An Emerging Intellectual Property Paradigm

An Emerging Intellectual Property Paradigm

Perspectives from Canada

Queen Mary Studies in Intellectual Property series

Edited by Ysolde Gendreau

This book brings together contributions from reputed experts on Canadian intellectual property law which highlight its special features. Situated at the crossroads between legal traditions in Europe and the United States, Canada’s intellectual property laws blend various elements from these regions and can offer innovative approaches. The chapters focus primarily on patents, trademarks, and copyrights, covering both historical and contemporary developments. They are designed to bring perspective and reflection upon what has become in recent years a very rich intellectual property environment.

Chapter 2: A Watershed Year for Well Known or Famous Marks

Robert G. Howell

Subjects: law - academic, intellectual property law


Robert G. Howell* In 2006 concurrent decisions of the Supreme Court of Canada in Mattel1 and Veuve Clicquot Ponsardin2 provided a watershed in the protection of well known or famous marks in Canada even though neither expression ‘well known’ or ‘famous’ enjoys any definitional recognition as such in Canadian trademark law. The expressions are used in this chapter simply to identify marks that possess such characteristics. An absence of legal identification has, perhaps, allowed Canadian trademark law to lack overall direction or focus in affording protection. The focus here is on the two key dimensions that occupied the attention of the Supreme Court in Mattel and Veuve Clicquot Ponsardin. First, the concept of confusion within s. 6, and second that of depreciation of goodwill within s. 22, Trade-marks Act.3 To begin, however, reference to relevant international obligations should be considered. INTERNATIONAL OBLIGATIONS Articles 6 bis, Paris Convention4 and 16(2) and (3), TRIPs Agreement5 address * I thank Ms Lydia Zucconi (University of Victoria, British Columbia, 2007) for her research assistance and Ms Gail Rogers (University of Victoria) for her secretarial assistance. 1 Mattel, Inc. v. 3894207 Canada Inc., [2006] 1 S.C.R. 772 [Mattel]. 2 Veuve Clicquot Ponsardin v. Boutiques Cliquot Ltée, [2006] 1 S.C.R. 824 [Veuve Clicquot Ponsardin]. 3 Trade-marks Act, R.S.C. 1985, c. T-13. 4 Paris Convention for the Protection of Industrial Property, 20 March 1883 revised at Brussels, 14 December 1900; Washington, 2 June 1911; The Hague, 6 November 1925; London, 2 June 1934; Lisbon, 31 October...

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