Karen MacDonald (CA)

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Goodwill Hunting: Herbs R Us depreciates the goodwill of Toys R Us

Trademark owners often face challenges when attempting to enforce against non-confusing third party trademark use, for example, where someone has adopted a “parody” mark, where the mark may be similar trademark, or have the same ‘look and feel’, but in a completely different consumer space such that consumer confusion is unlikely. But where such mark … Continue reading

Think bankruptcy will save you? Think again, counterfeiters

One of the most oft heard “defence” from a purveyor of counterfeit goods, when faced with the prospect of a significant damages award, is “I’ll just go bankrupt”.  The threat being that, unless the right holder lets the counterfeiter off the hook, the counterfeit will seek to render themselves judgment proof, looking to disincentivize legal … Continue reading

Canada’s Trademark Overhaul – 1 year out

On June 17, 2019, Canada’s trademark regime went through the most significant changes in over 50 years.  Where have we landed, a year after the new provisions came into force? One thing seems certain: Canada’s Trademark Examiners are loving the new “non-distinctive” objection.   It has become the objection du jour, and sometimes appears to be … Continue reading

Federal Court of Canada Further Extends Suspension Period But Remains Ready for Action(s)

The Federal Court of Canada has just issued a new Practice Direction and Order (COVID-19): Update #2 (April 29, 2020).  The April 29 Practice Direction amends the Court’s previous Updated Practice Direction and Order (COVID-19), dated April 4, 2020. The April 29 Practice Direction confirms that, subject to certain exceptions, no hearings will be held until June … Continue reading

Canadian Anti-counterfeiting under the USMCA – what you see? We (mostly) already got it

The USMCA – aka NAFTA 2.0 – has a Chapter devoted to intellectual property, which has been the subject much consideration and debate since release of the text on October 1, 2018.  With some commentators lamenting that Canada “caved” to US demands and predicting that the IP provisions of the USMCA will stifle Canada’s innovation … Continue reading

Louis Vuitton’s argument for landlord liability gaining traction in Canada

Louis Vuitton is attempting to raise the bar in Canada for landlord liability in the sale of counterfeit goods, pursuing several flea market operators in the Ontario Superior Court for the sale of counterfeit Louis Vuitton merchandise taking place on their premises. In its action, Louis Vuitton claims that the landlords of the flea markets … Continue reading
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