VI. Trademarks and Passing Off
Lucie Guibault
A. Introduction
1. Legislative history
Trademark protection has a long history in Canada. It commenced prior to Confederation with the passage on May 19, 1860 by the Legislative Council and Assembly of Canada of An Act respecting Trade-Marks. That Act made it a misdemeanour to use the known and accustomed trademark, name, package or device of any manufacturer with intent to deceive, so as to induce the belief that the goods so marked were manufactured by the owner of the mark. Section 2 contained a definition of fraudulent use of trademarks, names, packages, or devices, as being a use identical with or so closely resembling another trademark as to be calculated to be taken for the true trade-mark by ordinary purchasers. Provision was also made for actions by the owner of a mark for damages.
Contrary to matters concerning ‘Patents of Invention and Discovery’ and ‘Copyrights’, the Constitution Act, 1867 is silent in respect of trademarks. Legislative competence in the area of trademarks and unfair competition can just as easily fall within the provincial power over ‘Property and Civil Rights’, pursuant to s.92(13) of the Constitution Act, 1867 or within Parliament’s power over ‘Trade and Commerce’ pursuant to s. 91(2). After Confederation, however, Parliament enacted the Act of 1868, entitled the Trade Mark and Design Act. Over time Parliament’s competence over trademarks has been discussed occasionally, but was never seriously contested. Trademark protection is generally seen as being intra vires the power of Parliament since it has the power to adopt general regulation of trade affecting the whole country.
This Act repealed the prior trademark legislation. It was periodically amended, until it was subsumed in the Unfair Competition Act, 1932. This Act was passed as an attempt to take a broader approach to acts of unfair competition. The Act proved unsuccessful: it had many contradictions, was difficult to interpret, and resulted in some unforeseen complications in jurisprudence. The Unfair Competition Act remained in force for just over twenty years, when it was replaced by the Trade Marks Act, 1953. For more than sixty years, the Trade-marks Act [r.s.c. 1985, c. P-4] remained relatively unchanged since its passage in 1953. During this period, the only international convention to which Canada was a party in the field of trademark law was the Paris Convention of 1883. It allowed Canada to maintain a number of particular features of its trademark registration system, some of which were inspired from the U.S. system, like the use-based registration.
Starting in 2014, the Canadian government passed a flurries of amendments to the Trademarks Act. Some of these were rendered necessary as a consequence of Canada’s decision to (finally!) accede to international treaties in the area of trademark protection, while others were required as measures of implementation of the trade agreements signed with South Korea