Marketing and Sales Law 2

No person can use a registered mark in manner that it is likely to have the effect of depreciating the value of the goodwill

• Defendant used identical or similar mark in connection with wares or services
• Plaintiff's mark is sufficiently well-known to have significant goodwill attached to it
• The plaintiff's mark was used in a manner likely to have an effect on that goodwill
• It is likely that the use of the mark by the defendant will depreciate the value or damage the plaintiff's goodwill

Comparative advertising is advertising that involves use of competitor's trademark

• If statements about competitor's mark are untrue, can lead to claim under Trade-marks Act as also Competition act
• Can result in anti-dilution claim, but 'use' requirement must be met

• Damages
• Account of profits
• Injunction (einstwillige verfügung)
• Delivering up (etwas formelles übergeben)

A registered mark can be expunged if:

• It is no longer in use (Section 45)
• It is no longer distinctive (unverwechselbar)
• The mark was exclusively used by another party prior to registration and that party seeks to expunge the registered mark within 5 years form the date of registration

• Owner of registered mark can assign the mark
• Owner of registered mark can license the mark
  • Is a key feature in franchising
• Use of mark by franchisee is deemed (gilt als) to be use by franchisor

Certification mark

• Owner registers the mark and licenses it to parties whose goods or services meet defined standards

Distinguishing guise (Ausgezeichnete Erscheinung)

• Goes to the shape of goods or their packaging (CocaCola bottles, Toblerone bars)
• Registration can't be granted for purely functional features

• Registration of domain name doesn't provide trade-marks rights
• Abusive domain name registration can result in passing off or other trademarks claims
• Abuses of domain name registrations can also result in complaints under Uniform Dispute Resolution Policy
  • Complainant must show:
    • Has trade-marks rights in the domain name
    • The registered owner of the domain doesn't have a legitimate interest in the domain name (Critical commentary, and use of person's name are legitimate)
    • The domain name was registered in bad faith

• Governed by Copyright Act
• Protects the expression of an idea, but not the idea itself
• Owner of copyright has the exlusive right to:
  • Produce or reproduce the work (in any material form)
  • Perform or deliver the work in public
  • Publish an unpublished work
• Proteciton arises autobatically (no registration required, but must be connected to Canada or to a state that is a member of an applicable treaty)
• Protection extended to literary, dramatic, musical and artistic work
  • Work must be original and fixed
• Copyright exists for the life of the author plus 50 years. After that it becomes part of the public domain
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