How to Protect Your Canadian Trademark From Infringement

Dave MacDonell

Dave MacDonell

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But what exactly does this mean, you might ask. Well, put simply, this means that when you register a trademark in Canada, you have the ability to enforce it by bringing an action against infringers in the Federal Court of Canada. By contrast, when a trademark is not registered with the CIPO (the Canadian Intellectual Property Office) and simply exists at common law, an action to defend or protect a trademark can only be brought in a provincial court. You might think that a provincial court action would be easier. It’s a bit counter-intuitive, but, in fact, a Federal Court action to defend or enforce a trademark is MUCH easier, cheaper and less time consuming. Here’s why:

A provincial court action is called a “passing off” action – it is an action at common law. These actions tend to be very difficult to prosecute, they are lengthy, and extremely expensive. In order to bring a passing off action, you would need to hire an expert Canadian trademark lawyer. While there are many Toronto trademark lawyers experienced in litigation, their hourly rates tend to be high and fees can rack up quickly. It can be very difficult to prove that you are in fact the first owner of a trademark when it has not been registered. Your trademark lawyer will likely need to spend many hours just in producing evidence to show your prior ownership, let alone arguing your case in court. Finally, a “passing off” action in a provincial court is limited to the geographic area (i.e., the local area) in which the trademark is used, for example, Sudbury, Halifax or Regina.

On the other hand, the protection afforded to a registered trademark is not limited to the local geographic area in which the trademark is used. Unlike with a common-law “passing off” action, the owner of a registered trademark does not need to prove that he or she (or it, in the case of a corporation) owns the trademark. This is a presumption under law by virtue of the fact that you have been granted Canadian trademark registration by the CIPO. Your confirmation of registration is proof enough.

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