Canada

Cannabis trademarks rocket, but how long will Canada lead the way? – exclusive data analysis

An analysis of Canadian trademark filings illustrates a sharp rise of applications in the cannabis sector; could that spike be replicated in the US in the future?

Cannabis trademarks rocket, but how long will Canada lead the way? – exclusive data analysis
9 Nov 2018

Why Canada’s unexpected trademark reforms are good news for brand owners

Trademark reforms proposed by the Canadian government are positive for brand owners, with mechanisms to tackle trademark squatting and modernised dispute resolution proceedings.

16 Oct 2018

How Canada’s new cannabis regime will impact a range of brands and law firms

With Canada set to legalise recreational cannabis, our latest opinion column looks at why trademark counsel should watch this development closely.

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25 Jan 2019

Litigation procedures and strategies: Canada

The Competition Act prohibits promoting a product by making a representation that is false or misleading in a material respect. This provision is typically asserted in conjunction with other causes of action under the Trademarks Act. Read more

26 Dec 2018

The intersection between trademarks and labelling laws: as illustrated by the Canadian food and cannabis industries

There are many Canadian trademark laws, regulations and statutes regarding selection, labelling and advertising in the food and recreational cannabis industries – all of  which affect long-term branding rights and enforcement. Read more

22 Nov 2018

Canada's anti-dilution remedy is not limited to registered trademarks: the bunny keeps going… and going… and going

In Energizer v Gillette, where Energizer sued Duracell for its use of Energizer’s registered marks and other terms, Canada’s Federal Court has provided some guidance as to the scope of a claim under Section 22 of the Trademarks Act. Read more

19 Nov 2018

The date is set: 17 June 2019 – Canada’s new trademark law will be in force

After years of uncertainty, a date has finally been set for the implementation of Canada’s new trademark law. This update highlights some of the main changes to Canadian law and provides some recommendations for mark owners. Read more

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Anti-counterfeiting

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29 Jun 2018

How brands should prepare for the big changes coming to Canada’s trademark market: exclusive data analysis

In our latest report, we delve into Canada’s trademark landscape. We examine how a major overhaul of its trademark laws may lead to a clogged up register, take a look at filing and litigation trends, and much more. Read more

24 May 2018

Procedures and strategies for anti-counterfeiting: Canada

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30 Apr 2018

US government ranks Canada’s border enforcement on same level as China; Special 301 adds Saudi Arabia and UAE

The USTR has published the 2018 Special 301 Report, and Canada has been added to the Priority Watch List due to “a failure to resolve key longstanding deficiencies in protection and enforcement of IP”. Read more

11 Apr 2018

Customs concerns: counsel identify significant room for improvement in India, Iran and Turkey

Trademark counsel have had their say on the efficiency of customs authorities across the globe – with some of the largest importers of counterfeit goods giving cause for continued concern. Read more

Brand management

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29 Aug 2018

Canada moves ahead with fluid marks

Major amendments to Canada’s Trademarks Act are set to broaden the ability of brand owners to protect fluid marks, but will also introduce new obstacles to slogans. Read more

29 Jun 2018

Protecting fashion: a rounded IP strategy

Canada presents options for those seeking to protect and enforce rights in luxury brands, including effective mechanisms and alternatives for strategic defence and enforcement. Read more

1 May 2018

Trademark licensing in Canada: control is key

The upcoming amendments to the Trademarks Act may bring short-term uncertainty over ownership and licensing issues. One thing that is unlikely to change is the established principle of proving a licensor’s control over a mark. Read more

12 Apr 2018

Trademark trolls in Canada? Data reveals rise in “suspicious” applications are nearly all related to millionaire Gleissner

After recent reports of a steep rise in so-called “trademark trolls” in Canada, research suggests most are related to notorious trademark filer Michael Gleissner – leading to calls for the Canadian IP Office to “take action”. Read more

Enforcement and litigation

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25 Jan 2019

Litigation procedures and strategies: Canada

The Competition Act prohibits promoting a product by making a representation that is false or misleading in a material respect. This provision is typically asserted in conjunction with other causes of action under the Trademarks Act. Read more

22 Nov 2018

Canada's anti-dilution remedy is not limited to registered trademarks: the bunny keeps going… and going… and going

In Energizer v Gillette, where Energizer sued Duracell for its use of Energizer’s registered marks and other terms, Canada’s Federal Court has provided some guidance as to the scope of a claim under Section 22 of the Trademarks Act. Read more

29 Oct 2018

Our privilege to serve – thoughts on Canada’s law of privilege

Privilege protects certain information and communication from disclosure. In-house counsel – as legal and business advisers to a company – must understand the limitations of privilege and how best to create and maintain it. Read more

29 Oct 2018

Federal Court: official marks not an absolute defence to infringement in Canada

In Quality Program Services Inc v Canada, the Federal Court of Canada has held that official marks do not insulate their holders from claims by third parties.   Read more

Goverment/policy

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10 Oct 2018

USMCA “breaks new ground” in geographical indications policy, contends GI consortium

The Consortium for Common Food Names has praised the new USMCA trade deal, claiming it “marks a sea change” in GI policy. In a strongly-worded statement, it also hits out at the EU for “monopolising common names and terms”. Read more

20 Jun 2018

As Canada legalises marijuana, research finds majority of Canadians want branded packaging for cannabis products

Canada will soon allow the recreational use of marijuana nationwide. A new survey finds two-thirds of consumers in Canada would prefer branded packaging for this new market of cannabis products. Read more

17 May 2018

The future’s green: cannabis brands on the rise in Canada

With the legalisation of recreational cannabis impending in Canada, new business models and opportunities are emerging for a surprising variety of brand owners. Read more

17 Apr 2018

WHOIS access charges, NGOs take aim at watch list plans and INTA applauds ‘Brand India’: news round-up

In our latest round-up, we look at a registry’s plans to charge trademark owners for access to WHOIS data and  the war of words over plans for an IP markets watch list. Read more

Law firms

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26 Apr 2018

Private practice perspectives on diversity: “We must push forward in the name of achieving greater equality”

Law firm professionals reflect on the theme of this year’s World IP Day, which highlights the ingenuity and courage of the women who are driving change in our world. Read more

IP offices

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6 Apr 2018

Trademark offices prepare for the future as users give poor performance grades

The performance levels of the Chinese, Brazilian and Indian trademark offices have clear room for improvement but change could be afoot. Read more

15 Feb 2018

Signed, sealed and almost delivered - new trademark law is in sight

Canada is finally completing the last steps necessary for implementing its new trademark law, which will introduce significant changes.  Read more

3 Oct 2017

MLB’s top TTAB user, Thai IP Office gets an upgrade and Russia to introduce “Made in Prison” label: news round-up

In this news round-up, we look at how India may remove the controversial Goods and Services Tax exemption for unbranded food products and how the Chicago Cubs are tackling an increase in counterfeiting. Read more

30 Jun 2016

New trademark fees consultation

On June 6 2016 the Canadian Intellectual Property Office released for consultation the Fee-for-Service Proposal – Trademarks, which outlines proposed changes to the fees associated with filing and registering trademarks, and renewing trademark registrations, in Canada. The consultation period ends on July 5 2016. Read more

Online

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31 Oct 2018

Settlement privilege and domain name arbitrations: the case of ‘potterybarnbaby.ca’

A recent decision under Canada’s Domain Name Dispute Resolution Policy shows that deeming correspondence “without prejudice” may impact a complainant’s ability to prove the registrant’s bad faith and could ultimately decide the outcome of the dispute. Read more

1 Jan 2018

Canada: Online business expansion may still result in restricted trademark rights

Canadian courts have demonstrated a shift in the interpretation of use of a trademark. Brand owners should consider how they engage online with consumers in order to maintain protection. Read more

25 Jul 2017

The Internet has no borders

The Supreme Court of Canada has issued a landmark decision in Google, Inc v Equustek Solutions Inc, confirming that Canadian courts have jurisdiction to issue interlocutory injunctions against a party’s activities that extend beyond Canada and have global reach. Read more

1 Mar 2017

Canada: Dotting the ‘.com’ and crossing the ‘.sucks’: how to manage your domain name portfolio

Domain name strategy and portfolio management should be a key component of a brand’s overall IP strategy. A mindful, measured and disciplined approach is crucial Read more

Portfolio management

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29 Aug 2018

Canada moves ahead with fluid marks

Major amendments to Canada’s Trademarks Act are set to broaden the ability of brand owners to protect fluid marks, but will also introduce new obstacles to slogans. Read more

29 Jun 2018

Protecting fashion: a rounded IP strategy

Canada presents options for those seeking to protect and enforce rights in luxury brands, including effective mechanisms and alternatives for strategic defence and enforcement. Read more

1 May 2018

Coexistence of trademarks: Federal Court's decision reaffirms limited scope of consent agreements

The Federal Court of Canada has upheld the refusal to register EDMOND DE ROTHSCHILD because it was confusing with the registered mark ROTHSCHILD - despite the fact that the applicant submitted a consent agreement with the owner of the cited mark. Read more

1 May 2018

Trademark licensing in Canada: control is key

The upcoming amendments to the Trademarks Act may bring short-term uncertainty over ownership and licensing issues. One thing that is unlikely to change is the established principle of proving a licensor’s control over a mark. Read more

Trademark law

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29 Oct 2018

Our privilege to serve – thoughts on Canada’s law of privilege

Privilege protects certain information and communication from disclosure. In-house counsel – as legal and business advisers to a company – must understand the limitations of privilege and how best to create and maintain it. Read more

3 Oct 2018

“Very good for brand owners” – IP experts react to USMCA; INTA lauds deal as “major enhancement” over NAFTA

Following the announcement of a new major trade agreement between Canada, Mexico and the United States, we reached out to IP experts to explore their views on the IP aspects of the new deal.  Read more

18 Sep 2018

Federal Court once again affirms that "use" of a trademark does not require bricks and mortar for non-Canadian businesses  

In Hilton Worldwide v Miller Thomson, the Federal Court of Canada has held that providing “hotel services” does not require a physical hotel in Canada to constitute “use” of a trademark in the country. Read more

12 Sep 2018

Trademark procedures and strategies: Canada

Unregistered trademarks do not have statutory protection in Canada. The owner of an unregistered mark may enforce its rights, but this necessitates the establishment of a reputation through extensive use of the mark in Canada. Read more

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