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Canada

Madrid, trolls and legislative change: explaining the latest filing trends in Canada

Trademark applications in Canada are down in 2020 – but coronavirus is not the cause, as our exclusive data analysis reveals.

1 Sep 2020

Taking on the trolls: Canadian notification process to protect brands online

The number of applications filed by so-called ‘trademark trolls’ seems to have increased since the elimination of the use requirement in Canada, but the notification of third-party rights process introduced a year ago has been helping IP owners protect themselves online.

31 Aug 2020

Five key takeaways from living a year with the new Canadian trademark system

Twelve months after significant trademark reforms took effect in Canada, analysis of the IP landscape highlights five important areas that brand owners have learned to navigate so far.

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19 Nov 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. Read more

12 Nov 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. Read more

5 Nov 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. Read more

23 Sep 2020

Then and now: assessing Canadian practice one year into the new regime

With significant changes to the Canadian trademark system taking effect last year, analysis of the landscape 12 months on reveals some important emerging nuances in practice. Read more

Anti-Counterfeiting

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1 May 2020

Star Wars hashtag controversy; Puma and Nike spar over FOOTWARE; EU geographical indications denounced – news digest

In our latest round-up, we look at Amazon verifying sellers using online video, fashion brands taking a community angle, exhausting the covid-19 price gougers, a joint message from the USPTO and EPO, and much more. Read more

23 Apr 2020

Procedures and strategies for anti-counterfeiting: Canada

Unsurprisingly, 2019 also saw the increase of shipments detained destined for fulfilment centres associated with e-commerce third-party marketplaces. Read more

29 Oct 2019

UKIPO postpones Brexit work, Canada plain packaging and KIPO warns of trademark squatters: news digest

In our latest round-up, we look at INTA bringing the Unreal Campaign to Lima, the UAE IP office forgoing certain fees, Stan Lee’s daughter suing POW! Entertainment, and much more. Read more

22 Aug 2019

Six counterfeit hotspots that you must be aware of in Canada

A local IP expert reveals the locations in the Great White North that rights holders should have on their enforcement radar. Read more

Brand management

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20 Aug 2020

As Apple hits $2 trillion in market value, tech companies in the WTR Brand Elite continue upward march

The WTR Brand elite project aims to track how companies that invest in their brands and are supported by market-leading trademark teams perform against stock market indices. Read more

16 Jul 2020

A connected world: learnings from the first internationally linked trademark database

In an exclusive guest post, academics in Australia share findings from their new study into the first database that links equivalent trademarks across national offices into a single comprehensive offering. Read more

3 Jul 2020

Trademark strategy is an early focus of the world’s top disruptors

Analysis of this year’s disruptor list reveals that these start-ups defy the typical IP filing process. Read more

26 Jun 2020

Kraft Heinz finally sees a positive quarter, but innovation and licensing key to maintaining momentum

The company has struggled as consumers increasingly opt for healthier products. Now it is seeking new ways to monetise its iconic brands while simultaneously implementing a transformation strategy. Read more

Enforcement and Litigation

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21 Sep 2020

Trademark “services” online finally defined by Federal Court of Appeal

The Canadian Federal Court of Appeal’s long-awaited decision on what constitutes trademark “use” in association with services in the internet age has finally been released. Read more

14 Sep 2020

Lessons from a pandemic: long-term impacts on Canadian trademark practice

The Canadian Trademarks Office and the Federal Court of Canada have taken concrete steps to mitigate the effects of the covid-19 pandemic that have permanently changed trademark practice in Canada. Read more

25 Mar 2020

Energizer v Gillette: the fight over depreciation of goodwill in Canada keeps going and going

While the decision of Canada’s Federal Court of Appeal in Energizer Brands v The Gillette Company avoided squarely addressing the limits of claims for depreciation of goodwill under Section 22 of the Trademarks Act, the case may ultimately result in greater clarity. Read more

2 Jan 2020

From billboards to influencers: navigating new advertising rules across the Americas

Trademark experts offer insight into the advertising regimes in their respective jurisdictions and, crucially, how brands can avoid falling foul of the law. Read more

Government/Policy

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13 Jul 2020

Challenges in Canada: how CIPO is tackling a backlog caused by covid-19, legislative change and Madrid

In exclusive comments to WTR, the Canadian IP Office (CIPO) has revealed the factors that have led to lengthy examination timeframes. However, efforts are being made to speed up examinations. Read more

11 Dec 2019

USMCA given green light; significant GI changes now a step closer to reality

The Canadian, Mexican and US governments have signed an amended version of the USMCA, meaning that ratification is a significant step closer – with the deal highlighting what IP concessions the Trump Administration will expect in future trade deals. Read more

17 Sep 2019

Strategies and pitfalls with fees under Canada’s new trademark regime

On 17 June 2019 significant amendments were introduced to the Trademarks Act with a view to bringing Canada’s trademark regime into line with the Nice Agreement, among others. This update provides some fee-based strategies to use under the amended act. Read more

28 Jun 2019

Cannabis counterfeits; the campus consequence of Brunetti; and Anheuser-Busch eyes esports market: news digest

In our latest news round-up, we look at how Alibaba is seeking increased brand engagement, Anheuser-Busch making a play for the esports industry, a USPTO call for comments, Albania’s accession to the Geneva Act and much more. Read more

Law Firms

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28 Aug 2020

Economies are battered but many major offices set for record trademark numbers

As the data continues to be updated, we are able to get a better understanding of the extent of the coronavirus’ impact on the trademark ecosystem. Read more

1 Aug 2019

Best practice in litigation strategies: global perspectives

Trademark experts from around the world offer practical guidance on how to maximise the chances of litigation success in their jurisdiction. Read more

22 Mar 2019

Honeywell drops ‘.brand’, Canada joins Madrid, and IACC cracks down on iOffer: news digest

In our latest news digest, we look at Disney powering up its brand with its 21st Century Fox acquisition, Chinese supermarkets removing fake Starbucks items from shelves, a football club losing a trademark fight, and much more. Read more

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. Read more

IP Offices

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17 Jun 2020

Mysterious Chinese entity sits atop USPTO top filers list, alongside Everglades College, Marvel and Walmart

This data deep dive explores US filing strategies by country, revealing that Chinese applicants increasingly favour direct applications while European-based businesses continue to utilise the WIPO route. Read more

2 Mar 2020

Could you be more specific? Nice Classification in Canadian trademark examination

The adoption of the Nice Classification in Canada has led to requests for greater specificity in the description of the goods and/or services. Read more

31 May 2019

KIPO launches all-women anti-counterfeiting group, Make Canada Great Again suit, and cannabis brands: news digest

In our latest news digest, we look at an anti-monopoly committee in Uzbekistan clamping down on a Coca-Cola copy, the BBC drawing ire for perceived slogan nabbing, and much more. Read more

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. Read more

Online

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28 May 2019

Why complaints that new gTLD pricing ‘.sucks’ may have been over the top

A recent academic study exploring the need for updated regulation governing domain names in the United States has suggested that, with many brand owners adopting a laid back, wait-and-see approach to registrations, initial complaints surrounding the high costs of the ‘.sucks’ domain name may have been overblown. Read more

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

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

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

Portfolio Management

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15 Nov 2019

Protecting and enforcing design rights: Canada

22 Jul 2019

What Volkswagen’s portfolio tells us about disruption in the automotive industry

With the rise of autonomous driving technology, ride-hailing companies and micromobility transportation, traditional automotive manufacturers need to evolve fast. Positively, the strength and reputation of existing brands will prove key to fighting off digital start-ups. Read more

17 May 2019

P&G’s new start-up mindset will reinforce its position in the market

Direct-to-consumer brands have proved to be a problem for the American consumer goods behemoth Procter & Gamble, but a new customer-centric strategy combined with data resources could help the company regain lost ground. 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

Trademark law

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8 Jan 2020

The risk factor in religious marks: a study of four major jurisdictions

An Indian court recently ruled that God's name was registrable as a trademark. We spoke to experts across four key jurisdictions about the different risks brands should be aware of before registering a religious name as a mark. Read more

9 Dec 2019

Litigation procedures and strategies: Canada

6 Jun 2019

Parody law in Canada: experts split over need to amend trademark rules

A Quebec court’s ruling in a high-profile parody case has reignited discussion about the treatment of satire in Canadian trademark law. We speak to two market experts, who consider whether more legal clarity is required. Read more

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

Twitter

02 Dec 2020

@WTRmagazine RT @globalIPcenter: In a new initiative, @WTRMagazine is seeking to identify and recognize leading innovators in the #trademark industry. S… Read more

02 Dec 2020

@WTRmagazine RT @accessibleweb: World Trademark Review magazine ranks the UK Intellectual Property Office @The_IPO as having the most accessible website… Read more

01 Dec 2020

@WTRmagazine RT @techsonIP: Ranked: the IP offices with the most accessible web platforms https://t.co/pTPQwEwIKy Read more

01 Dec 2020

@WTRmagazine RT @MarksmenTweets: Grana Padano cease and desist controversy; #USPTO anti-scam efforts; Nestle sells Yinlu brand; Holiday season #counterf… Read more