Region: Canada

What businesses need to consider before a brand (re)launch: lessons from SUSSEX ROYAL

Although Prince Harry and Meghan Markle faced an unfortunate setback as they failed to successfully launch SUSSEX ROYAL, their actions can serve as a useful post-mortem on trademark issues that any business may face when they (re)brand.

16 April 2020

Looking high and searching low – where did my Canadian filing go?

The time to first examination of new trademark filings at the Canadian Intellectual Property Office has ballooned over the last few years, owing to both a growth in the number of applications filed and a shortage of qualified examiners. As a result, those halcyon days when first Canadian examination could be expected within seven to nine months of filing are long, long gone.

09 April 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.

26 March 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.

25 March 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.

12 March 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.

02 March 2020

No more guaranteed extensions of time in examination

The Canadian Intellectual Property Office has changed its practice with respect to extensions of time to respond to an examiner’s report during examination, with the aim of reducing the time it takes for an application to proceed to registration.

04 February 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.

08 January 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.

02 January 2020

Dominique Hussey and Jeilah Chan: Canada

12 December 2019

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