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September-October, 2011 Vol. 101 No. 5 Back to TMR Main Page
 
Masterpiece v. Alavida: Supreme Court of Canada Clarifies Likelihood of Confusion Test and Role of Expert Witnesses
 
 
The Supreme Court’s decision in Masterpiece underscores
the first-to-use basis of Canada’s trademark registration system. Unlike countries with a civil law tradition (e.g., continental Europe and South America), the first person to use a trademark anywhere in Canada is entitled to register the trademark and all confusingly similar trademarks. Subject to limited exceptions,a Canadian registration grants to its owner the right to the exclusive use of the trademark―and all confusingly similar trademarks―throughout Canada. Pursuant to Section 17(2) (Canada’s incontestable registration provision), if an application for expungement based on prior use is commenced more than five years after the registration under attack issued, expungement will be ordered only if the owner of the registered mark adopted the mark with the knowledge of the prior use. Rarely considered Section 21(1)13 is the closest Canada comes to the principle set out in the
United States Court of Customs and Patent Appeals’ decision in Weiner King, Inc. v. The Wiener King Corp. In that case, the senior user received the rights to the WEINER KING trademark in New Jersey (where it had conducted business) but the junior user/first to register received the rights in the rest of the United States.
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