Market Insight

Updates from an international team of correspondents who report on recent developments in trademark law and practice in their home jurisdictions, as well as strategic issues and those relating to brand protection, portfolio management and value creation.

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03 JUNE 2021

The burdens of popularity – Canadian examination times and new office practices

The first of a two-part article examining the Canadian Intellectual Property Office’s latest steps to address its ongoing backlog of applications examines recent practice notices aimed at increasing the speed and efficiency of domestic application examination.

19 NOVEMBER 2020

Bricks and mortar or is online in order? Federal Court of Appeal checks in to trademark use and hotel services

The Federal Court of Appeal has handed down its decision in Miller Thomson v Hilton Worldwide Holding LLP, which relates to a non-use cancellation proceeding against the WALDORF-ASTORIA mark. The decision helps clarify what it means to provide hotel and motel services in Canada.

12 NOVEMBER 2020

EMPOWER-ing trademark infringement claims against public authorities

A recent case demonstrates that public authorities can be held liable for trademark infringement, even where they have obtained protection for an official mark.

05 NOVEMBER 2020

Here for a good time… and a long time – current Canadian examination timelines

The pace of Canadian trademark prosecution – and particularly the time to first examination – has slowed significantly. Improvements are expected over the next few years, but in the interim applicants and their agents should adjust their practices and their expectations accordingly.

04 JUNE 2020

Call Me! CIPO rings up an enhanced telephone amendment practice for trademarks

On 20 May 2020 the Canadian Intellectual Property Office (CIPO) published a list of amendments to pending trademark applications that can be made over the phone. CIPO’s initiative is intended to efficiently address certain deficiencies found in trademark applications without issuing a formal examiner’s report, thereby improving the trademark application system for all users.

07 MAY 2020

Canadian Federal Court of Appeal applies new standard of review in appeal of registrar

The Canadian Federal Court of Appeal has released its decision in Clorox v Chloretec, its first opinion addressing important changes to the standard of review applicable to appeals of the registrar of trademarks. Observers were keen to obtain the court’s analysis, since the Canadian Supreme Court had recently modified the standard of review that is applicable to all administrative decisions in Canada (Minister of Citizenship and Immigration) v Vavilov.

23 APRIL 2020

New Nice Classification requirements – do classes matter in Canada?

Major amendments to Canadian trademark law took effect on 17 June 2019. One change introduced by these is the new requirement that all goods and services be categorised according to the Nice Classification system. The Canadian Intellectual Property Office has the final say with respect to the grouping and its final decision is not subject to appeal, which raises several questions for trademark applicants.

16 APRIL 2020

What businesses need to consider before a brand (re)launch: lessons from SUSSEX ROYAL

Although Prince Harry and Meghan Markle faced an unfortunate setback as they failed to successfully launch SUSSEX ROYAL, their actions can serve as a useful post-mortem on trademark issues that any business may face when they (re)brand.

09 APRIL 2020

Looking high and searching low – where did my Canadian filing go?

The time to first examination of new trademark filings at the Canadian Intellectual Property Office has ballooned over the last few years, owing to both a growth in the number of applications filed and a shortage of qualified examiners. As a result, those halcyon days when first Canadian examination could be expected within seven to nine months of filing are long, long gone.

26 MARCH 2020

CIPO’s practice notice alters extension period to respond to an examiner’s report

On 17 January 2020 the Canadian Intellectual Property Office issued a practice notice, which curtails applicants’ ability to obtain time extensions to respond to examiner’s reports.

12 MARCH 2020

Canadian official marks can infringe the rights of prior trademark owners

As Canadian trademark applicants may discover to their dismay, it is not just regular trademarks that can be cited against their applications – they may also be blocked by a range of prohibited marks, including the unique sub-category of official marks.

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