trade‑mark in Canada.  For the first person to use a mark in Canada, trade-mark rights are granted in two ways.  First, you can earn the right to register a trade‑mark when you are the first user of that mark.  Second, you can also oppose applications of other marks, or apply to cancel someone else’s registration, based on your earlier use of a confusing trade‑mark. 

Calgary – 07:00 MT


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1 Comment so far

  1. Richard Stobbe July 6th, 2011 9:34 am

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