I recently read an article in Canadian Lawyer magazine discussing Chinese trade-marks here in Canada (article by Paul Jones of Jones & Co.).
The article described a recent Federal Court of Canada decision that revolves around the interpretation of trade-marks that have Chinese words/symbols as an integral part of the mark.
The facts are as follows: A business that operates nursing homes in the Toronto area registered a trade-mark that contained two Chinese characters as part of the design. The characters were transliterated in the trade-mark registration.
Subsequently the business discovered another business that was using the same two characters as part of its name. An action for passing off was started by the first business.
Part of the second business’s defence was that the only the Cantonese transliteration formed part of the registration, and not the actual characters themselves.
The whole mess will be determined at trial and the particulars of the decision (which was only an application for summary judgment – ie. that there was no defence and, as such, the plaintiff was entitled to a decision in its favour) are not all that relevant except to the extent that it appears a trade-mark registration of the characters themselves may have avoided the problem.
The migration of Chinese people to the Atlantic region is certainly not significant and, when compared to the migration patterns in Vancouver and Toronto, is positively insignificant. However, for businesses which identify the Chinese market as a growth area, the lesson here is to do appropriate due diligence in selecting a trade-mark agent (whether here in Canada or otherwise) when creating/registering trade-marks which have Chinese characters as part of the mark.
Posted by: |