Law Times

PAGE 10 Despite similarities, Canada and U.S. take different approaches to IP matters FOCUS How do our trademark laws compare? BY JULIUS MELNITZER For Law Times A lthough there are many similarities be- tween Canadian and U.S. trademark laws, there are signifi cant philosophical and other diff erences that Canadians operating south of the border should be aware of. "For example, it's a little easier for famous marks to stand up in the U.S.," says Neil Henderson of Borden Ladner Gervais LLP. "In Canada, we're a little more egalitarian with something of a who-cares-if- you're-famous attitude." From a philosophical per- spective, U.S. trademark law is based more on the theory of the quality of the goods and services while Canadian law relies more on their source. Th e United States also lacks a scheme for registration with- is well known," says Sheldon Burshtein of Blake Cassels & Graydon LLP. U.S. federal registration is also not available unless the goods bearing the trademark have crossed state or national borders or the services relate to interstate or foreign commerce. "In Canada, local use is suffi cient to obtain a federal registration," Burshtein says. As well, there are trade- mark registers in most U.S. states primarily for marks not used in interstate commerce. Canada has no provincial trademark registers. Th e United States has a It's easier for famous marks to stand up in the United States, says Neil Henderson. out use, something that exists in Canada. "In Canada, registration is available simply if the trademark 10-year registration term as opposed to 15 years in Canada. Renewal in Canada doesn't require proof of use, whereas such evidence is nec- essary south of the border. Otherwise, U.S. rules auto- matically cancel registrations on their sixth anniversary unless the registrant fi les evidence that the mark is in use in interstate commerce or commerce with the United States within the sixth year. A registrant may also demonstrate that non-use is ex- cusable due to special circum- stances. Registrants who fi le mate- rials demonstrating use in the sixth year can, in certain cases and within the same time lim- its, fi le declarations that the trademark has been in continu- ous use in interstate or foreign commerce for a period of fi ve years subsequent to registra- tion. "Th is may render the reg- istration incontestable in the sense that it may become im- mune to cancellation on cer- tain grounds if attacked by a prior user," Burshtein says. A supplemental register ex- ists in the United States. Th e register, which has no counter- part in Canada, is intended for things like descriptive marks that aren't registerable on the principal register. "While the supplemental register can prevent the regis- tration of confusing marks, it provides only limited rights to enforce the registration," Bur- shtein says. Unlike most of the rest of the world, Canada doesn't have a classifi cation system that separates the types of goods and services in association with which a trademark may be used. Th e United States also recognizes collective marks such as those used by members of an association or a union. Canada does not. Trademark licensing be- tween related companies is much simpler in the United States. Whereas Canada re- quires a licence in such cases, American law stipulates that where a company uses a mark controlled by a related busi- ness, the use inures to the ben- efi t of the company that con- trols the user. "On the other hand, a Cana- CANADIAN PATENT REPORTER Edited by Marcus Gallie, Ridout & Maybee LLP Fourth Series (Volumes 1 to 65): Edited by Glen Bloom, Osler, Hoskin & Harcourt LLP First, Second and Third Series: Edited by Gowling, Strathy & Henderson Founding Editor: Gordon F. Henderson, C.C., Q.C., LL.D. Let the experts help you to narrow your search and save you research time. Canadian Patent Reporter has been Canada's leading intellectual property law report since 1942. This renowned resource, available online and in print, includes precedent-setting intellectual property law judicial and board decisions from across Canada. This publication provides practitioners with the leading decisions on patent, industrial design, copyright and trade-mark law. Topical catchlines in bold print show the key issues involved in each decision. Expert case selection, editing and headnoting are a tradition with Canadian Patent Reporter. Weekly updates via email and in print, plus an annual cumulative index volume, ensure that this publication continues to be the prime reference source for intellectual property case law. INCLUDES EREPORTS (weekly electronic pdf version) Full service subscription (parts and bound volume) $403/vol • 9 vol/yr P/C 0325094999 • ISSN 0008-4689 Prices subject to change without notice, to applicable taxes and shipping & handling. Stay current as cases are issued with eReports emailed weekly to your desktop, with topically indexed case summaries linked to the full text judgments. Visit canadalawbook.ca or call 1.800.565.6967 for a 30-day no-risk evaluation dian trademark can be assigned separately from the goodwill of a business," Burshtein says. "In the U.S., trademark rights can- not be transferred apart from goodwill at all." Th e scheme of geographi- cally limited concurrent third- party use is also more liberal in the United States, which features less restrictive rules on comparative advertising with trademarks belonging to others. Finally, U.S. trademark law prohibits the dilution of a fa- mous trademark. Dilution, defi ned as a diminution of a mark's capacity to identify and distinguish goods and services, can occur even if there's no in- fringement. "But Canada does not recognize the concept," Burshtein says. "What the owner of a registered mark can do in Canada, however, is pre- vent depreciation of the good- will attributable to another's use of the mark." Despite the diff erences, there's one very important way in which the Canadian and U.S. systems converge: both are fi rst-to-use, as opposed to fi rst-to-fi le, countries. "Generally, countries whose legal systems originate in Brit- ain are fi rst-to-use, whereas al- most all others are fi rst-to-fi le," Burshtein says. In fi rst-to-use regimes, rights can be acquired through use or registration. In fi rst-to- fi le regimes, use of a trademark without registration is usually insuffi cient to prevent use or registration by others. "Th e person who fi rst fi les CANADA LAW BOOK® LT0131 www.lawtimesnews.com an application is the one who is entitled to registration in a fi rst-to-fi le regime," Burshtein says. "It is therefore important to consider the prompt fi ling of trademark applications in these countries." LT January 31, 2011 • Law Times

• Cover
• Stepping Up
• Parental Hostility
• Focus On IP/Trademark Law