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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.

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.

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.

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26 Mar 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. 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

12 Mar 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. 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

Anti-Counterfeiting

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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

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

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

Brand management

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6 Nov 2019

Risqué business: lessons from the Unilever and Kraft Heinz Pornhub advertising backlash

Kraft Heinz and Unilever have distanced themselves from a pornography website on which they advertised, following accusations that it hosted underage and illegal content. Legal experts emphasise the importance of being involved in conversations over brand messaging and positioning. Read more

23 Jul 2019

Deepfakes: preparing for the trademark infringement of the future

AI-manipulated ‘deepfake’ videos have the potential to negatively impact the reputation and goodwill of brands and individuals. WTR spoke to trademark experts on how to prepare for the new age of false content. Read more

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

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

Enforcement and Litigation

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9 Dec 2019

Litigation procedures and strategies: Canada

15 Nov 2019

Protecting and enforcing design rights: Canada

8 Aug 2019

Pampered Chef succeeds in trademark infringement battle

Pampered Chef, a world leader in the sale of premium kitchenware products, has succeeded at trial in defending trademark infringement, passing off and dilution and depreciation of goodwill claims brought by Canada's largest retailer, Loblaws. 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

Government/Policy

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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

3 May 2019

“29 and counting” – Canada sets plain packaging date as dominoes continue to fall

The government of Canada has confirmed when new regulations for plain packaging on tobacco products will come into force, as the spread of plain packaging continues at an increasingly rapid pace. 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

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

Law Firms

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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

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.

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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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

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”.

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.

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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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

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

11 Nov 2018

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? 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

Trademark law

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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

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

4 Sep 2018

No store, no problem: Federal Court’s broad interpretation of ‘use’ good news for non-Canadian retail trademark owners

The Federal Court of Canada has reaffirmed that providing ‘retail store services’ does not require a bricks-and-mortar establishment or direct delivery of products to Canada to constitute use of a trademark in Canada Read more

Twitter

04 Apr 2020

@WTRmagazine RT @MarksmenTweets: Live updates: IP offices implement measures in wake of #coronavirus crisis https://t.co/ZtaWYfQl7V by @WTRMagazine #ip… Read more

04 Apr 2020

@WTRmagazine RT @WebTMS: "Fame! I wanna live forever..." Academics reckon they can objectively measure brand recognition, a technique which could be app… Read more

04 Apr 2020

@WTRmagazine RT @SharonToerek: Coronavirus and fakes: brand owners warned of stark rise in online counterfeits and fraudulent ads | World Trademark Revi… Read more

04 Apr 2020

@WTRmagazine RT @trevorclittle: In the second part of a new series looking back through our archive of world-class trademark content, we present five pi… Read more

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Peter Schramm

Partner

Zurich, Switzerland

Meyerlustenberger Lachenal Ltd

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