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28 June 2019

Cannabis counterfeits; the campus consequence of <em>Brunetti</em>; and Anheuser-Busch eyes esports market: news digest 

In our latest news round-up, we look at how Alibaba is seeking increased brand engagement, Anheuser-Busch making a play for the esports industry, a USPTO call for comments, Albania’s accession to the Geneva Act and much more.

31 May 2019

KIPO launches all-women anti-counterfeiting group, Make Canada Great Again suit, and cannabis brands: news digest

In our latest news digest, we look at an anti-monopoly committee in Uzbekistan clamping down on a Coca-Cola copy, the BBC drawing ire for perceived slogan nabbing, and much more.

28 May 2019

Why complaints that new gTLD pricing ‘.sucks’ may have been over the top

A recent academic study exploring the need for updated regulation governing domain names in the United States has suggested that, with many brand owners adopting a laid back, wait-and-see approach to registrations, initial complaints surrounding the high costs of the ‘.sucks’ domain name may have been overblown.

22 March 2019

Honeywell drops ‘.brand’, Canada joins Madrid, and IACC cracks down on iOffer: news digest

In our latest news digest, we look at Disney powering up its brand with its 21st Century Fox acquisition, Chinese supermarkets removing fake Starbucks items from shelves, a football club losing a trademark fight, and much more.

31 October 2018

Settlement privilege and domain name arbitrations: the case of ‘’

A recent decision under Canada’s Domain Name Dispute Resolution Policy shows that deeming correspondence “without prejudice” may impact a complainant’s ability to prove the registrant’s bad faith and could ultimately decide the outcome of the dispute.

17 April 2018

WHOIS access charges, NGOs take aim at watch list plans and INTA applauds ‘Brand India’: news round-up

In our latest round-up, we look at a registry’s plans to charge trademark owners for access to WHOIS data and  the war of words over plans for an IP markets watch list.

01 January 2018

Canada: Online business expansion may still result in restricted trademark rights

Canadian courts have demonstrated a shift in the interpretation of use of a trademark. Brand owners should consider how they engage online with consumers in order to maintain protection.

25 July 2017

The Internet has no borders

The Supreme Court of Canada has issued a landmark decision in Google, Inc v Equustek Solutions Inc, confirming that Canadian courts have jurisdiction to issue interlocutory injunctions against a party’s activities that extend beyond Canada and have global reach.

01 March 2017

Canada: Dotting the ‘.com’ and crossing the ‘.sucks’: how to manage your domain name portfolio

Domain name strategy and portfolio management should be a key component of a brand’s overall IP strategy. A mindful, measured and disciplined approach is crucial

14 February 2017

Keyword advertising decision reversed on appeal

In Vancouver Community College v Vancouver Career College, the British Columbia Court of Appeal has overturned a decision of the British Columbia Supreme Court concerning whether the use of keywords in online advertising can constitute passing off. While the Court of Appeal decision reinforces the principle that purchasing a competitor’s mark as a keyword will not alone be sufficient to constitute passing off, it suggests that the appropriate time to consider confusion is when consumers view the search engine results page.

08 July 2016

Domain registration cancelled due to Canadian Presence Requirements

A recent decision of a panel under the Canadian Internet Registration Authority Domain Name Dispute and Resolution Policy has highlighted a peculiar aspect of the '.ca' registry: a registrant must satisfy the Canadian Presence Requirements.

03 May 2016

Court of Appeal clarifies domain jurisdiction

In Michaels v Michaels Stores Procurement Co, the Federal Court of Appeal provided a clear statement that the federal courts have jurisdiction to order the transfer of domain names.

06 April 2016

Keeping up with technology – goods versus services

Specialty Software Inc registered the trademark MEDINET in association with computer software programs delivered to purchasers on disk, so the mark was registered in relation to goods. As the software is now delivered online, the question arose as to whether the trademark was being used for services as opposed to goods.

03 February 2016

Registrant’s pay-per-click domain is bad faith

In a recent domain name dispute the panel found that the registrant had intentionally attempted to attract, for commercial gain, internet users to an online location by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation or endorsement of the registrant's website, which was evidence of bad faith.

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.