A trademark is a word, phrase, or logo that identifies the source of goods or services. Trademark law protects a business' commercial identity or brand by discouraging other businesses from adopting a name or logo that is "confusingly similar" to an existing trademark. The goal is to allow consumers to easily identify the producers of goods and services and avoid confusion.
The Lanham (Trademark) Act (Pub. L.Tooltip Public Law 79–489, 60 Stat. 427, enacted July 5, 1946, codified at 15 U.S.C. § 1051 et seq. is the primary federal trademark statute in the United States. In other words, the Act is the primary statutory foundation of United States trademark law at the federal level. The Act prohibits a number of activities, including trademark infringement, trademark dilution, and false advertising.
Trademark dilution is a trademark law concept giving the owner of a famous trademark standing to forbid others from using that mark in a way that would lessen its uniqueness. In most cases, trademark dilution involves an unauthorized use of another's trademark on products that do not compete with, and have little connection with, those of the trademark owner. For example, a famous trademark used by one company to refer to hair care products might be diluted if another company began using a similar mark to refer to breakfast cereals or spark plugs.
William Ian Corneil Binnie is a former puisne justice of the Supreme Court of Canada, serving from January 8, 1998 to October 27, 2011. Of the justices appointed to the Supreme Court in recent years, he is one of the few appointed directly from private practice. On his retirement from the Court, he was described by The Globe and Mail as "arguably the country's premier judge", by La Presse as "probably the most influential judge in Canada of the last decade" and by the Toronto Star as “one of the strongest hands on the court.”
Canadian trademark law provides protection to marks by statute under the Trademarks Act and also at common law. Trademark law provides protection for distinctive marks, certification marks, distinguishing guises, and proposed marks against those who appropriate the goodwill of the mark or create confusion between different vendors' goods or services. A mark can be protected either as a registered trademark under the Act or can alternately be protected by a common law action in passing off.
Kirkbi AG v. Ritvik Holdings Inc., popularly known as the Lego Case, is a decision of the Supreme Court of Canada. The Court upheld the constitutionality of section 7(b) of the Trade-marks Act which prohibits the use of confusing marks, as well, on a second issue it was held that the doctrine of functionality applied to unregistered trade-marks.
A concurrent use registration, in United States trademark law, is a federal trademark registration of the same trademark to two or more unrelated parties, with each party having a registration limited to a distinct geographic area. Such a registration is achieved by filing a concurrent use application and then prevailing in a concurrent use proceeding before the Trademark Trial and Appeal Board ("TTAB"), which is a judicial body within the United States Patent and Trademark Office ("USPTO"). A concurrent use application may be filed with respect to a trademark which is already registered or otherwise in use by another party, but may be allowed to go forward based on the assertion that the existing use can co-exist with the new registration without causing consumer confusion.
Mattel Inc v 3894207 Canada Inc[2006] 1 S.C.R. 772, 2006 SCC 22 is a leading decision of the Supreme Court of Canada on the infringement of famous trade-mark names. The Court found that Mattel Inc. could not enforce the use of their trade-marked name "BARBIE" against a restaurant named "Barbie's".
The doctrine of foreign equivalents is a rule applied in United States trademark law which requires courts and the TTAB to translate foreign words in determining whether they are registrable as trademarks, or confusingly similar with existing marks. The doctrine is intended to protect consumers within the United States from confusion or deception caused by the use of terms in different languages. In some cases, a party will use a word as a mark which is either generic or merely descriptive of the goods in a foreign language, or which shares the same meaning as an existing mark to speakers of that foreign language.
A trademark is a type of intellectual property consisting of a recognizable sign, design, or expression that identifies a product or service from a particular source and distinguishes it from others. A trademark owner can be an individual, business organization, or any legal entity. A trademark may be located on a package, a label, a voucher, or on the product itself. Trademarks used to identify services are sometimes called service marks.
Initial interest confusion is a legal doctrine under trademark law that permits a finding of infringement when there is temporary confusion that is dispelled before the purchase is made. Generally, trademark infringement is based on the likelihood of confusion for a consumer in the marketplace. This likelihood is typically determined using a multi-factor test that includes factors like the strength of the mark and evidence of any actual confusion. However, trademark infringement that relies on Initial interest confusion does not require a likelihood of confusion at the time of sale; the mark must only capture the consumer's initial attention.
The case Brookfield Communications, Inc. v. West Coast Entertainment Corporation, 174 F.3d 1036, heard by the United States Court of Appeals for the Ninth Circuit, established that trademark infringement could occur through the use of trademarked terms in the HTML metatags of web pages when initial interest confusion was likely to result.
Trademark infringement is a violation of the exclusive rights attached to a trademark without the authorization of the trademark owner or any licensees. Infringement may occur when one party, the "infringer", uses a trademark which is identical or confusingly similar to a trademark owned by another party, especially in relation to products or services which are identical or similar to the products or services which the registration covers. An owner of a trademark may commence civil legal proceedings against a party which infringes its registered trademark. In the United States, the Trademark Counterfeiting Act of 1984 criminalized the intentional trade in counterfeit goods and services.
In Canada, passing off is both a common law tort and a statutory cause of action under the Canadian Trade-marks Act referring to the deceptive representation or marketing of goods or services by competitors in a manner that confuses consumers. The law of passing off protects the goodwill of businesses by preventing competitors from passing off their goods as those of another.
Under Canadian trade-mark law, the "doctrine of functionality" provides that features that are primarily functional in nature cannot be registered as trade-marks. The doctrine of functionality reflects the purpose of trade-mark, which is the protection of the distinctiveness of the wares and services associated with a trade-mark. Unlike patents, trade-marks do not protect the utilitarian features of products. The doctrine of functionality is reflected in section 13(2) of the "Trade-marks Act", which provides that: "No registration of a distinguishing guise interferes with the use of any utilitarian feature embodied in the distinguishing guise". On the basis of functionality, courts have denied trade-mark protection for such features as the pattern of knobs on LEGO blocks and the shape of the head of an electric razor.
Under Canadian trade-mark law, "confusion" is where a trade-mark is similar enough to another trade-mark to cause consumers to equate them. Likelihood of confusion plays a central role in trade-mark registration, infringement and passing-off. Whether a trade-mark or trade-name is confusing is a question of fact. The role of confusion in trade-mark law is analogous to the role of substantial infringement in patent law.
Satyam Infoway Ltd. v. Sifynet Solutions Pvt. Ltd. was the first case to be decided by the Supreme Court of India on the issue of domain name protection, and dealt with two businesses employing variations on the same mark ("Sify") in their respective domain names.
Ciba-Geigy Canada Ltd. v. Apotex Inc., [1992] 3 SCR 120, is a Supreme Court of Canada judgment on trademark law and more specifically the issue of passing off. Ciba-Geigy brought an action against Apotex and Novopharm, alleging that their versions of the prescription drug metoprolol were causing confusion to the public due to their similar appearance to Ciba-Geigy's version of the drug Lopresor. On appeal to the SCC, the issue was whether a plaintiff is required to establish that the public affected by the risk of confusion includes not only health care professionals but also the patients who consume the drugs in a passing off action involving prescription drugs of a similar appearance. The Supreme Court held affirmatively on this question.
Rosetta Stone v. Google, 676 F.3d 144 was a decision of the United States Court of Appeals for the Fourth Circuit that challenged the legality of Google's AdWords program. The Court overturned a grant of summary judgment for Google that had held Google AdWords was not a violation of trademark law.
