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22 January 2016

New guidance on role of Canada Border Services Agency in combating counterfeiting and piracy

On January 1 2015 provisions came into effect which provide Canadian customs authorities with the ability to detain suspected counterfeit or pirated products and exchange information regarding the products with rights holders pursuant to an approved 'request for assistance' application.

04 December 2015

SWAGGER case highlights effects of unrepresented trademark owners in Section 45 non-use proceedings

In Anashara v Swagger Publications Inc, the Federal Court has allowed an appeal from a decision of the registrar of trademarks to expunge the trademark SWAGGER pursuant to Section 45 of the Trademarks Act. Among other things, the court considered whether the trademark owner, who was self-represented, had presented new evidence on appeal and, if so, whether that evidence would have materially affected the registrar’s decision.

02 December 2015

Federal Court of Appeal considers Federal Court's role in appeal from Opposition Board's decision

In Cathay Pacific v Air Miles, the Federal Court of Appeal has considered the role of the Federal Court in an appeal from a decision of the Opposition Board and, in particular, how additional evidence should be assessed. The Federal Court of Appeal found that the Federal Court had erred in not considering the additional evidence, and the case was returned to the lower court (but to a different judge) to have the evidence assessed.

24 November 2015

Canada set to join plain packaging fray as international momentum grows

Canada has signalled its intention to remove trademarks from tobacco packaging, just six months after the United Kingdom and Ireland approved plain packaging legislation. The newly elected Liberal government in Canada has vowed to pursue an “activist” healthcare agenda, and has confirmed that plain packaging is a “top priority”.

17 November 2015

Cancellation proceedings: the evidentiary threshold might be low, but there is still a threshold to be met

It is well established that, in cancellation proceedings under Section 45 of the Trademarks Act, there is a low evidentiary threshold to be met in order to maintain the registration. However, in an unusual split decision (Alliance Laundry Systems LLC v Whirlpool Canada LP), the Federal Court of Appeal has issued a reminder that there is a threshold and that it must be taken seriously.

13 November 2015

Lady Gaga fails to prevent registration of 'gaga' mark for baked goods

Lady Gaga, through her company Ate My Heart Inc, has failed in her attempt to oppose registration of the mark GAGA FOR GLUTEN-FREE by The Shortbread Bakery Ltd. The Trademarks Opposition Board held that there was no likelihood of confusion between LADY GAGA, registered in Canada for use in association with various entertainment services, music recordings, clothing and cosmetics, and GAGA FOR GLUTEN-FREE for baked goods.

29 October 2015

Implementation of amended Trademarks Act not expected before 2018

Last year the government passed into law Bill C-31, which contains significant amendments to the Trademarks Act. Among those changes will be the elimination of the requirement for declaring use in Canada prior to obtaining a registration. However, recent news from the Trademarks Office regarding a delay in implementation warrants consideration of the optimal strategy to be adopted in connection with the requirement to declare use in the interim period.

19 October 2015

Rare jail sentence ordered for contempt in trademark infringement saga

In Trans-High Corporation v Hightimes Smokeshop and Gifts Inc, the Federal Court has ordered the principal of a corporation to be imprisoned for a minimum of 14 days and to remain imprisoned until payment is made of more than $100,000 in fines, costs and damages awarded in infringement and contempt proceedings. The decision represents a rare exercise of the court’s power to enforce civil orders against corporations through imprisonment of an officer and director.

18 September 2015

Canada

In March 2014 the federal government introduced major amendments to the Trademarks Act – designed to facilitate implementation of the Nice Agreement, the Singapore Treaty and the Madrid Protocol – in Bill C-31. However, Bill C-31 also contains fundamental changes to the current trademark legislation, including the elimination of use as a registration requirement.

11 September 2015

Court finds that keyword advertising does not constitute passing off

In Vancouver Community College v Vancouver Career College, the Supreme Court of British Columbia has held that the defendant had not caused confusion by misrepresenting its services as those of the plaintiff. The law regarding keyword advertising and whether it constitutes trademark infringement or passing off has been relatively undeveloped, and this decision addresses the issue of keyword advertising in greater detail than other Canadian decisions to date.

06 July 2015

New measures to streamline IP litigation introduced by Federal Court

The Federal Court has issued a practice notice providing new measures that seek to improve case management of complex litigation, including IP litigation. The new measures, designed to achieve increased proportionality in proceedings before the court, streamline certain aspects of IP litigation matters and should result in savings of both time and costs for litigants.

01 July 2015

Trademark registration for online shopping services maintained based on use in online fashion blogs

In a recent decision of the Trademarks Opposition Board dealing with a non-use cancellation proceeding, the hearing officer has maintained a registration for a trademark covering online shopping services based on evidence showing the mark appearing in the title and the text of online fashion blogs.

29 May 2015

Court of Appeal confirms broad scope of industrial design protection

Recent case law had precluded enforcement of an industrial design where features common between the design and the accused article included functional purposes. However, in Zero Spill Systems Inc v Heide, the Federal Court of Appeal has addressed this limitation on enforcement by holding that features of a design may be both functional/useful and aesthetic/visually appealing.

20 May 2015

Federal Court of Appeal confirms registrability of single-colour trademarks

In Rothmans Benson & Hedges Inc v Imperial Tobacco Products Limited, the Federal Court of Appeal has affirmed the principle that, in Canada, a single colour applied to the surface of an object, including product packaging, is capable of being registered as a trademark. The decision relates to two applications filed by Imperial Tobacco for the colour orange applied to cigarette packages in 2D and 3D forms.

18 May 2015

Pfizer's blue diamond-shaped pill not found to be distinctive

In Pfizer Products Inc v Canadian Generic Pharmaceutical Association, the Federal Court has found that Pfizer’s application for the Viagra tablet design was not distinctive under Section 38(2)(d) of the Trademarks Act. The court was not convinced that the relevant consumers would associate the blue, diamond-shaped unmarked Viagra pill with a single source.