Where Does Canada Stand On Fame?

Trademark owners should apply to register their famous marks now, to be able to take advantage of the incoming customs regime

Unlike the US Trademarks Dilution Revision Act 2006, the Canadian Trademarks Act does not define what constitutes a 'famous' mark; in fact, the act is silent with respect to fame. As a result, Canadian courts have been left to address famous marks through broad language in the act's confusion provision and also in its depreciation of goodwill provision. The Supreme Court of Canada (SCC) specifically addressed famous marks in two landmark decisions issued on the same day in 2006, altering the landscape of famous mark protection in Canada.

Supreme Court of Canada and its pronouncements on famous marks

In its decisions in Mattel Inc v 3894207 Canada Inc (2006 SCC 22) and Veuve Clicquot Ponsardin v Boutiques Clicquot (2006 SCC 23), the SCC provided that the question of confusion to be determined depends on "all the surrounding circumstances" (Section 6 of the act lists a number of factors to be considered in assessing likelihood of confusion, including the "degree of resemblance" of the marks in "appearance or sound or in the ideas suggested", as well as "all the surrounding circumstances"). In Mattel, the Barbie doll maker had appealed a Trademarks Opposition Board decision that allowed registration of BARBIE'S in relation to restaurant services. The SCC upheld that decision, agreeing there was no likelihood of confusion given that:

the parties goods and trading channels were different; there was a low degree of inherent distinctiveness in the BARBIE mark; the design component of the opposed mark; and there was no evidence of actual confusion, licence or association. In Veuve Clicquot, the champagne maker claimed infringement by a chain of women's clothing stores. The champagne maker alleged that the use of CLICQUOT by the clothing stores would depreciate the goodwill associated with its VEUVE CLICQUOT mark (Section 22 of the act provides that no person shall use a registered trademark in a manner "likely to have the effect of depreciating the value of the goodwill" attaching to the mark). The SCC found that the VEUVE CLICQUOT mark was famous, and therefore could transcend the goods it was normally associated with to some degree. After considering all of the surrounding circumstances, including the fame of the mark, the lack of consumer confusion despite the brands co-existing for many years, the degree of similarity...