Well-known trademark

A brand can carry a reputation that is wider than its registrations. The idea can matter in a sale when a brand was used in another country before it reached Canada. The Act does not define “well-known trademark” as a stand-alone term; it uses “well known in Canada” in s. 5, which is federal law.

What s. 5 says

Section 5 deems a trademark to be made known in Canada by a person only if it is used by that person in a country of the Union, other than Canada, in association with goods or services. It also requires either distribution of the goods in Canada in association with it, or advertising of the goods or services in the printed publications or radio broadcasts it describes, and that the mark has become well known in Canada because of it. Section 16 refers to marks previously used or made known in Canada by another person when it deals with who may register.

Goodwill and what to check

Section 22(1) is separate: no person shall use a trademark registered by another person in a manner likely to have the effect of depreciating the value of the goodwill attaching to it. CIPO notes that, over time, trademarks come to stand for the reputation of the producer as well as the goods or services.

• Does the brand rely on a reputation that is not registered?
• What evidence shows distribution or advertising in Canada?
• Was the mark used in another country first?

To check registers before a purchase, see how to search the trademark and IP registers. A related idea is common-law trademark rights.