Region: Canada

Court examines the perks of confusion claim

In <i>Venngo Inc v Concierge Connection Inc</i> the Federal Court of Appeal has upheld the decision of the Federal Court that there was no confusion between the PERKOPOLIS mark and Venngo’s suite of perks-related trademarks.

20 June 2017

Expanded protection for geographical indications

The Canadian government recently passed Bill C-30. The new legislation introduces a number of amendments to the Trademarks Act related to the protection of geographical indications.

14 June 2017

Trademarks owners be warned — certain services may require bricks-and-mortar location

<i>Stikeman Elliott LLP v Millennium & Copthorne International Limited</i> demonstrates the challenges facing trademark owners in e-commerce when it comes to certain services (eg, hotel services), as an emerging Trademark Opposition Board trend warns that unless registrants perform their services through bricks-and-mortar establishments located in Canada, mere advertising or performance of tangentially related services (eg, reservation or event planning services) may be insufficient to maintain registrations.

25 May 2017

Procedures and strategies for anti-counterfeiting: Canada

Featured in Anti-counterfeiting: A Global Guide 2017

On October 30 2016 Canada and the European Union signed the Comprehensive Economic and Trade Agreement (CETA) and Bill C-30 (the domestic implementation legislation) was introduced the following day. Ratification is expected in the near future.

18 May 2017

Appeal of motion striking claims – landlord liability for sale of counterfeit products

The Ontario Superior Court of Justice has allowed an appeal by Louis Vuitton against a master’s order striking paragraphs from a statement of claim which supported a novel extension of the theory of vicarious liability to a landlord arising from its tenant’s sale of counterfeit goods. 

15 May 2017

Interlocutory injunction available even for marks that lack inherent distinctiveness

The Quebec Superior Court recently demonstrated that it can be a friendlier forum for injunctions in trademark law, even in cases involving unregistered rights. The <i>Pièces d’auto économiques</i> decision is a reminder that the court’s discretion may be in favour of a plaintiff which demonstrates use of its mark over a long period of time, even if the mark is not inherently distinctive, especially when evidence shows that the defendant chose to ignore warning.

05 May 2017

Not so sweet: court limits use of state of register evidence

In the recent <i>McDowell v Laverana</i> decision, the Federal Court of Canada relied on new evidence submitted in a 243-page affidavit to determine that there was a real likelihood of confusion between the marks HONEY MOMENTS and HONEY and HONEY & Design. The decision is a reminder to applicants defending an opposition that good evidence wins cases.

02 May 2017

Canada: Addressing the challenge of the new Trademarks Act

Amendments to the Trademarks Act should come into force in 2019. While an expanded definition of ‘trademark’ should prove a boon, more restrictive examination practice could cause difficulties

01 May 2017

Grappling with the nuances of trademark law

Decisions focused on administrative proceedings, oppositions, infringement and the use of official marks kept Canadian courts busy in 2016, with a number of critical learnings for counsel

01 May 2017

Trademark procedures and strategies: Canada

Featured in World Trademark Review Yearbook 2017/2018

Major amendments to the Trademarks Act were passed in 2014, partially to facilitate implementation of the Nice Agreement, the Singapore Treaty and the Madrid Protocol. Most notable among these amendments is the elimination of use as a registration requirement. The amendments received royal assent, but have not yet been implemented. The latest projections suggest that implementation could take place in 2019.

29 March 2017

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