TRADE MARK DEPRECIATION IN CANADA
Daniel R. Bereskin, Q.C. *
In a famous 1927 Harvard Law Review article,1 Frank Schechter proposed
that trade mark law should include relief from harmful trade practices now
called dilution, in order to bridge the gap between traditional common law
remedies and the needs of modern commerce.
At the time of Schechter’s article, at common law it was difficult for a
plaintiff to succeed in an action for passing-off if the plaintiff and defen-
dant were not competitors. Typically injunctions were not granted where
the goods were considered dissimilar even if there was a logical connection
between them. For example, electric and blade razors were held not to be
and smokers’ pipes were considered to be dissimilar to ciga-
rettes and tobacco.
Famous trade marks fared better. The use of
bicycles was enjoined4 even although the plaintiff’s mark was known at the
time only in relation to photographic materials.
Although common law countries such as Canada continue to base their
trade mark law on proof of likelihood of confusion, the law has evolved
to encompass various forms of consumer confusion in addition to source
confusion, such as confusion as to whether the plaintiff has authorized or
endorsed the defendant’s product or is in some way associated with the de-
* Graduate of the University of Saskatchewan in Engineering Physics and Law; Queen’s
Counsel. He has served as Member of the INTA Board of Directors. Member of the Edito-
rial Board of The Trademark Reporter®. Member of the INTA Panel of Neutrals. Media-
tor/arbitrator with ADR Chambers. Author of more than fifty articles on various intellectual
property law subjects and the author of the chapter on Canada in the book “Famous and
Well-Known Marks” by Frederick Mostert. In each of 2006, 2007, 2008 and 2009 he was named
as “Trademarks Lawyer of the Year” worldwide by “Who’s Who Legal”. In 2007, he received
a Lifetime Achievement Award by WorldLeaders International IP Awards. Founding partner
of Bereskin & Parr.
1 (1927) 40 Harv. L. Rev. 813.
2 Magazine Repeating Razor Co. of Canada Ltd. et al. v. Schick Shaver Ltd.,  S.C.R.
In re Belgo Canadian Manufacturing Co. Ltd. and Trade Mark “Oxford” (1943-1945), 4 Fox
Pat. C 123.
4 Eastman Photographic Materials Ltd. v. John Griffiths Cycle Corporation Ltd. & Kodak Cycle
Corp. Ltd. (1898) 15 R.P.C. 105.