In an economy where competition reigns, marketing, and a company's market share, is paramount to its financial health.
It is therefore not surprising that entrepreneurs fiercely defend their trademarks. In the event that their trademarks are used by third parties without proper authorization from the Intellectual Property (IP) holder, an action in "passing off" may be taken to remedy the situation.
What Does the Passing Off Procedure Aim To Do?
The judicial procedure for passing off aims to sanction a form of unfair competition and prevent any unwanted consequences, such as the loss of revenues, or customers who were misled into unknowingly purchasing a competing product that illegally used the trademark in question.
The judicial system has already determined the various conditions that a party must meet in order to obtain the Court’s intervention in such a situation.
Three Elements a Plaintiff Has the Burden to Prove
1. The existence of goodwill attached to the trademark concerned (i.e. the trademark being illegally imitated or duplicated);
2. The deception or confusion of the public due to this particular form of misleading advertising or marketing;
3. Actual or potential damages suffered by the IP holder.
Although these three conditions are all rigorously examined, the real dispute almost always pertains to the level of existence of public confusion, as it is the most subjective element of the three and the most difficult to assess by the Courts.
Finally, it should be noted that the existence of public confusion will be evaluated from the perspective of the “average consumer,” who has an imperfect memory when comparing the different brands on the market.
Me Harry Karavitis, Attorney-at-Law
Alepin Gauthier Avocats inc.