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15 March 2017

A quarter million in punitive damages upheld in Chanel counterfeit appeal

In Lam v Chanel, the Federal Court of Appeal has confirmed awards of compensatory and punitive damages, plus costs, for four instances of selling counterfeit CHANEL goods between 2011 and 2013. This decision represents an important tool in the arsenal of rights holders seeking restitution from sellers of counterfeits, especially recidivist infringers.

24 January 2017

Federal Court explores test for assessing genericness of word marks with multiple potential meanings

The decision of the Federal Court in CEDC International SP ZOO v Underberg KG provides a useful exploration of the test for establishing whether or not a mark is the name of the goods. Among other things, the court explained that the mark must be assessed from the perspective of the everyday consumer of the goods, but not necessarily from the perspective of a speaker of the language from which the mark originates.

04 January 2017

CIPO clarifies geographic name practice

The Canadian Intellectual Property Office has issued a practice notice which gives guidance as to when a trademark which is a geographic name will be considered descriptive and therefore unregistrable.

05 December 2016

Litigation that racks up the miles

A seemingly straightforward claim of likelihood of confusion between ASIA MILES and AIR MILES took a circuitous route through the Federal Court, ending with the application for ASIA MILES being refused.

01 December 2016

Section 45 clears register of deadwood

Following the appeal of a registrar's decision, the Federal Court has restored the intention of Section 45 proceedings by stating that these are intended to be summary in nature as a means to clear deadwood from the register, not an opportunity for evidentiary overkill.

28 November 2016

Prudence advised in appeals to the Trademarks Opposition Board

A recent case has shown that if a party gives its best evidence in an opposition, it should be cautious about considering an appeal unless either the Trademarks Opposition Board has made a material error in fact when making its decision or pertinent new evidence has become available.

04 November 2016

Federal Court gets serious with counterfeiters

In a strongly worded decision, the Federal Court has explained in detail the reason behind the award of C$250,000 in punitive damages against repeat offenders selling counterfeit CHANEL products. The decision is good news for brand owners, particularly those faced with the sale of counterfeit goods in the Canadian market.

01 November 2016

Canada: Judicial treatment of iconic marks

Although famous marks are not specifically protected by statutory provisions in Canada, protection is available, provided that owners can prove the mark’s fame

12 October 2016

Low times for infringer: court finds owners personally liable for corporation’s infringement

In a recent decision involving allegations of trademark infringement and passing off, the Federal Court of Canada found the owners and directing minds of a corporation personally liable for the infringing activities of the corporation.

06 October 2016

An expensive lesson in trademark registration protection

A recent Federal Court of Canada case is a timely reminder that when considering refreshing or modernising a trademark, owners should take the proper steps to protect the results of their initiatives.

28 September 2016

Commercial general liability policies cover trademark infringement

Commercial general liability policies frequently include coverage for ‘advertising injury’. Advertising injury often exists with respect to claims made against the insured for infringement of trademarks, copyrights and patents. While damages caused in the course of advertising are covered by the policy, there are certain exclusions and preconditions.

21 September 2016

Ambush marketing application not ‘irresistible’

The Federal Court's decision in the case of Julia Wine Inc v Les Marques Metro is a practical example of trademark law serving its function to prevent confusion of the public and unwarranted entrenchment on the rights of established trademark users, particularly when an element of bad faith is involved.

01 September 2016

Canada: Canada sees increase in class action lawsuits for misleading claims

Several recent cases suggest that the most likely group to take action against misleading advertising may no longer be regulators or competitors, but disgruntled consumers acting as a class

31 August 2016

What is considered ‘substantially different’ in an industrial design?

The Federal Court of Canada’s decision in AFX Licensing Corporation v HJC America Inc serves as a benchmark case for what constitutes an infringement of an industrial design registration in Canada.

08 July 2016

Domain registration cancelled due to Canadian Presence Requirements

A recent decision of a panel under the Canadian Internet Registration Authority Domain Name Dispute and Resolution Policy has highlighted a peculiar aspect of the '.ca' registry: a registrant must satisfy the Canadian Presence Requirements.