HOLDING Here, the penguin marks are held not to be substantially different; and holds the same dominant features as the old mark. Thus, Mark continues to be in use in Canada, no abandonment. Various grounds for TM Infringement Unauthorized of the identical TM s.19 “use” Confusing uses of TMs s. 20 Uses that depreciate the value of the goodwill s. 22 Protection against passing off (s. Protects of registered and unregistered TMs 7(b)): *Note: Recall that use under s. 4 is viewed narrowly, except with respect to s. 22, where it has a more broad definition. TM – s.19 concerns with the of an exact, precise mark while s.20 the of a confusing mark “use” – “use” here as a trademark, not just any use as a source of product “Use” “use” – “use” Use as a (under s.19) is different than use as a (under s.4) “trademark” “mark as a trademark depends on “Use” (1) nature & purpose of the use and; (2) consumer’s perception of Y’s use Example X: in association with Adidas shoes, “BROOKS” Y: BROOKS nearly same quality as Adidas but with cheaper price Q - Is Y infringing X’s TM under s.19? Did Y use to distinguish its goods as being a source “BROOKS” while actually the source of the goods is X? Have to consider: Look at nature and purpose of the use look at packaging, the way goods appear in the – product Consumers’ perception of Y’s use will they see it separately as Y’s own goods, or will they see – it as X’s. Scenarios: May be infringing if using TM to distinguish one’s product May be infringing if it is used to confuse the consumer May not be infringing if the purpose is to simply provide honest information to consumers & [1968] [Infringement under s.19; Uses that depreciate the value of the goodwill s. 22] FACTS
HOLDING Here, the penguin marks are held not to be substantially different; and holds the same dominant features as the old mark. Thus, Mark continues to be in use in Canada, no abandonment. Various grounds for TM Infringement Unauthorized “use” of the identical TM s.19 Confusing uses of TMs s. 20 Uses that depreciate the value of the goodwill s. 22 Protection against passing off (s. 7(b)): Protects of registered and unregistered TMs *Note: Recall that use under s. 4 is viewed narrowly, except with respect to s. 22, where it has a more broad definition. TM – s.19 concerns with the “use” of an exact, precise mark while s.20 – the “use” of a confusing mark “Use” here “use” as a trademark, not just any use – “use” as a source of product Use as a “trademark” (under s.19) is different than use as a “mark (under s.4) “Use” as a trademark depends on (1) nature & purpose of the use and; (2) consumer’s perception of Y’s use Example X: “BROOKS” in association with Adidas shoes, Y: BROOKS nearly same quality as Adidas but with cheaper price Q - Is Y infringing X’s TM under s.19? Did Y use “BROOKS” to distinguish its goods as being a source while actually the source of the goods is X? Have to consider: Look at nature and purpose of the use – look at packaging, the way goods appear in the product Consumers’ perception of Y’s use – will they see it separately as Y’s own goods, or will they see it as X’s. Scenarios: May be infringing if using TM to distinguish one’s product May be infringing if it is used to confuse the consumer May not be infringing if the purpose is to simply provide honest information to consumers & [1968] [Infringement under s.19; Uses that depreciate the value of the goodwill s. 22] FACTS
IP-CAN.docx