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17 September 2019

Strategies and pitfalls with fees under Canada’s new trademark regime

On 17 June 2019 significant amendments were introduced to the Trademarks Act with a view to bringing Canada’s trademark regime into line with the Nice Agreement, among others. This update provides some fee-based strategies to use under the amended act.

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.

06 June 2019

Parody law in Canada: experts split over need to amend trademark rules

A Quebec court’s ruling in a high-profile parody case has reignited discussion about the treatment of satire in Canadian trademark law. We speak to two market experts, who consider whether more legal clarity is required.

25 January 2019

Litigation procedures and strategies: Canada

The Competition Act prohibits promoting a product by making a representation that is false or misleading in a material respect. This provision is typically asserted in conjunction with other causes of action under the Trademarks Act.

26 December 2018

The intersection between trademarks and labelling laws: as illustrated by the Canadian food and cannabis industries

There are many Canadian trademark laws, regulations and statutes regarding selection, labelling and advertising in the food and recreational cannabis industries – all of  which affect long-term branding rights and enforcement.

09 November 2018

Why Canada’s unexpected trademark reforms are good news for brand owners

Trademark reforms proposed by the Canadian government are positive for brand owners, with mechanisms to tackle trademark squatting and modernised dispute resolution proceedings.

29 October 2018

Our privilege to serve – thoughts on Canada’s law of privilege

Privilege protects certain information and communication from disclosure. In-house counsel – as legal and business advisers to a company – must understand the limitations of privilege and how best to create and maintain it.

29 October 2018

Our privilege to serve – thoughts on Canada’s law of privilege

Privilege protects certain information and communication from disclosure. In-house counsel – as legal and business advisers to a company – must understand the limitations of privilege and how best to create and maintain it.

03 October 2018

“Very good for brand owners” – IP experts react to USMCA; INTA lauds deal as “major enhancement” over NAFTA

Following the announcement of a new major trade agreement between Canada, Mexico and the United States, we reached out to IP experts to explore their views on the IP aspects of the new deal. 

18 September 2018

<strong>Federal Court once again affirms that "use" of a trademark does not require bricks and mortar for non-Canadian businesses  </strong>

In Hilton Worldwide v Miller Thomson, the Federal Court of Canada has held that providing “hotel services” does not require a physical hotel in Canada to constitute “use” of a trademark in the country.

12 September 2018

Trademark procedures and strategies: Canada

Unregistered trademarks do not have statutory protection in Canada. The owner of an unregistered mark may enforce its rights, but this necessitates the establishment of a reputation through extensive use of the mark in Canada.

04 September 2018

No store, no problem: Federal Court’s broad interpretation of ‘use’ good news for non-Canadian retail trademark owners

The Federal Court of Canada has reaffirmed that providing ‘retail store services’ does not require a bricks-and-mortar establishment or direct delivery of products to Canada to constitute use of a trademark in Canada

29 August 2018

Canada moves ahead with fluid marks

Major amendments to Canada’s Trademarks Act are set to broaden the ability of brand owners to protect fluid marks, but will also introduce new obstacles to slogans.

29 June 2018

How brands should prepare for the big changes coming to Canada’s trademark market: exclusive data analysis

In our latest report, we delve into Canada’s trademark landscape. We examine how a major overhaul of its trademark laws may lead to a clogged up register, take a look at filing and litigation trends, and much more.

17 May 2018

The future’s green: cannabis brands on the rise in Canada

With the legalisation of recreational cannabis impending in Canada, new business models and opportunities are emerging for a surprising variety of brand owners.