Caroline Henrie (CA)

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Overview of IP Law In Canada – The Intellectual Property Review

By Kristin Wall (CA) and Caroline Henrie (CA) on May 18, 2022 Posted in Copyright, Trademark

The recently published Eleventh Edition of the Intellectual Property Review (the Review) includes a Canadian chapter. Readers are invited to learn more on the various forms of IP protection available in Canada, and highlights of important changes in Canadian IP law over the past year. The chapter was authored by members of the Brand Protection Blog team. The chapter … Continue reading

Zooming in on generic trademarks

By Caroline Henrie (CA) on June 22, 2021 Posted in Consumer goods, Trademark

Over the course of the last year Zoom became one of the most frequently used words. Due to its popularity, Zoom has been used as an adjective (“I’m hosting a Zoom trivia night”), a verb (“I’m Zooming”) and a noun (“I have a 9 am Zoom”). In the more recent months of the pandemic, expressions … Continue reading

Federal Court Issues Consolidated IP Guidelines

By Caroline Henrie (CA) and Kristin Wall (CA) on May 28, 2021 Posted in Intellectual Property, Litigation

On May 18, 2021, the Federal Court (FC) issued amended Case and Trial Management Guidelines for Complex Proceedings (the Updated FC Guidelines). As we previously reported, the FC first issued the FC Guidelines to consolidate and address topics in earlier FC Notices to the Profession. Notable amendments: The Updated FC Guidelines include the following notable … Continue reading

NATIERRA: Presenting Fresh Evidence on Appeal

By Caroline Henrie (CA) and Amy Grenon (CA) on February 17, 2021 Posted in Brands, Enforcement, Trademark

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

By Caroline Henrie (CA) on February 3, 2021 Posted in Brands, Trademark

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

By Caroline Henrie (CA) on January 25, 2021 Posted in Advertising, Brands, Domain names, Enforcement, Trademark

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

By Caroline Henrie (CA) and Brian R. Daley (CA) on January 22, 2021 Posted in Enforcement, Intellectual Property

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

By Caroline Henrie (CA) on January 9, 2021 Posted in Brands, Trademark

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

By Caroline Henrie (CA), Christopher Guerreiro (CA), Kristin Wall (CA) and Allyson Whyte Nowak (CA) on November 4, 2020 Posted in Enforcement

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

By Caroline Henrie (CA) on October 13, 2020 Posted in General, Trademark

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

By Caroline Henrie (CA) on May 27, 2020 Posted in General

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