Canada recognizes common-law trade-mark rights based on use, including actions for passing off. In addition, Canada has a federally enacted Trade-marks Act that provides additional remedies, including remedies for passing off.
The Trade-Marks Act permits a party to sue for:
- false and misleading statements that tend to discredit the business, goods or services of a competitor;
- passing off; and
- descriptions of goods that are materially false and mislead the public as to their character, geographic origin or mode of manufacture.
In addition to the foregoing, having a registered trade-mark allows a party to also be able to sue for depreciation of goodwill because of the infringing trade-mark or trade-name.
If you become aware of someone infringing on your trade-mark, you should take action or you could lose your trade-mark rights.
Quite often, a “cease and desist” or “demand” letter will be sufficient. At Sodagar & Company, we can issue tailored “cease and desist” advising the infringing party to cease using your trade-mark immediately. If this does not achieve the desired result, then we will take further action, which could include a legal action for trade-mark infringement.
If you think that your trademark may be infringed by a pending registration application, it is important to file an opposition in a timely fashion. The opposition period is open for 2 months after publication of the mark in the Trade-mark Journal. This is the best opportunity to prevent the registration of a conflicting mark. Please note that since the trademark registry is a public record, it is assumed that you are aware of it and of applications being made for trade-mark registration.
If someone is infringing your trade-mark or you are the recipient of an opposition, please contact us to see how we can assist with your matter