The Trade-marks Act contains a statutory codification of the common law claim for passing off. The Act provides that no person shall:
7(b) direct public attention to his wares, services or business in such a way as to cause or be likely to cause confusion in Canada, at the time he commenced so to direct attention to them, between his wares, services or business, and the wares, services or business of another;
7(c) pass off other wares or services as and for those ordered or requested.
In order to bring an action under these subsections, the misrepresentation must be in relation to a registered or unregistered trade mark. Apart from this, there is no significant difference between the statutory cause of action and the common law.
While the provisions of the Trade-marks Act that specify when trade marks or names are confusing are not strictly applicable, the courts have said that it is useful to consider them in applying the provisions. It has also been suggested that in order to obtain trade mark rights for the purpose of the subsections, a trade mark must be "used' as required by section 4 of the Act.
Under subsection 7(c) the substitution of a competitor's wares or services as and for those ordered or requested is actionable. In order to succeed with a claim of this nature the plaintiff must show that its wares or services are known and ordered or requested by a specific trade name or mark.
There are some interesting jurisdictional issues relating to these subsections. A claim for passing off is territorial in nature since it requires the plaintiff to establish goodwill in a specific area. The Federal Court does not have jurisdiction to hear an action claiming passing off unless it is interconnected with a claim over which it has jurisdiction. The provincial courts have jurisdiction to hear an action claiming passing off but these courts can only grant relief in a specific province. As a result, in many cases, bringing a claim under the subsections in the Federal Court, which can grant relief on a national basis, is the best method of proceeding.