What is trademark infringement?
A trademark helps distinguish your company’s goods or services from others in the marketplace. If someone is using your trademark without your permission, they are committing trademark infringement. If someone is using a confusingly similar trademark, they may also be committing trademark infringement.
Infringement can be serious. Not only can an unauthorized user be sued by the trademark owner, but certain unauthorized activities can lead to fines and prison penalties.
Abandoned or expunged trademarks and infringement
The trademark owner is responsible for using the trademark on the goods and services covered in the registration. Keep evidence of the use on an ongoing basis. Otherwise, your competitor may argue that you have abandoned your trademark due to non-use. Your competitor may also request that the Trademarks Office expunge your trademark if you haven’t used it within the last 3 years. This means that the Trademarks Office will remove the trademark from the Register.
Caution: Your trademark can be invalidated on several grounds:
initial unregistrability, because a trademark cannot be any of the following:
- confusing with a registered trademark
- a generic mark or generic symbol
- mistaken for an official or prohibited mark
- offensive
- falsely suggesting a connection with a living or recently deceased individual
- a name or surname, unless distinctiveness is shown
- a descriptive or deceptive mark, unless distinctiveness is shown
- the application being filed in bad faith
- material misrepresentation or non-disclosure of information during registration
- lack of distinctiveness
- the registrant not being the person entitled to secure the registration
- abandonment (requires non-use and intention to abandon)
- the trademark not having been used for 3 years
Examples of trademark infringement
Trademark infringement can include activities such as the following:
- producing, without the owner’s permission, a visual imitation of their trademark so that the public is likely to confuse the imitation with the owner’s trademark (note that there are instances where an exact replica is fine, such as when an exact shape is functionally required)
- using a registered trademark that is so similar to another trademark that people will be confused
- importing falsely branded goods (“knock-offs”), which is becoming more common with the advent of online ordering (counterfeiters may advertise using images of original products but ship fake goods)
- using a trademark in a manner that will depreciate the value of the goodwill attaching to it
Note: Trademark and domain name issues can go hand in hand. For example, having a registered trademark can help you fight against unauthorized uses of the trademark as a domain name.
Enforcement
While the Canadian Intellectual Property Office grants intellectual property (IP) rights such as trademarks, patents, industrial designs and copyright, it does not police granted rights or monitor the marketplace for potential infringement.
Enforcement of IP rights is the responsibility of the IP holder, not the IP office.
Who can sue for trademark infringement
- The owner of the registered trademark
- Licensees of the registered trademark (under certain conditions)
- For unregistered trademarks, the owner of a business whose competitor is using the same or a similar trademark that might cause confusion (using common law tort of “passing off”; in Quebec, the Civil Code of Québec acts as a functional equivalent)
What you need
To enforce your trademark rights, you need the following:
- your valid (registered) trademark
- proof that another party is using the same or a similar trademark that might cause confusion
When to sue for trademark infringement The deadline to start a lawsuit depends on the laws where the infringement took place. For cases where the infringement, and damages, all occurred within a single province, the provincial limitation period of that province applies. For example, in Ontario, the limitation period is 2 years, and in Quebec, the limitation period is typically 3 years. In other provinces, the deadline for starting a lawsuit can be as long as 6 years. If the cause of the action, including damages, arises in more than a single province, the deadline is also 6 years from the act of infringement.
If you are thinking about starting a lawsuit for trademark infringement, you should consider consulting an IP lawyer for more details.
Get professional help
Solving conflicts involving IP rights is often complex. Consult an IP professional, such as an IP agent or lawyer, to discuss the next steps if you believe your IP rights are being infringed upon.
If IP infringement is happening in another country, a Canadian IP professional may be able to coordinate with an IP professional in the other country to enforce your IP rights.
Source: https://ised-isde.canada.ca/
