Lawyer on ski jumping
victory—in court
PAGE 4

COVERAGE CRISIS

The innocent co-insured
PAGE 9
ONLINE DEFAMATION
How can municipal
politicians deal with it?
PAGE 13
SPRING CLEANING

ARNOLD CEBALLOS TORONTO

In a case closely watched by trade-marks practitioners both inside and outside Canada, the Supreme Court of Canada has clarified the test for trade-mark confusion, as well as the relationship between common law trade-mark rights obtained through use and rights obtained through registration. In doing so, the court’s decision may also lead to less of a reliance on surveys and experts in trade-mark cases in Canada.

The case involves a dispute by two companies operating in the retirement industry. One, Masterpiece Inc., used the trade-mark “Masterpiece” starting in 2001 in Alberta, while the other company, Ontario-based Alavida Lifestyles Inc., filed a trade-mark application in 2005 based on its intention to use the mark “Masterpiece Living” for the same type of services. Alavida eventually began using its mark in Ontario in 2006 and obtained its federal trade-mark registration in 2007.

When Masterpiece tried to
obtain its own trade-mark regis-
trations for “Masterpiece” and
“Masterpiece Living” in 2006,
the Trade-marks Office refused
to register them, on the basis of
the previously-filed Alavida
application. Masterpiece then
decision on, among other things,
differences in how the respect-
ive marks were actually used
and the fact that choosing a
retirement residence was an
important and expensive deci-
sion requiring careful research
by consumers. The Federal
Court of Appeal upheld the trial
judge’s findings, with a major
focus of its reasons being
whether Masterpiece’s plans to
expand into eastern Canada
were relevant to the determina-
tion of confusion and conclud-
ing that they were not.

In a unanimous 7-0 decision, the Supreme Court allowed Masterpiece’s appeal and ordered the expungement of Alavida’s trade-mark registration. The court has reiterated that the Canadian trade-marks regime is national in scope, confirming that the owner of a registered trade-mark is entitled to the exclusive use of the mark throughout Canada. However, to obtain such protection, the court noted that the Trade-marks Act requires that the test for confusion be based upon a hypothetical assumption that the marks being considered are used in the same area, irrespective of whether this is actually the case. As a result, geographical separation, as in this case, does not play a role in the hypothetical case, according to the court.

“In order for the owner of a registered trade-mark to have exclusive use of the trade-mark throughout Canada, there cannot be a likelihood of confusion

Confusion should not
be possible anywhere
in the country: SCC
Kelly Gill, who represented the successful appellant, says upholding the Federal
Court of Appeal decision could have led to a first-to-file system as opposed to
a first-to-use system for trade-marks.
PAUL LAWRENCE FOR THE LAWYERS WEEKLY
See Masterpiece Page 2
THE LAWYERS WEEKLY
Vol. 22, No. 27 NEWS FOR THE LEGAL PROFESSION December 6, 2002
THE LAWYERS WEEKLY
VOL. 22, NO. 27 NEWS FOR THE LEGAL PROFESSION DECEMBER 6, 2002
applied to the Federal Court to
expunge the Alavida registration
on the grounds that it should
have never been issued, since it
was confusing with Master-
piece’s previously used common
law trade-mark.

Clear that clutter at work
PAGE 21
THOMAS CLARIDGE TORONTO

Attempts by the Law Society of Upper Canada (LSUC) to deal with an “articling crisis” have been unsuccessful, to the point where at least one in eight current applicants for articling positions has been unsuccessful.

In a report to the law society’s
May Convocation, Diana Miles,
Director of Professional Develop-
ment and Competence, disclosed
that as of last March 31, 1,721
applications had been processed
for LSUC’s 2011 Lawyer Licens-
ing Process and it was antici-
pated that the number will con-
tinue to increase until a deadline
of August 31.
The report showed that as of
the end of March, 214 of those
1,767 new applicants, or 12.1 per
cent, were “unplaced.” However,
that figure did not include appli-
cants who had applied earlier.
“The Law Society does not con-
tinue to track unplaced candi-
dates after the entry year into the
licensing process. Therefore, the
statistics provided do not reflect
those candidates who may still be
searching for a placement from
previous licensing years.”
The 12.1 per cent is up sharply
from the previous three years.
The comparable figures were just
81 of 1,391 applicants in the

Articling positions scarce: Law Society of Upper Canada

See Articling Page 24

THE LAWYERS WEEKLY

VOL. 22, NO. 27 NEWS FOR THE LEGAL PROFESSION DECEMBER 6, 2002

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