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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.

04 May 2015

Interlocutory injunctions make a comeback

The Federal Court has changed the enforcement landscape by granting its first interlocutory injunction in a trademark case in over 15 years. The decision in Reckitt Benckiser LLC v Jamieson Laboratories Ltd sheds light on the 'irreparable harm' requirement which has frustrated brand owners for years.

28 April 2015

Victoria's Secret fails to prevent registration of VALENTINE SECRET

In Eclectic Edge v Victoria’s Secret, the Federal Court has allowed the registration of three VALENTINE SECRET marks for women’s clothing and undergarments, finding that there was no likelihood of confusion with Victoria’s Secret’s VICTORIA’S SECRET marks. However, the mark VS A SECRET THAT WOMEN LOVE was refused on the ground that it was confusingly similar to Victoria’s Secret’s VS and VICTORIA’S SECRET marks.

09 April 2015

Amendments to Trademarks Act and regulations - implementation in late 2016 or 2017?

Two bills containing amendments to the Trademarks Act were passed in 2014, but trademark owners and practitioners are still wondering when the amendments will be implemented. An amended notice recently posted on the website of the Canadian Intellectual Property Office suggests that the amendments will not be implemented until sometime in 2017.

31 March 2015

Precedent-setting decision provides guidance on entitlement to claim profits in infringement cases

In the long-running dispute between tobacco industry giants Imperial Tobacco and Philip Morris, the Federal Court has confirmed that Imperial Tobacco is entitled to elect an accounting of Philip Morris’ profits resulting from the infringement of its rights in the MARLBORO mark. This case was the first opportunity in decades for the Federal Court to conduct an in-depth assessment of the issue of entitlement to profits in the trademark context.

20 March 2015

Federal Court orders permanent injunctive relief within nine months of start of lawsuit

The recent decision of the Federal Court in Black & Decker Corporation v Piranha Abrasives Inc is yet another example of how trademark owners can expeditiously enforce trademark rights and obtain permanent injunctive relief in Canada. Although the proceeding was contested, the court quite easily found that the respondent had infringed Black & Decker’s registered trademark rights.

18 March 2015

Federal Court takes on metatags

In Red Label Vacations Inc v 411 Travel Buys Limited, the Federal Court has addressed the issue of copyright and trademark protection in metatags, concluding that there had been no violation of the plaintiff’s alleged copyright or trademark rights. The case represents one of the first detailed reviews of these issues by a Canadian Court.

09 March 2015

No leave to appeal in case involving scope of protection of mark dominated by descriptive word

In Osmose-Pentox Inc v Société Laurentide Inc, the Supreme Court has declined to hear an appeal in a battle over the use of the words 'conservator' or its French equivalent 'conservateur'. The case is a useful reminder of the limits of protection to be accorded to marks that are dominated by descriptive elements.

19 February 2015

Decision highlights different tests for analysing clear descriptiveness of place of origin

In MC Imports Ltd v AFOD Ltd, the Federal Court has issued a decision expunging the trademark LINGAYEN on the grounds that the mark was clearly descriptive of the geographical origin of the goods for which it is used. The case highlights potentially conflicting lines of authority, which appear to posit different tests for analysing clear descriptiveness as it pertains to geographical origin.

09 February 2015

Federal Court of Appeal assesses confusion between marks consisting of Chinese characters

In Saint Honore Cake Shop Limited v Cheung's Bakery Products Ltd, the Federal Court of Appeal has considered the likelihood of confusion between two design marks consisting of Chinese characters. The case is a reminder of the need to comply with the Code of Conduct for Expert Witnesses, and flags the importance of assessing the actual consumers of the product or services in question, as opposed to all potential consumers.

02 February 2015

Don't flip your lid - FLIP-TOP not distinctive of tobacco products

In Philip Morris Products SA v Imperial Tobacco Canada Limited, the Federal Court has upheld a decision of the Trademarks Opposition Board rejecting an application by Philip Morris to register FLIP-TOP for tobacco products. The decision shows that an opposition can succeed because a proposed trademark is descriptive in relation to the associated goods, even if the mark is not clearly descriptive.

19 January 2015

New customs 'request for assistance' regime for counterfeits now in force

Canadian developments on the anti-counterfeiting front have ushered in a new customs 'request for assistance' procedure to provide for the detention of counterfeits at the Canadian border, an expanded definition for trademark infringement, and new criminal trademark and copyright sanctions.