Registering a trademark across multiple jurisdictions can be a complex process. Brand owners must strike a balance between maximizing protection across their jurisdictions of interest and managing both risks and costs to...more
A key component of any effective brand protection strategy is an anti-counterfeiting program. How can a brand owner protect its reputation and rights against counterfeiters, infringers and pirates? The answer will depend not...more
11/16/2023
/ Amazon ,
Budgets ,
CBSA ,
Collaboration ,
Counterfeiting ,
Enforcement ,
Jurisdiction ,
Law Enforcement ,
Reputation Management ,
Trademark Infringement ,
Trademark Litigation ,
Trademark Office ,
Trademarks
Last week, the Federal Court of Canada issued its long-awaited decision in Energizer Brands, LLC v Gillette Company, 2023 FC 804. The case is noteworthy because it is a “comparative advertising” case, and one of only a few...more
This spring, join our Smart & Biggar trademark experts and gain new insights at our popular Canadian Trademarks webinar series. Each webinar provides practical tips and strategies for global brand protection in Canada, with a...more
3/22/2023
/ Best Practices ,
Brand ,
Canada ,
Defense Strategies ,
Federal Court Litigation ,
Injunctive Relief ,
Intellectual Property Litigation ,
Intellectual Property Protection ,
Trademark Application ,
Trademark Cancellation ,
Trademark Litigation ,
Trademark Opposition Proceedings ,
Trademarks ,
Webinars
In today’s competitive innovation economy, digital technologies and artificial intelligence (AI) tools are increasingly used in business transformation and growth. In-house counsel at companies across industries need to be...more
SCC decision highlights the importance of obtaining a trademark registration to guard against claims of infringement and passing off -
The Supreme Court of Canada has now put an end to a dispute between Wenger SA, Group...more
In today’s competitive innovation economy, companies across industries face a wide range of potential legal issues and risks related to intellectual property (IP). Whether it is infringement of a valuable patented technology,...more
As we approach the one-year anniversary of the coming into force of the Canada-United States-Mexico Agreement (CUSMA) on July 1, 2021, we reflect on the changes that the CUSMA brought about for brand owners, particularly at...more
Earlier this month, the Federal Court issued its decision in Subway IP LLC v Budway, Cannabis & Wellness Store, 2021 FC 583, a case involving a cannabis retailer that knowingly adopted a parody mark in connection with its...more
6/23/2021
/ Canada ,
Cannabis-Related Businesses (CRBs) ,
Corporate Branding ,
Corporate Counsel ,
Depreciation ,
Loss of Goodwill ,
Parody ,
Passing Off ,
Reputational Injury ,
Trade Names ,
Trademark Infringement ,
Trademarks ,
Trademarks Act
This is the sort of letter that no one wants to receive: one containing the words “cease and desist”. Whether it arrives by post, email or someone showing up at your door with a personal delivery, a cease and desist letter...more
In a highly anticipated decision, the Federal Court of Appeal recently held that a trademark owner could demonstrate “use” of a trademark in Canada in association with “hotel services” in the absence of a brick-and-mortar...more
9/19/2020
/ Appeals ,
Brick-and-Mortar Stores ,
Canada ,
Goods or Services ,
Hilton ,
Hotels ,
Internet ,
Online Travel Vendors ,
Reaffirmation ,
Trademark Act ,
Trademarks ,
Use in Commerce
In a recent decision of Canada’s Federal Court illustrates the danger of adopting a mark or name “inspired” by a famous or well-known brand, even when confusion is unlikely. The decision is a cautionary tale, particularly for...more
7/13/2020
/ Canada ,
Cannabis-Related Businesses (CRBs) ,
Corporate Branding ,
Depreciation ,
Loss of Goodwill ,
Parody ,
Passing Off ,
Permanent Injunctions ,
Punitive Damages ,
Reputational Injury ,
Trade Names ,
Trademark Infringement ,
Trademarks ,
Trademarks Act
Late last month, in a landmark decision heralded by brand owners, the U.S. Supreme Court ruled in Romag Fasteners, Inc v Fossil Group, Inc that a plaintiff in a trademark infringement suit is not required to show that a...more
5/14/2020
/ Appeals ,
Burden of Proof ,
Canada ,
Charge-Filing Preconditions ,
Compensatory Awards ,
Dilution ,
Disgorgement ,
Equitable Relief ,
Litigation Fees & Costs ,
Mens Rea ,
Profits ,
Punitive Damages ,
Remedies ,
Romag Fasteners v Fossil ,
SCOTUS ,
Supreme Court of Canada ,
Trademark Infringement ,
Trademark Litigation ,
Trademarks ,
Trademarks Act ,
Willful Infringement
Brand owners looking to enforce their rights expeditiously (and inexpensively) need look no further than Canada, which offers brand owners a number of tools to obtain relief against infringers and counterfeiters in a...more
12/21/2019
/ Attorney's Fees ,
Canada ,
Corporate Branding ,
Counterfeiting ,
Discovery ,
Expedited Actions Process ,
Intellectual Property Protection ,
Litigation Fees & Costs ,
Personal Brands ,
Punitive Damages ,
Remedies ,
Summary Judgment ,
Trademark Infringement ,
Trademark Litigation ,
Trademarks
Health Canada News -
Health Canada issues updated guidance on PMNOC Regulations -
Health Canada has issued updated guidance reflecting the September 21, 2017 amendments: Guidance Document: Patented Medicines (Notice of...more
7/3/2018
/ Adverse Action Report ,
Biosimilars ,
Canada ,
Cannabis Act ,
Health Canada ,
Hospitals ,
Intellectual Property Protection ,
Medical Devices ,
Patent Litigation ,
Patented Medicines ,
Pharmaceutical Patents ,
PMNOC Regulations ,
Proposed Regulation
After an unpredictable few weeks, Bill C-45, the Cannabis Act, received Royal Assent on June 21, 2018, and adult use cannabis will be legal in Canada as of October 17, 2018. Canada will be only the second country in the world...more
The Canadian federal government is moving quickly towards legalizing the possession and consumption of cannabis for recreational purposes. However, Canada’s cannabis industry is already “overgrown” with many licensed (and...more
3/6/2018
/ Brand ,
Canada ,
Canadian Food Inspection Agency (CFIA) ,
Decriminalization of Marijuana ,
Exclusive Use ,
Intellectual Property Protection ,
Marijuana ,
Marijuana Related Businesses ,
Plant Breeders Rights Act ,
Plant Patents ,
Trademark Act ,
Trademarks
The Canadian federal government is moving quickly towards legalizing the possession and consumption of cannabis for recreational purposes. However, Canada’s cannabis industry is already “overgrown” with many licensed (and...more
2/15/2018
/ Brand ,
Canada ,
Canadian Intellectual Property Office (CIPO) ,
Continuous Use Requirement ,
Decriminalization of Marijuana ,
Goods or Services ,
Injunctive Relief ,
Marijuana ,
Marijuana Related Businesses ,
Medical Marijuana ,
Repeal ,
Scent Marks ,
Trademark Application ,
Trademark Infringement ,
Trademark Registration ,
Trademarks ,
Trademarks Act
Recently, the Canada Border Services Agency (CBSA), the federal organization responsible for policing Canada’s borders, issued a Customs Notice (CN17-27) to advise the public and rights holders that its 24/7 “Border Watch”...more