Podcasting Legal Guide For Canada

This means that you can use the name and identifiable information about a person if they are the subject of your podcast, but not if you are using them to advertise or solicit for your podcast.

<span style="mso-bookmark: _Toc170033694">2.4       How Is Trade-mark Law Relevant? Trade-mark law protects consumers from being misled or deceived as to the source of goods and services, or the endorsement, sponsorship or affiliation of one good or service with another.

In other words, trade-mark law works to ensure that you can rely on particular branding to equate to certain product features. So for example, Joe Citizen cannot use the name CTV and apply it in a way that suggests that his podcasts come from CTV, or are endorsed by or affiliated with CTV if they are not.

While there may be little risk that you are going to use someone else’s trade-mark to associate with your podcast (‘cause you want to establish your own reputation, right?), trade-mark law can be implicated in what you do and say in relation to your podcast in other ways.

Because you may want to comment on a high-profile company or their branding, you should have some familiarity with trade-mark law so that you can minimize your risk of infringing trade-mark rights.

The purpose of trade-mark law in Canada is two-fold: to protect consumers from buying products from an unknown source; and to protect the trade-mark owner from commercial misappropriation of their mark and the goodwill associated with it.

For podcasters, trade-mark law is relevant where you use common phrases, logos, or brands in your podcasts. In doing so, you must ensure that your use of these words or phrases does not infringe a trade-mark owner’s intellectual property in their mark.

!!! 2.4.1      Infringement And Passing Off In Canada, there are two main categories of infringement in trade-mark law, distinguished according to whether the mark is registered or not.

The first category applies to any mark and is based on Common Law tort of passing off which is partly codified in section 7 of the Trade-marks Act.<span lang="EN-CA" style="font-size:12.0pt;font-family: "Times New Roman";mso-fareast-font-family:"Times New Roman";mso-ansi-language: EN-CA;mso-fareast-language:EN-US;mso-bidi-language:AR-SA;mso-bidi-font-weight: bold">[6] The second category applies only to marks that are registered, and is determined according to sections 19, 20, and 22 of the Trade-marks Act.

Passing off is determined in accordance with the following test from Ciba-Geigy v. Apotex.<span lang="EN-CA" style="font-size:12.0pt;font-family: "Times New Roman";mso-fareast-font-family:"Times New Roman";mso-ansi-language: EN-CA;mso-fareast-language:EN-US;mso-bidi-language:AR-SA;mso-bidi-font-weight: bold">[7] The owner of the trade-mark must first establish that there is goodwill associated with the mark.

Goodwill is a “business’s reputation, patronage and other intangible assets that are considered when appraising the business, especially for purchase. Because an established business’s trade-mark is a symbol of goodwill, trade-mark infringement is a form of theft of goodwill.”<span lang="EN-CA" style="font-size:12.0pt;font-family: "Times New Roman";mso-fareast-font-family:"Times New Roman";mso-ansi-language: EN-CA;mso-fareast-language:EN-US;mso-bidi-language:AR-SA;mso-bidi-font-weight: bold">[8] The owner of the mark must then establish that there has been deception of the public due to misrepresentation, and that there has been actual or potential damage.

Because trade-mark law is designed to protect the public from buying goods from an unknown source, it is important that there not be any confusion about the source of the goods associated with the mark.

This is why if you named your music-review podcast “The Rolling Stone Music Hour,” you may find that Rolling Stone magazine will be unhappy with you and perhaps send you a cease and desist letter (among other possible unpleasant things). If however, your podcast had to do with gardening instead of music (e.g., Rolling Stone Gardening Hour), your risk of infringement would be much smaller, because listeners are unlikely to think that the well-known music magazine was sponsoring your gardening-related podcast.

Registering a trade-mark gives the owner of the mark the exclusive right to use it in association with their wares or services. This right will be infringed where someone else uses their mark or a confusingly similar mark in association with similar wares or services, or where the mark is used in a manner that will depreciate the goodwill of the original owner.

Whether a mark is confusingly similar to an existing mark is determined in accordance with section 6(5) of the Trade-marks Act.<span lang="EN-CA" style="font-size:12.0pt;font-family: "Times New Roman";mso-fareast-font-family:"Times New Roman";mso-ansi-language: EN-CA;mso-fareast-language:EN-US;mso-bidi-language:AR-SA;mso-bidi-font-weight: bold">[9] In evaluating whether something is confusing, a court will look to the strength or inherent distinctiveness of the words.

For example, the use of the word “apple” in association with computers is an inherently distinctive word, whereas the use of the same word with respect to fruit is not so distinctive.

A second factor in determining confusion is the length of use of the marks, where a longer co-existence indicates a lower likelihood of confusion. Consideration is also given to the nature of the wares and services – are they the same type? – and the nature of the associated commerce – are they sold on the same shelf? Finally, the overall resemblance will be considered to determine the extent of the confusion.

It is important to note that confusion is determined from the viewpoint of the likely consumer, not the average consumer. This means that you can assume a reasonable amount of knowledge about the wares or services as well as the mark itself.

!!! 2.4.2      When Do I Need Permission? Generally you do not need permission to make an informational (also called “editorial” or “nominative”) use of a trade-mark.