A recent decision of the Ontario Court of Appeal highlights the importance of registering trademarks in Canada.

In Molson Canada v Oland Breweries Limited (19 CPR (4th) 201 (Ont CA)) the court dismissed Molson's claims of passing off by Oland further to the sale of Oland Export ale in Ontario. The court found that Oland's registration of its label as a trademark was a defence to Molson's claim, since the owner of a registered trademark has the exclusive rights to its use throughout Canada pursuant to Section 19 of the Trademarks Act. The court further ruled that where a competitor takes exception to the use of a registered mark it must attack the validity of the owner's registration, which Molson had failed to do.

No leave to appeal to the Supreme Court of Canada was sought. Accordingly, it is now settled law in Ontario that a registration, unless found to be invalid, constitutes a complete defence to an action for passing off.

The decision demonstrates the benefits of obtaining trademark registrations in Canada. In addition to the ability to stop others from using confusing trademarks, registration may provide some comfort as a shield. Where a competitor seeks to invalidate registration, the onus will be on it to show that the registration is invalid. Further, a registration can be invalidated after five years on the basis of prior use only if it can be shown that the registrant had knowledge of the prior mark at the time of filing. This decision reinforces the importance of monitoring the Register of Trademarks and the Trademarks Journal for potential confusing applications.

For further information on this topic please contact Brian P Isaac at Smart & Biggar/Fetherstonhaugh by telephone (+1 416 593 5514) or by fax (+1 416 591 1690) or by email ([email protected]).