Legal Question in Intellectual Property in Canada

Tricky International Trademark questions

I am trying to investigate what approach there may be to filing a suit for damages.

Company A is a small publishing company which sells how-to books worldwide. Company B is a non-profit company which teaches topics covered in company A's books and therefore has links back to company A's website. Company B also operates worldwide. Both A and B are registered in the USA. Company C in Canada has started a website in the same trademark class and is clearly infringing company B's legally filed US federal trademark and soon it's Canadian trademark as well. Consumers who are looking for company B's website may be diverted to company C due to the infringement and therefore not find the links to the books of company A. Company B is currently pursuing legal action against company C but:

Is there any legal course company A could pursue to recover damages in lost sales over the infringement of company C?

Or:

Is there any legal course the author of the books of company A could pursue against company C to obtain damages for his reputation? (The how-to books of company A make several references to the website of company B. Those readers diverted to company C will not find what they are looking for and so the author loses credibility.)


Asked on 3/21/04, 9:45 pm

1 Answer from Attorneys
D. Alexander Floum, Esq.

Re: Tricky International Trademark questions

There certainly may be a way to sue for damages. However, you may be jumping to conclusions, and you need a full trademark analysis.

Specifically, the fact that C's and A's and B's products are in the same class is not necessarily the legal test. Whether consumers are likely to believe that the products all come from the same source is the test.

In addition, an analysis needs to be performed concerning other facts, including whether A's mark is "famous", and whether the companies conduct business via the internet.

I teach trademark law to other lawyers and to law school students, and I am the president of the intellectual property section of the Contra Costa Bar Association.

Contact me if you would like further information.

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Answered on 3/22/04, 12:39 pm


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