Mark Edward Davis (CA)

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Unauthorized Reproduction of Online Content Proves Costly

By Mark Edward Davis (CA) and Maneesha Gupta (CA) on September 21, 2019 Posted in Copyright

Earlier this year, the Federal Court awarded damages of $20 million for the unauthorized reproduction of obituaries online. That decision, Thomson v. Afterlife Network Inc., 2019 FC 545, demonstrates that severe penalties are available against online operators who infringe copyright for commercial purposes. Background Afterlife, an online website that reproduces obituaries, launched in 2017. Afterlife reproduced over … Continue reading

Unauthorized invoices – Canadian trademark owners beware

By Mark Edward Davis (CA) and Maneesha Gupta (CA) on June 22, 2019 Posted in Trademark

Canadians trademark owners are being targeted with misleading fee and renewal notices. As discussed previously, this is not a new phenomenon, but is one we are seeing with increasing incidence. These seemingly official invoices have caused some to pay exorbitant fees to private companies in the mistaken belief that they are paying fees required by the Canadian Intellectual Property Office (CIPO).… Continue reading

Enforcing Foreign Trademark Decisions in Canada

By Mark Edward Davis (CA) on June 19, 2019 Posted in General, Trademark

Foreign judgments in trademark cases are enforceable in Canada. The recent decision of Justice Perell in Dead End Survival, LLC v. Marhasin provides a succinct roadmap for doing so. The Court had no trouble enforcing a judgment from the US District Court which included both monetary and non-monetary relief: Dead End Survival’s judgment was for … Continue reading

Canadian Trademark Oppositions – Put your best foot forward

By Mark Edward Davis (CA) and Maneesha Gupta (CA) on April 21, 2019 Posted in Trademark

Before a Canadian trademark is registered, it must be advertised and exposed to third-party opposition before the Canadian Trademarks Opposition Board (“TMOB”). Procedural complexity has triggered criticism of Canadian trademark opposition proceedings as formalistic. For example, appeals from the TMOB to the Federal Court are available as of right and it has always been a peculiar feature of … Continue reading

Ad Standards Canada updates its Dispute Procedure

By Mark Edward Davis (CA) and Patrick Levesque (CA) on February 26, 2019 Posted in Advertising

Advertising Standards Canada (“Ad Standards”) is a not-for-profit self-regulatory body that provides competitors with a confidential forum for the resolution of advertising disputes as an alternative to a court action. The process for dispute resolution with Ad Standards is governed by the Advertising Dispute Procedure (the “Dispute Procedure”). The Dispute Procedure is intended to provide a … Continue reading

Cosmetic Warriors Lose Trademark Battle – No Use in “the Normal Course of Trade”

By Mark Edward Davis (CA) on February 4, 2018 Posted in Trademark

A Canadian trademark registered in association with goods must be used in “the normal course of trade”. Riches, McKenzie & Herbert LLP v. Cosmetic Warriors Limited, 2018 FC 63, considered whether Cosmetic Warriors’ registered trademark, LUSH, was used in association with t-shirts in the normal course of trade. Cosmetic Warriors sold the t-shirts to employees for promotional purposes. On the evidence, Justice Manson concluded … Continue reading

Brands Around the World: Best Practices Roundtable on Protecting Your Valuable Brand

By Mark Edward Davis (CA) on November 16, 2017 Posted in Counterfeiting, Trademark

On Monday, November 13, 2017, Norton Rose Fulbright’s New York office was pleased to host an international roundtable on best practices for brand protection. Moderated by Linda Merritt of our Dallas office, the event featured presentations by: Georgina Hey, Sydney Clare Jackman, London Karen MacDonald, Vancouver Daniel Marschollek, Frankfurt / Munich The roundtable brought together … Continue reading

Extending Brand Protection to Canada

By Mark Edward Davis (CA) on August 25, 2017 Posted in Trademark

Brand protection is important. Foreign service providers interested in extending their brand equity to Canada will be encouraged by the Federal Court’s recent decision in AT&T Intellectual Property II, L.P v. Lecours, Hebert Avocats Inc., 2017 FC 734. In this case, AT&T was able to protect its brand and maintain its Canadian trademark registration for … Continue reading

Protest Site Grounded for Using Adulterated Trademarks

By Mark Edward Davis (CA) on August 14, 2017 Posted in Trademark

In United Airlines, Inc. v. Cooperstock, 2017 FC 616, the Federal Court of Canada enjoined a disgruntled traveler from using colorable variations of United Airlines’ trademarks on a protest website he set up at www.untied.com. Using an anagram of the official www.united.com website as a domain name, the impugned material posted on the site included adulterated … Continue reading

Important benefits for Canadian trademark registrations

By Mark Edward Davis (CA) and Amy Grenon (CA) on April 26, 2017 Posted in Trademark

While Canadian trademark owners can enforce their rights without obtaining a registration, there are a number of significant advantages to registering a trademark in Canada, including: The Right to the Exclusive Use of the Mark in Canada. Section 19 of the Trademarks Act gives the owner of a registered trademark the exclusive right to use … Continue reading