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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.

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.