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10 November 2014

Cider mark held to be deceptively misdescriptive

In Verger du Minot Inc v Clos Saint-Denis Inc, the Federal Court has upheld a decision of the Trademarks Opposition Board finding that the trademark CRÉMANT DE GLACE was deceptively misdescriptive when used in association with the sale of apple cider ('crémant' is a lightly sparkling wine, while the expression 'de glace' refers to alcohol that is produced using fruit that has been frozen).

04 November 2014

Bill C-43: incorporating the PLT and the Hague Agreement into Canadian law

The government has introduced Bill C-43, also known as the Economic Action Plan 2014 Act, No 2. In addition to implementing various tax measures and amending numerous federal acts, the bill seeks to make the Patent Act and Industrial Design Act consistent with the Patent Law Treaty and the Hague Agreement, respectively. This update focuses on the amendments to the Industrial Design Act.

07 October 2014

Mere use of official mark in domain name insufficient to establish infringement

In Insurance Corporation of British Columbia v Stainton Ventures Ltd, the British Columbia Court of Appeal has clarified the limits of an official mark under the Trademarks Act - namely that the mere use of an official mark in a domain name is not sufficient to establish infringement of the official mark.

06 October 2014

Canada’s Combating Counterfeit Products Act passes latest hurdle

Canada’s Combating Counterfeit Products Act is inching closer to reality, passing its third reading in Parliament late last week. Brian Isaac, partner at Smart & Biggar Fetherstonhaugh, has welcomed the move, noting: “While some concerns have been raised regarding the provisions of Bill C-8, reform of Canada’s anti-counterfeiting laws is overdue and the anti-counterfeiting community in Canada welcomes the apparent renewed interest in the issue by the government of Canada.”

29 September 2014

Federal Court finds SPIRIT BEAR official marks to be unenforceable

In Terrace (City) v Urban Distilleries Inc, the Federal Court has found that the plaintiffs had failed to provide evidence of use of the official marks SPIRIT BEAR in association with goods or services as of the relevant dates. Therefore, the official marks were unenforceable against Urban Distilleries, which manufactures spirits under the unregistered trademarks SPIRIT BEAR VODKA and SPIRIT BEAR GIN, among others.

23 September 2014

Federal Court: protection for official marks may end with dissolution of owner

In TCC Holdings Inc v The Families as Support Teams Society, the Federal Court has suggested that the protection for an official mark may end with its owner. The court’s remarks are notable as they reflect a broader shift within the Canadian legal environment with respect to official marks.

04 September 2014

Use and registration abroad: Federal Court revisits Thymes Decision

In 2013 the Thymes decision ended the debate on whether marks must be in use abroad at the time of filing where such use is claimed as a basis for a Canadian application. However, it led to uncertainty as to the validity of prior registrations which issued from applications based on use and registration outside of Canada where the use did not predate the Canadian filing date. The Federal Court has now put those concerns to rest in Coors v Anheuser-Busch.

22 July 2014

Court reinforces high standard for rejecting marks based on living individual's reputation

In Jack Black LLC v The Attorney General of Canada, the Federal Court has confirmed that the standard to be met in order to sustain an objection on the basis that a trademark “may falsely suggest a connection with any living individual” is extremely high, as it must be established that the living individual in question enjoyed a “significant public reputation” across Canada when the mark was adopted.

15 July 2014

Basis for aggravated and punitive damages confirmed and clarified by Federal Court of Appeal

In Bauer Hockey Corp v Sport Maska Inc dba Reebok-CCM Hockey, the Federal Court of Appeal has confirmed the circumstances in which aggravated damages are available and clarified the availability and required elements for claims for punitive damages. Among other things, the decision shows that mere allegations of intentional and wilful infringement of IP rights are insufficient to support a claim for punitive damages.

25 June 2014

Amendments to the Trademarks Act - 20 points you need to know

The Senate has passed the trademark amendments in Bill C-31, Canada’s Economic Action Plan 2014 Act, No 1. The bill contains major amendments to the current trademark system, and will impact searching, clearing, risk analysis and enforcement of trademarks in Canada. This update highlights the amendments to the Trademarks Act that will likely have the most impact for trademark owners.

18 June 2014

Is change coming to Canada’s official marks regime? Possibly

A private member’s bill has been put before Canada’s Parliament, seeking to amend the Trademarks Act to address official marks. The proposed changes in Bill C-611 include a definition of who constitutes a public authority, an objection/opposition procedure to the public notice of official marks, and the provision for renewals of public notice for official marks every 10 years.

17 June 2014

Souvenir maker granted injunction, delivery up and awarded compensatory damages for lost sales

In Gary Gurmukh Sales Ltd v Quality Good Imd Inc, the Federal Court has held that the marks CANADIAN FAST FOOD and CANADIAN POLAR BEAR IN SNOW STORM were valid and infringed. Among other things, the court found that Quality Goods had failed to rebut the presumption of validity of the marks, as it had produced insufficient evidence to demonstrate that the marks were no longer distinctive.

06 June 2014

Despite the furore, there are some positives to Canada’s trademark plans

The proposed changes to Canada’s Trademarks Act have proven controversial since they were announced back in March this year, and the final reading of Bill C-31 could reach the House Of Commons as early as next week. However, a number of practitioners are keen to outline the positives.

30 April 2014

Federal Court takes narrow approach to definition of 'broadcasting services'

In Unicast SA v South Asian Broadcasting Corporation Inc, the Federal Court has taken the view that the display of a trademark on the website of a radio station based in Switzerland, but accessed by Canadians in Canada over the Internet, did not constitute use of a trademark in association with “radio communications” and “the broadcasting of radio programming” in Canada.

16 April 2014

Federal Court confirms protection for colour trademarks

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