Region: Canada

Canada: Balancing competing interests in GIs

The Comprehensive Economic and Trade Agreement suggests that Canada sides with the European Union on the value of geographical indication protection. However, renegotiations of the North American Free Trade Agreement could result in a more nuanced regime

01 January 2018

Steven Garland

Steven Garland has over 25 years of experience in IP litigation of all types, including issues relating to patent, trademark, copyright, industrial designs, trade secrets and competition law. He has acted in many patent litigation matters that have involved a wide variety of subjects, including chemical, biochemical, pharmaceutical, biotechnological, telephony, mechanical and computer and internet subject matters. He has appeared as counsel in IP cases at both the Federal Court and Federal Court of Appeal, the Ontario Superior Court and Court of Appeal, the Nova Scotia Supreme Court and Court of Appeal, the Court of Appeal of British Columbia and the Supreme Court of Canada. He also appears before the Patent Appeal Board and the Trademarks Opposition Board. He has also been retained as a mediator in IP disputes.

01 January 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.

01 January 2018

When do free samples constitute use?

In <em>Estée Lauder Cosmetics Ltd v Loveless</em>, the Federal Court of Canada considered the issue of whether the provision of sample goods (as opposed to the actual sale of goods) constitutes use of a trademark in association with those goods. 

06 December 2017

A very Canadian IP dispute: BeaverTails spat offers important lessons on trademark overreach

​​​​​​​A Canadian pastry company got entangled in a PR crisis this week over accusations of perceived enforcement overreach. Evidence suggests that the negative impact could have a lasting effect on the brand.

30 November 2017

Stuck in limbo: new class of trademarks may be created by proposed Canadian legislation

Canada’s proposed Child Health Protection Act is making its way through the country’s legislative process. It could have a significant impact on the use of food and beverage trademarks.

09 November 2017

81% of consumers believe “branding on products matters”, as Canadian scepticism of plain packaging highlighted

New research has revealed that eight out of 10 Canadian consumers believe that “branding on products matters” because it provides information and distinguishes goods from one another.

08 November 2017

Canada: Changing the recipe: the amended Trademarks Act

Amid a string of changes to the Trademarks Act, food and beverage brand owners should be aware of the potential impact that this new legislation will have on their trademark rights in Canada.

01 November 2017

Border Watch covers ‘dangerous’ counterfeit goods and pirated copies

The Canada Border Services Agency recently issued a customs notice to advise the public and rights holders that its 24/7 Border Watch hotline now accepts information, or tips, on ‘dangerous’ counterfeit goods or pirated copies destined for Canada.

25 October 2017

Use in Canada – get it before it’s gone

The Federal Court of Canada has provided some clarity on claiming use as grounds when filing a trademark application, although some ambiguity remains. This comes as a fundamental change is about to be implemented in Canadian trademark law (expected in early 2019) which will remove use as a requirement for trademark registration.

12 October 2017

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