A little over a year has passed since Canada overhauled its trademark legislation and acceded to the Madrid Protocol, making it easier than ever to protect trademark rights in Canada.
In this IP Update, we explore some of...more
8/26/2020
/ Canada ,
Canadian Intellectual Property Office (CIPO) ,
CETA ,
Corporate Branding ,
Designated Agent ,
International Trademark Protection ,
Madrid Protocol ,
Trademark Application ,
Trademarks ,
Trans-Pacific Partnership ,
United States-Mexico-Canada Agreement (USMCA) ,
WIPO
Prior to January 17, 2020, extensions of time were readily available during Canadian trademark prosecution. A single six-month extension could be secured without providing any substantive reasons. Further six-month...more
1/21/2020
/ Administrative Procedure ,
Administrative Proceedings ,
Canada ,
Corporate Counsel ,
Exceptional Case ,
Time Extensions ,
Trademark Application ,
Trademark Cancellation ,
Trademark Examination ,
Trademark Office ,
Trademark Opposition Proceedings ,
Trademarks
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
On July 22, 2019, the Federal Court issued its decision in Loblaws Inc v Columbia Insurance Company, 2019 FC 961. Pampered Chef, a Berkshire Hathaway company and a world-leader in the sale of premium kitchenware products, has...more
2018 was an exciting year for the trademarks profession in Canada. The long awaited changes to our Trademarks Act were announced, many of which will bring us in line this year with the rest of the world. There will also be a...more
2/4/2019
/ Budget Implementation Act ,
Canada ,
Color Marks ,
Corporate Branding ,
Fashion Branding ,
Intellectual Property Protection ,
Madrid Protocol ,
Motion Marks ,
New Regulations ,
Nice Classification ,
Scent Marks ,
Sound Marks ,
Trademarks ,
Trademarks Act ,
United States-Mexico-Canada Agreement (USMCA)
There were many interesting trademark cases coming out of 2018, a few of which are discussed below.
The scope of Canada’s anti-dilution remedy (section 22 of the Trademarks Act) is not limited to a defendant’s use of a...more
2/2/2019
/ Abandonment ,
Anti-Dilution Terms ,
Appeals ,
Brick-and-Mortar Stores ,
Canada ,
Comparative Advertising ,
Competition Act ,
Descriptive Trademarks ,
Hilton ,
Hotels ,
Inherently Distinctive ,
Leave to Appeal ,
Likelihood of Confusion ,
Mootness ,
Retail Sales ,
Reversal ,
Services ,
Trademark Act ,
Trademark Application ,
Trademark Cancellation ,
Trademark Infringement ,
Trademark Registration ,
Trademarks ,
Use in Commerce
Canada is increasingly becoming a hot bed for IP litigation involving U.S. IP owners, and provides a highly favourable forum from a procedural, substantive law and litigation costs perspective.
American companies have seen...more
Section 22 of the Canadian Trademarks Act, depreciation of a registered trademark’s goodwill, is a potentially powerful yet generally under-utilized weapon for dealing with damaging comparative advertising campaigns. In the...more
After more than a year of negotiations, Canada reached a new free-trade agreement with Mexico and the United States minutes before the midnight deadline on September 30, 2018....more
10/5/2018
/ Biologics ,
Canada ,
Collective Marks ,
Copyright ,
Copyright Terms ,
Counterfeiting ,
Cross-Border Transactions ,
Damages ,
Data Protection ,
Domain Names ,
Industrial Design ,
Intellectual Property Protection ,
NAFTA ,
Patent Law Treaty ,
Patent Term Adjustment ,
Patents ,
The Copyright Act ,
Trademark Infringement ,
Trademarks ,
United States-Mexico-Canada Agreement (USMCA) ,
US Trade Policies
Non-Canadian hoteliers have reason for celebration following the release of the Federal Court of Canada’s anticipated decision in Hilton Worldwide Holding LLP v Miller Thomson LLP, 2018 FC 895 (Hilton Worldwide)....more
9/14/2018
/ Appeals ,
Brick-and-Mortar Stores ,
Canada ,
Customer-Loyalty Programs ,
Goods or Services ,
Hilton ,
Hotels ,
International Litigation ,
Internet Retailers ,
Online Advertisements ,
Reversal ,
Trademark Registration ,
Trademarks ,
Use in Commerce
Non-Canadian retailers can breathe a sigh of relief thanks to the Federal Court of Canada’s decision in Dollar General Corporation v 2900319 Canada Inc, 2018 FC 778 (“Dollar General”). The decision reaffirms the Court’s...more