The Trademark Four(Mula): Enforcement And Risk Mitigation

• Published date: 10 July 2025
• Law Firm: Osler, Hoskin & Harcourt LLP
• Author: Ryan Holland, Ryan Howes, Daniel Hnatchuk and Barry Fong

Trademarks are important assets for any business. When it comes to trademark enforcement, options abound, which can sometimes be disorienting for the uninitiated. Without regular monitoring for unauthorized use of trademarks and, if necessary, enforcement of trademark rights, businesses run the risk of losing the distinctiveness of their trademarks and the scope of protection they afford. Conversely, it is essential for businesses to understand the potential for trademark missteps that can lead to costly legal claims.

Canadian trademark enforcement is founded on four categories of potential violations: infringement, passing off, depreciation of goodwill and false and misleading statements. Infringement and depreciation of goodwill require registered trademark rights, while passing off may be based on registered and unregistered rights. False and misleading statements do not require reference to a specific trademark. While these categories are mirrored in other jurisdictions, including the United States and Europe, Canadian trademark law has some unique qualities.

This Update sets out to provide a crash course on the "core four" of trademarks, so you can take steps to formulate an efficient enforcement strategy and avoid potential liability.

Infringement

Trademark infringement claims under sections 19 and 20 of the Trademarks Act may only be based on registered trademark rights.

Section 19 of the Trademarks Act provides that registration of a trademark gives the owner the exclusive right to use the registered trademark throughout Canada in association with the registered goods and services. Accordingly, section 19 grants the right to sue for unauthorized use of an identical trademark in respect of the same goods and services set out in the registration.¹

The elements required to prove a section 19 claim are thus: (a) the unauthorized use of the mark, where (b) the mark is identical to the one depicted in the registration and (c) the mark is used in association with one or more of the goods and/or services listed in the registration.

Section 20 of the Trademarks Act is broader in scope because it deems the use of a confusing trademark or trade name to constitute infringement of the owner's exclusive right to use the registered trademark.

Confusion between trademarks is defined at subsection 6(2) of the Trademarks Act, and subsection 6(5) sets out a non-exclusive list of the surrounding circumstances to be considered.² A trademark is confusing with another if its use is likely to cause the average consumer to wrongly believe that the goods or services associated with the trademarks originate from the same source.

In practice, the confusion analysis is applied holistically, with the facts in evidence bearing on the weight applied to the various surrounding circumstances. For example, the degree of resemblance between the trademarks is often the threshold question, but differences in the nature of the goods or services may mitigate the possibility of confusion.

The most common defences to infringement claims are to claim that the registration is invalid (whether in its entirety or with respect to the specific goods and services for which infringement is alleged), that the impugned trademark has not been used in accordance with section 4 or that the impugned trademark and associated goods and services are distinct from those listed in the registration.

Passing off

Passing off protects against the misappropriation of another's goodwill or reputation in the marketplace through public deception and is a claim that may be based on registered and unregistered rights. If your business has only unregistered trademark rights to assert, expect passing off to be the central point of discussion with counsel.

Tort of passing off

Passing off requires proof of three elements:

1. the existence of goodwill
2. a deception of the public due to a misrepresentation
3. actual or potential damage to the plaintiff³

Goodwill refers to the reputation and drawing power of a given business in the marketplace,⁴ and "connotes the positive association that attracts customers towards its owner's wares or services rather than those of its competitors."⁵ Passing off is based on unlawfully trading on another's goodwill or reputation through misrepresentations. When assessing the existence of goodwill, courts may consider a variety of factors, including inherent and acquired distinctiveness, length of use, surveys, volumes of sales and the extent and duration of advertising and marketing.⁶ Importantly, the tort of passing off only protects goodwill within the geographic area in which it was acquired (i.e., where the trademark was used).⁷

Misrepresentation may occur where another party represents any of the following:

1. that its goods, services or business are those of the claimant
2. that its goods or services have been approved...