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CTA Trademark Agent study materials
CTA Trademark Agent study resources

CTA Trademark Agent: Trademark enforcement, infringement, and remedies

CTA Trademark Agent · Work through your exam, one topic at a time.

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Trademark enforcement, infringement, and remedies

Enforcement questions test the statutory causes of action, the confusion analysis, the choice of forum, and the remedies actually available in Canada.

Causes of action

  • Section 19 gives the owner the exclusive right to use the mark throughout Canada; section 20 makes use of a confusing mark an infringement, assessed under s. 6(5).
  • Section 22 protects against depreciation of goodwill - a separate cause of action that does not require confusion, but does require use of the mark in the s. 4 sense, goodwill, and a likelihood of depreciation.
  • Section 7 creates statutory passing-off and related remedies, which sit alongside the common-law action.
  • Canada grants no provisional rights for published applications; pre-registration conduct must be pursued as passing off.

Forum and remedies

  • The Federal Court and provincial superior courts can hear infringement actions; only the Federal Court can expunge under s. 57.
  • Interlocutory injunctions follow the RJR-MacDonald test: serious issue, irreparable harm, balance of convenience.
  • Remedies: permanent injunction, damages or an accounting of profits (the plaintiff elects), delivery up, costs. There are no statutory damages.
  • Border measures: a request for assistance to CBSA under the Act's anti-counterfeiting provisions.

Worked example

A competitor adopts a similar name for a related service in another province, advertising nationally online. Under s. 20, confusion is assessed with the s. 6(5) factors regardless of geography, and overlapping online advertising supports a finding of confusion even without a physical presence in the same province. If the marks are not confusing but the defendant's use erodes the brand's cachet, plead s. 22 as an alternative. Damages generally run from the date of registration.

Traps that cost marks

  • Assuming different Nice classes mean no infringement.
  • Overlooking s. 22 when confusion cannot be established.
  • Suing for damages covering pre-registration conduct.
  • Filing an expungement claim in a provincial court.