“The challenge of trademark law in Canada’s federal and bijural system”, in Ysolde Gendreau, ed., An Emerging Intellectual Property Paradigm: Perspectives from Canada, Queen Mary Studies in Intellectual Property Law, Cheltenham, UK: Edward Elgar, 2008, 3-21
Canada’s constitution divides jurisdiction over the full range of legislative subject matter between federal and provincial governments. While intellectual property subjects have typically fallen within federal jurisdiction, some aspects of intellectual property protection are provincial in nature. This is particularly the case in the area of trademarks. Further, Canada is a mixed jurisdiction. While the three territories and nine of the ten provinces draw on the common law legal tradition, Quebec’s private law is drawn from the French civil law tradition. This federal and bijural nature of Canada’s legal system presents some challenges for trademark law. The challenges cut across a variety of lines. This book chapter explores the issues which arise from the tension between the federal and provincial levels of government and between the co-existing common and civil law traditions. Primary focus is given to the issue of the division of powers. The tension between jurisdiction over registered and unregistered marks is explored. Issues such as the constitutionality of various provisions of the Trade-marks Act, and the Trade-marks Act itself are considered, as well as the interrelationship between provincial legislation governing business names and registered trademarks. The paper also explores the harmonization of principles of “passing off” in the private law of both Quebec and the common law provinces.