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AT&T's GO PHONE Trademark Registration Saved by Roaming Services Offered in Canada

A recent decision involving an AT&T trademark demonstrates how the global reach of technology businesses can sometimes result in a blurring of markets and make documentation of trademark use in Canada difficult to retrieve...more

The Best Defence Is a Good Offence: How to Get Rid of Threatening Trademark Registrations

In Ontario cottage country, locals have been confronted with the registration of the trademark HALIBURTON, the name of the county in which they operate. The registration may threaten uses made by other businesses in the area....more

Going to California—Google Asks U.S. Court to Declare Supreme Court of Canada's Global Injunction Unenforceable

The Supreme Court of Canada recently confirmed the availability of a novel form of worldwide injunction whereby Google, a non-party to the litigation, was required to block worldwide access to websites operated by a...more

Pharma and Biologics Disputes in Canada—Big Changes for Big and Small Molecule Litigation

The patent litigation that propels generic and biosimilar products to market will soon change dramatically. July 15, 2017, marked the release of long-awaited proposed amendments to the Patented Medicines (Notice of...more

University's Infringing Reproductions Fall Short of Fair Dealing

The fair dealing user right, as an exception to copyright infringement, has its limits. The fact that a use falls within an enumerated purpose under the Copyright Act is no guarantee of immunity from infringement. To avoid...more

Now You See It, Now You Don’t: SCC Upholds Worldwide Injunction That Alters Google Search Results

The Supreme Court of Canada has upheld a novel injunction order against Google, requiring it to remove certain websites from worldwide search results. For litigants in Canadian courts, Google v. Equustek enlarges both the...more

Procure and Enforce—Canada's Highest Court Hands IP Owners Two Wins in Three Days

The Supreme Court of Canada has issued two IP decisions in the span of three days—both of which spell victory for IP rights-holders. One case confirms the availability of a novel form of worldwide injunction where a non-party...more

United Airlines Grounds Complaint Website

A joke does not work if it needs to be explained. While some complaint and parody websites may constitute fair dealing, close copying of trademarks and copyrighted works, combined with mean-spirited commentary, will not fly....more

Captain Morgan Defeats Admiral Nelson in a Rum Branding Battle

The victory in the fight between two rum competitors demonstrates that unregistered trade dress rights are alive and well in Canada, admissible survey evidence remains a useful tool for proving confusion, and a competing...more

Federal Court Strikes Patent Infringement Action Where Plaintiff Could Not Articulate How Its Rights Were Infringed

A patent owner cannot sue in the hopes that the necessary facts to support infringement will emerge during discovery. From the outset, a plaintiff must be able to frame its rights and how those rights have been infringed....more

Tips to Set Your Business up for Successful IP Litigation

Delay in asserting IP rights can be detrimental to obtaining quick injunctive relief, and evidentiary gaps can make your case a non-starter. It is therefore important for a business to be prepared to advance claims against...more

US Supreme Court Ruling on Exhaustion of Patent Rights is Welcome News for Canadian Exporters of Refurbished Goods

In the United States, once a patentee has sold its product—whether domestically or internationally—its patent rights in that product are exhausted; the patentee can no longer use patent law to control refurbishing or resale...more

Evidence of Actual Confusion Is Not Determinative in Trademark Infringement Cases

To succeed in a trademark infringement case, a plaintiff must prove a likelihood of confusion—that a casual consumer would likely be confused into thinking the source of the defendant's products or services is the same as or...more

Unique but Not Distinctive–Colour and Shape Trademark Applications Rejected for Asthma Inhalers

Trademark protection for the shape and colour of pharmaceutical products remains elusive. Even if the appearance of a tablet or inhaler is unique, a trademark registration will be rejected without evidence that physicians,...more

Higher Costs Awards for the Winning Party in Federal Court IP Cases

In Canada, the losing party pays the winner’s litigation costs. For years, costs awards were assessed in accordance with a tariff and were generally inadequate. The Federal Court's recent trend in awarding lump sum costs...more

IP Trials with Less Tribulation: New Federal Court Guidelines Promote Cooperation and Efficiency

This week's most noteworthy development is not a single case—it is a practice direction that will govern how all complex intellectual property cases will be tried. The new Trial Management Guidelines formalize trial...more

An Obligation to Compensate a Patentee for Infringement May Not End When the Patent Expires. For the First Time, the Federal Court...

An infringer's liability to compensate a patent owner may not end when the patent expires. The Federal Court has made a novel award of "springboard" profits, requiring an infringer to account for profits it made even after...more

Just How Predictable Must the Invention Be to Lose Patent Protection? Depends on the Inventive Concept

Only a true invention can be patented; a patent claim to an invention is not valid if the invention was obvious. Assessing obviousness can be thought of as bridging the gap between two cliffs: on one side is the existing...more

Yes—Copying Photographs from the Internet Can Get You into Trouble

Although it happens all the time, reproducing photographs found on the internet for use in business is fraught with risk. Businesses should only copy images where there is clear permission to use them—or face a substantial...more

Why Brand Owners Need to Keep a Paper Trail

Good evidence wins cases. In a trademark opposition, evidence demonstrating how and for how long a mark has been used in commerce (for example, on hangtags, labels, packaging, signage, invoices and online platforms) can be...more

When Will Expert Evidence Be Excluded?

Experts play an important role in IP litigation, but the court will carefully consider whether the proposed expert evidence is necessary to assist the trial judge and has demonstrated an increasing willingness to determine,...more

Federal Court Cracks Down on Intentional Infringement with $1 Million Punitive Damages Awards

It's been a costly week for intentional infringers of intellectual property (IP) rights. In two separate decisions, the Federal Court of Canada has awarded $1 million in punitive damages. These are among the highest punitive...more

Canadian Playground Fight Highlights the Importance of Industrial Design Protection

A recent decision of the Federal Court of Canada has highlighted the difficulties in asserting trademark and copyright rights related to the appearance of functional products with unique design elements....more

Will the Supreme Court Rein in Evasive Defendants? Equustek v Google Inc

The persistence of a small technology company in British Columbia may expand the options available in Canadian courts to enforce intellectual property rights....more

Brown v. Canada Clarifies Obligations of Patent Applicants

Bennett Jones successfully represented the Intellectual Property Institute of Canada (IPIC), Canada’s preeminent association of intellectual property professionals, as an intervener before the Federal Court of Appeal in Brown...more

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