Seattle Trademark Lawyer

Any likelihood of confusion with a prior trademark used in Canada can make a trademark registration vulnerable to expungement (cancellation) in that country.

That’s what the Supreme Court of Canada found last week in a relatively rare decision that clarified Canadian trademark law.

Many Canadian practitioners had believed that geography played a role in deciding whether a senior user’s user’s unregistered mark would affect a junior user’s ability to maintain its registration.

Not so.

As the Canadian Trademark Blog put it: “This result was contrary to what most practitioners in Canada assumed the test to be for likelihood of confusion in the context of non-entitlement, based on the wording of the Trade-marks Act, which makes no express reference to the geographic location of prior use in the relevant provisions of the Act.”

Speaking for the court, Justice Marshall Rothstein wrote that “[i]n order for the owner of a registered trade-mark to have exclusive use of the trade-mark throughout Canada, there cannot be a likelihood of confusion with another trade-mark anywhere in the country.”

In other words, if Owner A obtains common law trademark rights by using its mark before Owner B obtains its trademark rights, Owner A can get Owner B’s registration expunged in Canada — even if Owner A uses its mark in the Yukon Territory and Owner B uses its mark in Nova Scotia.

That result seems to be in line with trademark registration law in the States. Anyone here with prior rights who believes they would be “damaged” by the junior user’s continued registration may seek to have the junior user’s registration cancelled, notwithstanding the geographic location of the senior user’s use. The only practical limitation is the senior user must bring the cancellation proceeding within five years of the registration, which I understand is about the same in Canada.

The case cite is Masterpiece Inc. v. Alavida Lifestyles Inc., 2011 SCC 27 (May 26, 2011).