Canada rules on trademarks and geography
The Supreme Court of Canada has said that a Canadian trademark is invalid if a confusingly similar right has been used in a different part of the country.
Canada Supreme Court Justice Marshall Rothstein delivered the court’s decision in Masterpiece v Alavida Lifestyles on May 26.
Masterpiece and Alavida construct retirement homes in separate parts of Canada. Masterpiece, operating in Alberta, used its trade name and other unregistered trademarks before Alavida, operating in Ontario, applied to register ‘Masterpiece Living’ in 2005.
The Alberta company applied to register ‘Masterpiece’ and ‘Masterpiece Living’ as trademarks in 2006, but these were rejected on the basis of Alavida’s prior application.
The Canadian Federal Court dismissed Masterpiece’s application to cancel Alavida’s registration in 2008 because there was no likelihood of confusion between their marks. The Federal Court of Appeal upheld the decision in 2010.
The Federal Court of Appeal dismissed Masterpiece’s plan to expand into eastern Canada—effectively putting it in direct competition with Alavida—as irrelevant when determining confusion.
The International Trademark Association (INTA) voiced concerns about ‘geographical separation’ in trademark law and acted as an intervener in the case. Daniel Bereskin, a partner at Bereskin & Parr LLP, made INTA’s oral argument during the case.
He said that the Court of Appeal’s reliance on geographical separation as mitigating against confusion was “clearly contrary to Canadian trademark law and jurisprudence of the past 50 years”.
Overturning the lower court’s decision, Supreme Court Justice Rothstein said that Canadian trademarks are “national in scope”. A trademark owner can use a trademark right exclusively “in association with the wares or services to which it is connected throughout Canada”.
He added: “In order for the owner of a registered trademark to have exclusive use of the trademark throughout Canada, there cannot be a likelihood of confusion with another trademark anywhere in the country.”
Bereskin concluded: “The appellant produced various brochures showing its use of Masterpiece in Alberta and these were all published and distributed to the public before Alavida filed its proposed use trademark application.”
“Based on this kind of evidence, the lower courts should have asked whether it would have been confusing to the public in Alberta if [Alavida] had used Masterpiece Living in that same market at the same time. To ask that question is to answer it.”
