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04 May 2005

Section 45 expungement decision eclipsed by appeal court

In Eclipse International Fashions Canada Inc v Cohen, the Federal Court of Appeal has overturned an earlier decision to expunge the mark ECLIPSE under Section 45 of the Trademarks Act. The court reiterated the established principles regarding (i) the purpose of a Section 45 administrative expungement proceeding, and (ii) a registered owner's burden of evidence within the context of such a proceeding.

21 April 2005

CIPO sounds out new examination practice

The Canadian Intellectual Property Office has issued a practice notice relating to the interpretation of the word 'sounded' in Section 12(1)(b) of the Trademarks Act, with particular reference to composite marks. Among other things, the notice states that composite marks that include design elements added to clearly descriptive words will not be registrable if the design elements merely complement the words and are not distinct from the words themselves.

01 March 2005

BOSTON PIZZA denies BOSTON MARKET a slice of the action

The Canadian Trademarks Office has refused an application by Global Restaurant Operations of Ireland Limited to register the mark BOSTON MARKET for use in association with restaurant goods and services, including prepared foods. The examiner refused the application on the basis that the mark was confusingly similar to the registered mark BOSTON PIZZA owned by Boston Pizza International Inc.

18 February 2005

Descriptive element does not necessarily preclude registration

The Trademarks Opposition Board released last month its decision in Synthélabo v Sabex Inc. In ruling that the mark SAB-BETAXOLOL for pharmaceutical products is not descriptive of the goods to which it applies, the board confirmed that a mark made up in part of descriptive elements (here betaxolol, a generic term for an active element in hypertension treatments) may be registered if it also contains distinctive elements.

18 January 2005

Licensee has no legal entitlement to official marks, court rules

In Canadian Rehabilitation Council for the Disabled v Rehabilitation Foundation for the Disabled, the Federal Court of Canada has addressed the issue of entitlement to official marks where both parties involved are public authorities. Specifically, the case addresses this issue in the context of a licensing arrangement between the parties.

14 December 2004

New evidence before Federal Court saves TECHNOCORP mark

In Sukdeo v Gestion Technocap Inc, the Federal Court has reversed a decision of the Trademarks Opposition Board on the basis of new evidence filed before it. The court found that the evidence would have materially affected the registrar's findings of fact on some of the factors considered. The case illustrates how the right under the Canadian Trademarks Act to file new evidence in appeals to the Federal Court enables litigants to correct evidentiary deficiencies.

08 November 2004

Health Canada proposes drug name review procedures

A branch of Health Canada, which oversees the regulation of pharmaceutical and other health-related products in Canada, has published draft guidelines on health product names. Under the proposed procedures, Health Canada will (i) screen new drug names to ensure that they are not misleading or likely to be confused with existing drug names, and (ii) attempt to reduce the risks created by confusing product names that are already on the market.

22 October 2004

STARGATE open to coexisting registrations

In Metro-Goldwyn-Mayer Inc v Stargate Connections Inc, the Federal Court of Canada has upheld a decision to refuse the plaintiff's opposition to the registration of a STARGATE mark. The court held that there was no risk of confusion between the plaintiff's STARGATE mark associated with a film and television series and the defendant's identical mark for internet services.

13 October 2004

Court overturns 50-year registration practice

Shortly after the fiftieth anniversary of the Canadian Trademarks Act, the Federal Court of Canada has reversed a 50-year practice of the registrar of trademarks. Following Effigi Inc v Attorney General of Canada, the registrar can no longer refuse an application simply on the grounds that another party has filed a later application with an earlier date of first use.

01 September 2004

Registrar can issue a second trademark expungement notice

The Federal Court of Canada has upheld a hearing officer's decision to issue a second expungement notice requiring Italian company Montorsi Francesco e Figli SpA to provide further evidence of use of its mark in Canada. The court stated that although second notices are rare, the hearing officer had discretion to issue the notice and was justified in doing so.

26 July 2004

Federal Court applies new test to earlier ruling

The Federal Court of Canada has allowed the registration of an IXEL mark for antidepressant pills following an order from the Federal Court of Appeal to re-examine an earlier ruling. The Federal Court followed the test set out by the appellate court and determined that there was no risk of confusion between IXEL and Smithkline Beecham's PAXIL mark used for the same type of goods.

14 July 2004

Validity cannot be challenged during opposition proceedings

The Canadian Federal Court of Appeal has reiterated that trademark opposition proceedings are not the proper place to challenge the validity of trademark registrations. The decision stems from the latest skirmish in the long-running global battle for the rights to the HAVANA CLUB mark between Bacardi and state-owned Cuban company Havana Club Holding.

29 June 2004

Evidence of use must show connection with mark owner, court affirms

In Foot Locker Group Canada Inc v R Steinberg, the Federal Court of Canada has ordered the cancellation of the plaintiff's WOOLWORTH trademark in relation to retail store services. The court held that although the plaintiff had provided evidence of use of the mark, it had failed to demonstrate that this use was by the plaintiff or its predecessors in title during the relevant period.

27 May 2004

TWO GIRLS faced with partial cancellation

In House of Kwong Sang Hong International Ltd v Borden Ladner Gervais, the Federal Court of Canada has upheld, in part, a decision to cancel the plaintiff's registration of the mark TWO GIRLS and design. The court held that although all the elements of the mark featured on most of the related products' packaging, their arrangement had been altered leading to material differences between the mark as used and the mark as registered.

24 May 2004

Mark dominated by deceptive misdescription is unregistrable

The Federal Court of Canada has reversed a Trademarks Opposition Board decision to reject an opposition to the registration of BROOKS BROOKS SPRAY ENGINEERING as a word and design mark. The court held that the phrase 'spray engineering' (i) formed a significant part of the mark, and (ii) was deceptively misdescriptive of the applicant's services as it was neither a registered nor licensed professional engineering firm.