ABSTRACT
Section 22 of the Trademarks Act protects against the depreciation of goodwill caused by third-party use of a registered trademark. This ‘registered’ requirement limited the actionability of depreciation until 2006, when Justice Binnie loosened ‘use’ to include ‘sufficiently similar’ marks. The ramifications of this decision are most evident in parody case law, where defendants copy key features of but inherently do not use plaintiffs’ marks as registered. The broadened definition, though beneficial in certain instances, has also captured fair, non-commercial parodies that promote freedom of expression. More recently, Justice Fuhrer extended ‘use’ beyond trademarks to mere descriptions that ‘evoke# a mark, raising the question of how far courts can extend ‘use’ before section 22 intrudes on competing policy considerations. Parliament should modify the language of sections 4 and 22 of the Trademarks Act to clarify the commercial uses that depreciate the goodwill of a mark. Courts should revert to a modified ‘recognition’ test, assessing recognition, use, and fair use in discrete steps. Either recommendation would capture truly depreciating uses while allowing room for fair uses under the Trademarks Act.
Emily Chu, To Use, or Not to Use: Re-Evaluating the Definition of Trademark ‘Use’ in Depreciation of Goodwill Through the Lens of Parody Marks (2026) 57:1 Ottawa Law Review 47.
Leave a Reply