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Two recent cases, Canada v. Oland Breweries Ltd./Brasseries Oland Ltée and Kirkbi AG v. Ritvik Holdings Inc./Gestions Ritvik Inc. have inspired a resurgence of debate about whether, or in what circumstances, it is necessary to demonstrate that the defendant had an "intent to deceive" in order to be successful at a passing-off action. The article below reviews the history of the debate, the specific case law and draws conclusions about likely future directions. The first part of the article briefly describes the common law tort of passing off and the historical role of "intent to deceive." The original conceptions of passing off appear to have included "intent to deceive". However, a second "class" of passing off evolved in which such intent was not required. This evolution appears to have arisen out of a clarification that the law of passing off was intended to protect not just proper use of the mark, but the goodwill in the mark. This thinking, regarding "intent to deceive", has more recently spilled into applications of Section 7 of Canada's Trade-marks Act, which was an update of an earlier section in a differently-named Act. The second part of the article reviews commentary by judges on whether or not "intent to deceive" is necessary for a finding of passing off. The weight of modern case law leans toward the view that it is not necessary. It is strengthened by the fact that the Supreme Court of Canada has explicitly taken a position against the necessity to prove "intent to deceive". The continuing attachment to intent by some interpreters of Section 7 has probably been fuelled by ambiguities of the English language combined with empathy for seemingly honest traders. However, as described in the third part of the article, even if evidence of "intent to deceive" is not necessary, it has evolved not as a criterion of necessity, but as an influence on courts' views of credibility, fairness, and appropriate damages. As for Molson and Lego, the trial courts' reliance in those decisions on absence of intent was rendered irrelevant on appeal.
1. THE COMMON LAW TORT OF PASSING OFF AND THE EVOLUTION OF "INTENT TO DECEIVE"
The law of passing off arose in the 19th century to prevent unfair trading....