Common-law trademark rights (passing off)

A seller’s brand may be in daily use yet absent from the Register of Trademarks. That does not make it worthless or safe. See selling a business name that was never registered as a trademark.

What the sources say

• Section 7(b) of the Trademarks Act bars directing public attention to one’s goods, services or business in a way that causes or is likely to cause confusion in Canada with another’s, at the time it began doing so.
• Section 7(c) bars passing off other goods or services as and for those ordered or requested.
• Section 19 says registration, unless shown invalid, gives the owner the exclusive right to use the trademark throughout Canada in respect of the goods or services it is registered for, subject to ss. 21, 32 and 67.
• Section 48(1) says a trademark, whether registered or unregistered, is transferable.

What to ask

CIPO warns that a dispute over an unregistered trademark could mean a long, expensive legal battle. Ask what proof of use the seller can show, whether anyone else uses a similar name, and whether registration is planned. See trademark assignment.