Canada

CIPO takes concrete steps to address examination delays, but applicant frustrations look set to continue for some time

The Canadian IP Office has issued two new practice notices in an effort to tackle the backlog of applications awaiting first examination. While local experts are convinced that the office is doing the best it can, applicants may still have years of waiting ahead of them.

CIPO takes concrete steps to address examination delays, but applicant frustrations look set to continue for some time
Cannabis retailers have their work cut out for them in terms of trademark and brand strategy
30 Apr 2021

Cannabis retailers have their work cut out for them in terms of trademark and brand strategy

Legal uncertainty is keeping brand owners on their toes, requiring businesses to be flexible and forward-thinking with their approach to IP.

From Apple to Nike: key recent decisions and developments from the Americas analysed
30 Apr 2021

From Apple to Nike: key recent decisions and developments from the Americas analysed

For our next instalment presenting recent Legal Updates that you may have missed we turn our attention to the Americas.

Latest

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29 Apr 2021

Exclusive roundtable – IP offices reveal how covid-19 could shape future operations

The Long Read: As remote working has become du jour for many, WTR asks the IP offices of Canada, the European Union, Singapore, South Korea and the United Kingdom to reflect on the ups and downs of operating during a global pandemic – and what might remain of the systems developed over the past year. Read more

13 Apr 2021

A distinctively Canadian approach to distinctiveness

As part of the overhaul of Canadian trademark laws, lack of distinctiveness was introduced as a possible bar to registration. Various strategies are available to overcome non-distinctiveness objections, but a level of uncertainty is likely to remain until the Trademarks Office’s practice falls into place. Read more

8 Apr 2021

Jurisdictional perspective: Canada

Major legislative reforms in Canada prompted an influx of applications from Gleissner in 2017. Smart & Biggar partner Kohji Suzuki and associate Nora Labbancz explain how this happened and what the authorities did next. Read more

26 Mar 2021

"There is always more work to be done": Baker McKenzie’s first-ever D&I chief on global diversity efforts

Baker McKenzie’s first-ever chief inclusion and diversity officer, Anna Brown, reveals how the firm draws on its global resources to support diversity, equity and inclusion through clear policy, cross-functional leadership and community outreach programmes. Read more

Anti-Counterfeiting

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16 Dec 2020

Costco v Simms: no more excuses for grey marketers that knowingly interfere with exclusive distribution agreements

This decision of the Quebec Court of Appeal is good news for distributors whose rights under an exclusive distribution agreement are knowingly undermined by third parties selling grey market goods. Read more

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

Brand management

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15 Mar 2021

Five Canadian trademark decisions you need to know about

With new approaches to grey goods, clarification on infringements involving official marks and a revised standard of review on appeals from the registrar, 2020 saw a number of important decisions in Canada. 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

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

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

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. 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

Government/Policy

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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. Read more

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

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

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

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

IP Offices

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4 Mar 2021

Innovation at the Canadian Intellectual Property Office: spotlight on cutting-edge tools and services

In an exclusive guest post, representatives from the Canadian Intellectual Property Office (CIPO) reveal the agency’s innovative non-core tools and services for trademark users – and those planned for the future. Read more

5 Jan 2021

Picking up the pace? Covid-19 exceptions to expedite trademark applications in Canada

In response to the covid-19 pandemic, the Canadian Trademarks Office is now accepting requests to expedite examination of trademark applications that cover goods or services relating to the prevention, diagnosis, treatment or cure of covid-19. Read more

4 Jan 2021

The secret lives of trademark examiners: insights into five IP offices

Hard-working representatives from registries in Canada, France, Singapore, the United Kingdom and the United States reveal what makes them tick and how to guarantee a successful trademark application in their jurisdiction. Read more

28 Dec 2020

How to avoid a descriptive filing: examiners offer vital application guidance

Experts at three of the world’s busiest IP offices reveal what it takes for an application to pass key requirements on descriptiveness. Read more

Online

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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

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

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

Portfolio Management

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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

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

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

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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

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