Related IP and Common Law Rights Affecting Trademarks
This domain tests how trademark rights interact with passing off, depreciation of goodwill, copyright, industrial designs, domain names and misleading advertising. The exam expects you to choose the right cause of action and plead the correct elements.
Passing off and depreciation
Passing off exists at common law and under s. 7(b) of the Act. The elements are goodwill or reputation in Canada, misrepresentation likely to deceive, and damage. Section 22 protects a registered trademark from use in connection with wares or services that is likely to depreciate the goodwill attached to the mark; confusion is not required, but the mark must be registered and used in the relevant way. Section 20 is the core infringement provision for confusing use.
Copyright and designs
A logo may be an artistic work protected by copyright. Ownership does not automatically belong to the brand owner if an independent designer created it; an assignment or employment relationship must be documented. Industrial design protection may cover shapes, configurations or ornamentation, but functional features are not trademarkable.
Worked example
A competitor copies a registered logo and packaging for a famous Canadian coffee brand. The brand owner can plead s. 20 infringement if the use is confusing, s. 22 if the use is likely to depreciate goodwill, and passing off if Canadian goodwill and misrepresentation are shown. Copyright may also subsist in the logo, but if the designer was an independent contractor, the owner needs an assignment. The strongest pleading combines the registered mark, s. 22, passing off and copyright, with evidence of goodwill and damage.
Domain names and other rights
For .ca domain names, the CDRP applies; for generic top-level domains, the UDRP applies. Personality rights, official marks and Competition Act misleading advertising may also overlap with trademark claims.
Traps
Assuming copyright automatically belongs to the brand owner; pleading s. 22 without a registered mark; proving passing off without Canadian goodwill; confusing a domain name dispute with court litigation; and overlooking official marks or Competition Act remedies.