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[canadaguy]

Hi all,

I have a question regarding different languages, meaning, and trademarking in Canada.  Say I want to promote a business in Ontario called:

The Livre

Livre is 'book' in french.  Say there is already a organization or company in Quebec that goes by the title "Le Livre".  "Le" means "the" in English.  Would calling a business outside of Quebec "The Livre" be in violation of "Le Livre"?  Does mixing language exempt any trademark or is it the meaning behind the word that has the greatest implication.

Hopefully the question makes sense to someone.  Thanks in advance.  If you need more info from me please let me know and I'll try and gather as much detail as I can.

Best regards

[Myriam.Bahi]

Hello

I don't know the rule for Canada. I can just answer you according American Law.
- Le livre is a descriptive word. If it is used to designate a company that sell books, this name is not protectible by trademark law, unless the name acquired a secondary meaning = if a reasonably customer in Quebec associates the word Le livre to the company using the term.

So only if the word acquired a secondary meaning, trademark law applies to protect it and prevent any other company to use it IF  the use creates a likelihood of confusion i.e is used to designate similar goods of services.

In US, the interdiction is :
- local if the trademark is not registered = applicable only where the brand is used
- national if the trademark is federally registered.

To summarize :
1. Check if the brand acquired a secondary meaning
2. Assess if the goods designated by the brand as similar to the one you want to sell
3. Check if the brand is registered

[canadaguy]

Hi Myriam,

Thanks very much for your reply and for explaining it in a way that I can understand.  In reading this, coupled with the research I've done to date, it would seem that Canadian Law is similar to American Law.  I'll focus my research efforts on secondary meaning and registration.

Best regards

[Kaitlin]

Myriam has given good information, but another aspect to consider, and like Myriam I'm speaking of US law, is that The Livre" would only be descriptive as to businesses that deal in books, per her example. 

If "The Livre" were used instead for a business related to, say educational services, or for perhaps a book-sized laptop, e.g., it would likely be considered not descriptive but "suggestive", putting it in a stronger position with regard to its use for similar goods/services.  (And if it were used for a grocery store, it would be "arbitrary" and quite strong.)

But this is all assuming that you are using the mark for similar services to the existing user.  Marks are taken in context.  The whole point is to keep consumers from being confused as to the source of the services or goods by companies in similar businesses using similar names.  Generally speaking, the more distinct your businesses, the closer your marks can be without infringement.  The standard used to determine infringement here is "likelihood of confusion".  Most countries take a similar approach, including Canada, it appears.

(Searching "marques de commerce" and "likelihood of confusion", I came upon this (1991) article from a Quebec firm, THE ISSUE OF CONFUSION IN INFRINGEMENT AND OPPOSITION PROCEEDINGS: IS IT THE SAME? (ROBIC, Patent & Trademark Agents, Mtl., QC.), which you may find of interest.  It appears to deal with the question of how confusion may be treated by the agency granting trademarks versus its treatment by the courts in infringement litigation, but may give you some helpful examples of the sorts of things considered.)

----
Edit:  I apparently didn't enter the above link correctly at first, so it wasn't working.  It's fixed now.

[canadaguy]

Hi Kaitlin,

Thanks very much for taking the time to reply.  This following snippet helps me considerably:

"The whole point is to keep consumers from being confused as to the source of the services or goods by companies in similar businesses using similar names."

It makes sense and is a simple rule to judge decisions by.

Much appreciated.

[Kaitlin]

You're very welcome.  (Just remember that the quote should be taken as a rough and general guide.  Individual situations, taken in light of years of court and agency decisions, may be interpreted to present a likelihood of confusion where lay people might not expect it.)