Trade-Mark Infringement

s.19 – Use of the same mark in respect of the same wares
Rarely litigated
s.20 – Use of a confusing mark
Most common
s.22 – Depreciation of goodwill
Equivalent to what is known as “dilution” in Us. law
Scope unclear – very limited caselaw
Controversial

22 (1) No person shall use a trade-mark registered by another person in a manner that is likely to have the effect of depreciating the value of the goodwill attaching thereto
Controversial and rarely (but not never) used
Important especially for famous marks
Where confusion is difficult to show because wares are not similar

Marks are registered in respect of specified wares
Same mark, same wares = s.19 infringement
NO need to show confusion
Same mark, different wares is NOT caught by s.19
Similar mark, same wares is NOT caught by s.19

s.19. . . the registration of a trade-mark in respect of any wares or services, unless shown to be invalid, gives to the owner of the trade-mark the exclusive right to the use throughout Canada of the trade-mark in respect of those wares or services.

“Use” in s.19 has been judicially interpreted to mean “use as a mark” ie  for the purpose of distinguishing the wares.  
Use of the mark by a competitor in comparative advertising does not infringe s.19

20 (1) The right of the owner of a registered trade-mark to its exclusive use shall be deemed to be infringed by a person . . .who sells, distributes or advertises wares or services in association with a confusing trade-mark or trade- name . . .
May be same mark, different wares
Different mark, same wares
Different mark, different wares

The section headings to ss.19 & 20 respectively are
Rights conferred by registration – s. 19
Infringement – s. 20(1)
This suggests that s.19 defines the right and s.20 defines infringement
However, the sections are generally understood to define two different heads of infringement

s.20(1). . . but no registration of a trade-mark prevents a person from making
(a) any bona fide use of his personal name as a trade-name, or
(b) any bona fide use, other than as a trade-mark,
(i) of the geographical name of his place of business, or
(ii) of any accurate description of the character or quality of his 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 trade- mark
This part of s.20 is generally understood to apply to protect any use, whether the infringement is claimed under s.19 or s.20

This part of s.20 is generally understood to apply to protect any use, whether the infringement is claimed under s.19 or s.20

Note that you can use your personal name as a trade-name even if it is confusing
Eg Brick’s Fine Furniture (owned by the Bricks) and Brick Furniture Warehouse
However, it is probably the case that you cannot use your personal name as a trade mark if that would be confusing
Eg A person named Heintzman can sell pianos under the name “Heintzman Piano Company”, but cannot sell “Heintzman pianos”

20 (1) The right of the owner of a registered trade-mark [is] infringed by a person . . .who sells . . .wares . . .in association with a confusing trade-mark or trade-name . . .

“Confusion” defined by s.6
"confusing", when applied as an adjective to a trade-mark or trade-name, means a trade-mark or trade-name the use of which would cause confusion in the manner and circumstances described in section 6;

6(2) The use of a trade-mark causes confusion with another trade-mark if the use of both trade-marks in the same area would be likely to lead to the inference that the wares or services associated with those trade-marks are manufactured, sold, leased, hired or performed by the same person,. . .
Only confusion as to the source of the goods constitutes infringement
Recall: Goal of trade-marks is to inform consumers as to the source of the goods
Only a use which interferes with this function constitutes infringement

6(2) The use of a trade-mark causes confusion with another trade-mark if the use of both trade-marks in the same area would be likely to lead to the inference that the wares . . .are manufactured, [or] sold. . .by the same person. . .

Only confusion as to the source of the goods constitutes infringement
Recall: Goal of trade-marks is to inform consumers as to the source of the goods
Only a use which interferes with this function constitutes infringement

6(2) The use of a trade-mark causes confusion with another trade-mark if the use of both trade-marks in the same area would be likely to lead to the inference that the wares . . .are manufactured, [or] sold. . .by the same person. . .
The question is a hypothetical
No requirement that the marks actually be used in the same area / no actual confusion required
Why not?

6(2) The use of a trade-mark causes confusion with another trade-mark if the use of both trade-marks in the same area would be likely to lead to the inference that the wares . . .are manufactured, [or] sold. . .by the same person. . .

Though is it not necessary to show actual confusion, actual confusion or lack thereof is not irrelevant
Evidence of actual confusion is strong evidence of likelihood of confusion
Absence of evidence of actual confusion may be evidence of absence of likelihood of confusion
When the marks have been used in the same market for some time
Eg Pepsi-Cola v Coca-Cola

6(5) In determining whether trade-marks. . .are confusing, the court . . . shall have regard to all the surrounding circumstances including. . 
The list which follows is not exhaustive
The ultimate question is likelihood of confusion

The court must “have regard” to the listed factors, but
There is no need to show that all of these conditions are ‘satisfied’
The factors are not necessarily of equal weight
The weight given to each will depend on the circumstances

Including
(a) the inherent distinctiveness of the trade-marks or trade-names and the extent to which they have become known;
(b) the length of time the trade-marks or trade-names 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 trade-marks or trade-names in appearance or sound or in the ideas suggested by them

(a) the inherent distinctiveness of the trade-marks or trade-names and the extent to which they have become known;
The “strength” of the mark
A mark may be strong because
It is inherently very distinctive: eg fanciful marks – Exxon
It has become very famous through use, eg Vogue
A stronger mark has a broader field in which it is protected
Confusion might be found in respect of 
A broader range of wares 
)Use of a less similar mark 

A stronger mark has a broader field in which it is protected
Confusion might be found in respect of 
A broader range of wares 
Use of a less similar mark 

(1) generic – the name of the wares: shredded wheat
(2) descriptive – descriptive of the wares: Canadian beer
(3) suggestive – Alpine beer
arbitrary (a real word applied out of context)
(4) fanciful (not a real word – eg Exxon)

(c) the nature of the wares, services or business;
The more similar the wares, the greater the likelihood of confusion
Though it is not necessary that the mark be registered in respect of the defendant’s wares for confusion to arise
The same mark in completely different fields may not be confusing
Dodge Dart and Dart plastic coffee cup lids

(d) the nature of the trade; and
The circumstances in which the wares are sold
Are the wares sold together, in the same shop?
Who are the purchasers?
Are they professional buyers?
Are they purchased hastily, or after close inspection?

(e) the degree of resemblance between the trade-marks or trade-names in appearance or sound or in the ideas suggested by them
The more similar, the greater the likelihood of confusion
The similarity may be appearance or sound

(b) the length of time the trade-marks or trade-names have been in use;
May be relevant in different ways
A mark which is long established may be stronger
See United Artists
But if two marks have been used together for a long period, it may become necessary to show actual confusion
See Pepsi-Cola

At this point the learned judge considered and appears to have taken into account that there was no similarity in the style of lettering used and the colouring of the signs of the parties and that the appearances of the two marks as actually used on signs, boxes, etc, is quite different.

These in my opinion would be very relevant considerations if the proceeding were a passing-off action at common law. They are irrelevant in a proceeding for infringement of a registered trade mark and should have been given no weight in determining whether the trade marks and trade names in issue are confusing with the appellant's registered mark.

Why are these factors irrelevant?
REGISTRATION NUMBER:
TMA187539
TRADE-MARK:
MR. SUBMARINE
DISCLAIMER TEXT:
The right to the exclusive use of the word SUBMARINE is disclaimed apart from the trade-mark.

Note: JB Submarine (TMA489039) and Captain Submarine (TMA195908) are both registered marks
Are these confusing with “Mr. Submarine”?

Despite the wording of s.19, that section only prohibits the use of the mark “as a mark”, that is, in identifying the source of the wares
Yeast-Vite, adopted in Clairol v Thomas Supply
Nominative use of the mark is not actionable under s.19
The situation with respect to s.22 is not clear

Why are the New Kids objecting to the use of their name in the polls?