In August, when Apple Inc. asked a small Canadian computer school to, in short, knock off the knockoffit, too, used an apple for its logoor face litigation, one might have thought that the California Goliath was picking a losing fight with a Vancouver-based David. American companies, after all, have been burned before by Canadian trademark decisionsby no less than Canada’s Supreme Court. Indeed, a 2006 decision shooting down Mattel Inc.’s request to keep a chain of Montreal barbecue restaurants from using the name Barbie’s was ominous for other American companies with well-known marks. The court noted that, by itself, a trademark’s fame does not provide absolute protectionthere has to be clear and convincing evidence of confusion. That’s a far cry from American law, which says that if a mark is famous enough, others can be prevented from using it without ever showing confusion. Demonstrating a likelihood of dilution is enough.
Yet at the same time, the traditional test of garden-variety trademark infringementlikelihood of confusionis “treated very similarly in both Canada and the United States,” says Mark Evans, managing partner of the Toronto office of Smart & Biggar/Fetherstonhaugh. So Apple’s dispute in Canadashould it ultimately wind up in courtmight go its way after all.
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