Caroline Henrie (CA)

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NATIERRA: Presenting Fresh Evidence on Appeal

A recent decision of the Federal Court, Brandstorm, Inc. v Naturally Splendid Enterprises Ltd., 2021 FC 73, has confirmed that where “sufficiently substantial and significant” evidence is presented on review, the appeal of a decision of the Registrar of Trademarks (the Registrar) pursuant to section 56(5) of the Trademarks Act (the “Act”) can be done … Continue reading

Expedited Examination for COVID-19 Related Marks Avoid Systemic Delays in Canadian Examination

The delays in Canadian trademark examination are becoming excruciating. The Trademarks Act and the Trademark Regulations provisions do not expressly provide for expedited examination of a Canadian trademark application. The long-standing practice of the Canadian Intellectual Property Office (“CIPO”) was to refuse requests for the expedited examination.  Section 2.2 of the Trademark Examination Manual, the … Continue reading

Passing off as Parsons: Injunction and Damages Granted to Halt Phishing Website

Last week, in Parsons Inc. v Khan, 2021 FC 57, the Federal Court found the owner of a phishing website liable for passing itself off as the Applicants’, Parsons Corporation and Parsons Inc. (“Parsons”). Parsons, a multinational engineering and construction firm with a Canadian subsidiary, has applied-for and used, but not yet registered, the PARSONS … Continue reading

Federal Court updates guidance on COVID-19

On January 18, 2021, the Federal Court (FC) issued its latest COVID-19 Practice Direction, which supersedes all prior COVID-19 practice directions. The FC’s facilities in Ontario and Quebec have been closed in light of the recent public health measures to combat the pandemic. The FC will continue its operations remotely in these two provinces until … Continue reading

How the Canadian Trademarks Office Considers Inherent Distinctiveness

Inherent distinctiveness is a measure of a trademark’s originality – those elements that make a brand unique and recognizable to the public. Trademarks indicate the source of goods or services for consumers. As such, distinctiveness is said to be the “essence of a protectable trademark and the foundation of trademark law”[1]. Canada Now Examines for … Continue reading

Federal Court issues new consolidated guidelines on complex proceedings

On October 22, 2020, the Federal Court (FC) issued new Case and Trial Management Guidelines for Complex Proceedings (the FC Guidelines). These new consolidated FC Guidelines address many of the topics raised in the following earlier FC Notices to the Profession: Case management: Increased Proportionality in Complex Litigation before the Federal Court (June 24, 2015); … Continue reading

Federal Court of Appeal Reviews Meaning of “Use” of a Trademark in Canada

In Miller Thomson LLP v Hilton Worldwide Holding LLP, 2020 FCA 134, the Canadian Federal Court of Appeal recently confirmed that a trademark associated with “hotel services” was valid despite no brick-and-mortar presence in Canada.  More specifically, the Court acknowledged that providing incidental or ancillary services to the registered service can be considered to be … Continue reading

Canadian Intellectual Property Office Further Extends Statutory Deadlines to June 15, 2020

The Canadian Intellectual Property Office (CIPO) announced that it has further extended deadlines to June 15, 2020. In order to reduce the impact of COVID-19 and ensure intellectual property owners are not prejudiced by the pandemic, CIPO has further extended deadlines under the Patent Act, the Trademarks Act and the Industrial Design Act to June … Continue reading
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