Industrial and Intellectual Property

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Industrial and Intellectual Property

Pr.: Gold

Tuesday and Thursday: 11:35-12:55

Office: Room 201, 3661 Peel

-Tel: 398-6636


-Hours: by appointment

-No final exam: 24 hour take-home, 5 pages typed, double-spaced


-IP constitutes today, in many cases, the primary assets of most corporations. Interest in IP has developed in the mid-1990s.

-IP space includes: books, paintings, how one plans the day, list of friends etc. The primary criteria is that the thing to be protected has an intangible mental aspect.

-Overlapping spheres within IP space:

  1. Copyrights: authenticity of an idea, painting, song etc.

  2. Trademarks: control over use and commercialization of symbols, names, color scheme, that are related to a product or service etc.

  3. Patents: over use and exploitation of computers, cars and all inventions, etc.

-NOTE: lots of stuff is not protected in IP space, there are many things that do not fall in the three spheres. The question is therefore why is no protection afforded? Is it out of neglect, impossibility, purpose?

-NOTE: there is also significant overlap between the three spheres: computer programs can be both patent and copyright, phrases such as 'Here’s Johnny' [Carson] can fall in more than one sphere.

-NOTE: patents and copyrights are competitive schemes: cannot be in both at the same time. Consequently we need to consider what are the advantages of one over the other.

-We will look at the three spheres/regimes separately, then we will look at them comparatively:

  • Differences,

  • Similarities,

  • Limitations,

  • History of IP,

  • Need/purpose of IP law and the regimes,

  • National and international aspects,

  • Cross-influences

-One significant sticking point is who governs IP, who resolves IP issues. Acts are present, but who decides on issues of infringement: govt, courts, private actors?

-NOTE: Another means of protecting IP is K law. A definition that is useful in this context is that of property rights: relationship between a person and everybody else, a right of exclusion, an absolute veto on activities that does not require justification: this is to some extent the same for K and property law.

-NOTE: patents, trademarks and copyrights are local and not international; must get patents, trademarks and copyrights in all countries in order to have intl protection. Thus, for example, a US TM means nothing in Canada.

Passing Off and Trademarks

  • Essence of both PO and TM is to protect goodwill as it is embodied in a mark

  • Passing Off: Protecting the goodwill that is embodied in the use of the mark (mark is in relation to a product or service, and the impression of the product or service that is conjured up in the mind of the consumer when he/she sees the mark is the goodwill). PO is a CML notion that operates within a statute when it becomes a TM

  • Trademarks: Protecting the goodwill – present, future and to some extent past – embodied in the use of a mark, TMs afford protection via registration.
  • What constitutes a mark: any word, name, symbol, phrase, colour scheme, design etc. that connects a product or service with a manufacturer— anything that invokes a name or service or thing.

  • Goodwill is the recognition/association made in the minds of consumers between a name (producer) and a product or service. This is acquired over time with the use of a mark.

  • Distinction between TM v. R: R is registered trademark, TM is the CML passing off action (i.e. it is not registered). Both essentially cover the same things, both it is easier to prove a R than it is to prove a TM, simply because it is registered.

Marks and Guises:

  • In both PO and TM, the marks can be a variety of things: works, phrases, designs, shapes, “get-up” (packaging via which the product or service is advertised and sold), colours?, sounds?

  • There is also something called a certification marks or “extended passing off”: this is connected to a class of goods, the standard of quality of products (ex: protection of word 'champagne' in opposition to mere sparkling wine, ISO companies)

Passing off: An Overview

-CML notion incorporated into federal law

-No person shall:

  • (b) direct public attention to his wares, services or business in such a way as to cause or be likely to cause confusion in Canada, at the time he commenced so to direct attention to them, between his wares, services or business and the wares, services or business of another (s. 7 (b) of the TMA)

  • There is some issue of constitutionality in this: civil rights and property are a provincial jurisdiction, not a federal one.

  • This section provides both the advantages of PO and TM, one need not choose between the two

What passing off prevents:
  • Use of name or get-up directly used to sell competing products

  • Dilution of distinctiveness of name

  • PO is only valid in regions where product or service is recognized, not in regions where the product or service is unknown.

  • Essentially it prevent people from using your mark or a similar mark such as to cause confusion about the product or service being consumed (confusion is terms of origins, quality etc)

  • Dilution: making the word become generic

Remedies afforded by PO:

  • Damages:

    • Lost profits

      • Loss of trade

      • Damage to reputation

      • Harmful association

      • Loss of opportunity to licence

      • Inability to expand

    • Accounting of profits: what the other person gained (person guilty of the PO), not necessarily what the person lost (person subject to PO).

  • Injunction

Elements of passing off:

  • Must have goodwill or reputation attached to goods or services

  • There must be misrepresentation by defendant to the public leading or likely to lead to conclusion that goods or services are those of plaintiff

  • The above must result or be likely to result in damages from belief engendered by misrepresentation

Origin of the Mark:

  • Need not prove that the reputation in goods derives from its origins in a particular supplier but simply that goods have the same origin even if unknown (consumer must believe that the goods are from same origin [producer], even if they don't know who or where the supplier is).
  • No need to show who controls the mark, no need to determine who the legal entity that owns the mark is, simply need to show that there is a common origin

  • Ex: Coca-Cola products are all associated to the name and are believed to come from the same place. This is all that is necessary; there is no need to demonstrating who actually owns Coca-Cola in Canada

Distinctiveness vs Descriptiveness:

  • Normally, descriptive word cannot be protected but where word acquires a secondary meaning distinguishing one’s goods or services from that of others, one can obtain protection. In other words, the mark must be either distinct or its use have acquired a secondary meaning above and beyond the mere descriptive role it provides.

  • When used to distinguish rather than functionally describe, can give rise to PO action.

  • EX: Camel hair belts: belts made out of camel hair (this is an actual case) (became distinctive thru time and use)

Becoming Generic:

  • If a name used too broadly, it loses its distinctiveness and becomes generic, at which point one cannot argue that it is distinct but rather has become descriptive.

  • EX: Thermos, shredded wheat


  • As long as you use it, the mark is valid.

  • Accordingly, must first use it before can claim protection under PO.

  • Basic rule: “use it or lose it”

Who must be confused?

  • Whose confusion counts for passing off? Presumable those of the average consumer, not those of the average distributor. And here we refer to the 'average' consumer, not the professional or learned consumer (professional buyer for ex, who is likely to be more aware of the origins of a particular product or service)

Trademarks: An Overview

-Affords legislative protection, as opposed to the CML concept of PO. A trademark is a signifier: we do not care about it for its own sake, but rather for what it refers to.

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