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25 February 2016

An aggressively claimed first use date dooms application

In the recent Constellation Brands Québec Inc v Sociedad Vinícola Miguel Torres SA (2016 TMOB 4) decision, the Trademarks Opposition Board suggested that marks appearing on goods shipped into Canada cannot be said to be used until the goods have actually arrived in the country.

24 February 2016

Consumer perception: not relevant in determining whether geographic trademark is clearly descriptive

In a recent decision the Federal Court of Appeal considered whether a trademark with a geographic component is registrable when the services of interest originate from the region associated with the trademark.

23 February 2016

Offensive trademarks: can they be registered in Canada and the US?

Canada has a prohibition against the adoption of “scandalous, obscene or immoral” marks, which is arguably similar to the US provision. The In re Simon Shiao Tam decision raises an interesting question as to how Canadian courts would respond to arguments that the prohibition against such offensive marks is unlawful.

01 February 2016

Can metatag use constitute grounds for infringement or passing-off claims?

The Federal Court of Appeal of Canada has released a decision which opens up the possibility that use of a trademark by a third party as a metatag might give rise to a claim for trademark infringement or passing off.

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


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.