This is the last in our series on the recent landmark SCC decision in Masterpiece Inc. v. Alavida Lifestyles Inc., 2011 SCC 27. There is one point that is worth emphasizing from this decision, and that relates to the question of when an earlier common-law or unregistered mark can trump a later registered mark. 

Bear with me as we get into the thickets of the Canadian Trade-marks Act. The SCC decision to expunge a registered mark rested in part on the analysis that prior “use” under Section 16(a) of the Act was sufficient to displace the later registration. To put this another way, use since 2007 of the trade-mark XYZ (No. 1) for shoes can be used to challenge and cancel a registration for the trade-mark XYZ (No. 2) for shoes, when that later registration of XYZ (No. 2) was based on use since 2009. With me so far? This comes straight out of the reference in the decision: “Because Masterpiece Inc.’s use preceded Alavida’s proposed use, Alavida was not entitled under s. 16(3) to registration of its trade-mark.” The ambit of Section 16(3) includes not only a mark that has been used in Canada, but also a mark that has been made known in Canada; and it includes any trade-name that had been previously used in Canada. The term “made known” has a special meaning. A mark is “made known” only if it is used outside Canada and (1) the associated products are distributed in Canada, or (2) the associated products or services are advertised in print or through “radio broadcasts ordinarily received in Canada”, and it has become well known in Canada by reason of the distribution or advertising. So this test has to be met in order for an earlier mark that is simply “made known” to trump a later registration.

It’s also worth noting that previous use or making known of a confusing trade-mark will not invalidate a registration if that mark or trade-name has been abandoned, and it’s up to the owner of the earlier mark to establish that he had not abandoned the confusing trade-mark or trade-name. 

Lessons for business?

• Full trade-mark clearance searches are an essential step before you apply to register your mark. However, to be effective these searches must include common-law sources that can catch marks that are used or “made known”. Even then, it’s important to understand that a search cannot necessarily reveal whether such a mark would meet the test described above, and further research may be required.

Calgary – 07:00 MT