Supreme Court of Canada safeguards rights of prior trademark owners


Cynthia Rowden and Catherine Lovrics

Canada's Supreme Court has issued an important trademark decision that will be welcomed by trademark owners and practitioners. Cynthia Rowden and Catherine Lovrics explain.

The Supreme Court of Canada issued a decision in May 2012 regarding rights to registration between competing applicants, and the impact of prior use and geographic differences between the parties. The decision rectified Federal Court trial and appeal court decisions that many trademark practitioners felt were based on a flawed understanding of the Trademarks Act. The decision also has cautionary words about the use of survey evidence.

In Masterpiece Inc v Alavida Lifestyles Inc, both parties were in the retirement residence industry, but separated by thousands of miles (Calgary and Ottawa). In 2001, Masterpiece began using both a corporate name and series of marks that included Masterpiece, some with the word Living. In December 2005, Alavida filed an intent-to-use application for Masterpiece Living and began using the mark in January 2006.

Masterpiece applied to register Masterpiece marks in 2006, but the applications were refused based on Alavida’s earlier application. Before the Trademarks Office, the first-filed application will proceed to advertisement, regardless of earlier rights in a subsequent application. As in the US, the other applicant must oppose or take other steps to preserve its rights.

prior trademark owners, Masterpiece Inc, Alavida