Originally from:
Intellectual Property Law of Canada - 2nd Edition - Hardcover
§ 8.01 Introduction to the Canadian Law of Passing Off
and Unfair Competition
Traditionally, the doctrine of passing off, which is based on tort law,
addressed “the simple wrong of selling one’s goods deceitfully as those
of another.. . .”1 A typical plaintiff in a passing off action would therefore
seek protection from the damage, actual or likely, caused to his business
or goodwill by the likelihood of deception. However, the doctrine of
“passing off” has not remained stagnant in Canada, and has been
“extended” to a wide array of commercial activities. As the Supreme
Court of Canada stated in Consumers Distributing, which is the leading
case on passing off in Canada:
The role played by the tort of passing off in the common law has
undoubtedly expanded to take into account the changing
commercial realities in the present-day community. The simple
wrong of selling one’s goods deceitfully as those of another is
not now the core of the action. It is the protection of the
community from the consequential damage of unfair competition
or unfair trading.2
Accordingly, in its current form, it may be more accurate to describe
passing off as analogous to “unfair competition.”
The statement of the tort of passing off that emerged from the
Consumers Distributing case followed closely the United Kingdom
position. The Court listed five necessary, although not always sufficient,
characteristics of a passing off cause of action: (1) a misrepresentation,
(2) made by a trader in the course of trade, (3) to prospective customers
of his or ultimate consumers of goods or services supplied by him, (4)
which is calculated to injure the business or goodwill of another trader
(in the sense that this is a reasonably foreseeable consequence), and (5)
which causes actual damage to a business or goodwill of the trader by
whom the action is brought or will probably do so.3 Over time, this test
was reduced to three components both in the United Kingdom and in
