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12 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.

03 October 2017

MLB’s top TTAB user, Thai IP Office gets an upgrade and Russia to introduce “Made in Prison” label: news round-up

In this news round-up, we look at how India may remove the controversial Goods and Services Tax exemption for unbranded food products and how the Chicago Cubs are tackling an increase in counterfeiting.

20 September 2017

New opportunities for GI protection in Canada; food brands warned to tread carefully

Major changes to Canada’s system of geographical indication (GI) rights come into force this week as a result of amendments to the country’s Trademarks Act. The range of goods eligible for GI rights will expand significantly, and compliance with the new protections will become more onerous. While playing to the advantage of famous regional producers, the reforms create risks and liabilities for many food businesses previously unaffected by GI rules.

01 September 2017

Canada: Unregistered does not mean unprotected

Unregistered trademarks have the potential to block registration and affect the exclusivity of registered marks in Canada. Clearance searches of unregistered marks are therefore crucial before rights holders enter the marketplace

25 July 2017

The Internet has no borders

The Supreme Court of Canada has issued a landmark decision in Google, Inc v Equustek Solutions Inc, confirming that Canadian courts have jurisdiction to issue interlocutory injunctions against a party’s activities that extend beyond Canada and have global reach.

12 July 2017

Captain Morgan makes Admiral Nelson’s walk the plank

The Federal Court recently found Heaven Hill and its Canadian broker, Diamond Estates, liable for passing off their Admiral Nelson’s rum products as those of Diageo and for infringing and depreciating the goodwill attached to Diageo’s Captain Morgan character and label trademarks.

01 July 2017

Canada: The cult of personality (rights)

In the social media age, protection for personality rights can be found in Canadian trademark law under the torts of misappropriation of personality and passing off, and privacy statutes

21 June 2017

Oh Canada! New regulations bring welcome changes

The Canadian Trademarks Office has released a first draft of the proposed regulations to support new trademark legislation in Canada. The regulations establish the framework for blending the common regulations under the Madrid Agreement with the Canadian regulations in effort to treat Madrid Protocol applications and domestic applications equally.

20 June 2017

Court examines the perks of confusion claim

In Venngo Inc v Concierge Connection Inc 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.

14 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.

25 May 2017

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

Stikeman Elliott LLP v Millennium & Copthorne International Limited 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.

15 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. 

05 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 Pièces d’auto économiques 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.

02 May 2017

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

In the recent McDowell v Laverana 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.

29 March 2017

Trademark procedures and strategies: Canada

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.