Last week the Supreme Court of Canada (SCC) released a significant trade-mark decision in Masterpiece Inc. v. Alavida Lifestyles Inc., 2011 SCC 27.  It represents a major review of the legal concept of “confusion” in trade-mark law, as well as the vexing question of registered versus unregistered or “common law” trade-mark rights.

In this case, Masterpiece starting using its MASTERPIECE brand in 2001 in Calgary, Alberta, for retirement residences. However, the brand owner did not register the marks. A few years later, another company, Alavida, based in Ottawa, Ontario, applied to register the mark MASTERPIECE LIVING for similar services, and that application matured to registration in 2007, claiming use since 2006. So we have unregistered marks used since 2001 in Calgary, and a registered mark used since 2006 in Ottawa. Which one should prevail? 

The SCC agreed with Masterpiece that Alavida’s registered mark (the later one, based in Ottawa) should be cancelled, based on confusion with the earlier unregistered mark. This is because the later registered mark failed to survive the confusion analysis, on the assumption that both marks are used in the same geographic area. In reality, the marks were never used in the same region. However, for an owner of a registered trade-mark to have exclusive rights to the trade-mark across Canada, that mark cannot be confusing with another previously used trade-mark anywhere in Canada.  Even if that previously used mark is not registered.  Put another way, an unregistered trade-mark in Canada can be the basis of a challenge to a registered mark.  

Lessons for business:

• This case makes it clear that common-law trade-mark rights are enforceable in Canada. That’s good news for brand owners. However, it’s also important to remember that with an earlier application and registration, Masterpiece would have avoided this lengthy and costly battle since their registration would have blocked the later entry of Alavida’s trade-mark application.
• The importance of effective trade-mark searching is critical to a successful trade-mark application. Consider clearance searches and an availaibility opinion as part of your risk mitigation strategies for the launch of a new brand, or the registration of a long-standing unregistered mark.

Calgary – 07:00 MST