Mark Edward Davis (CA)

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Grey Goods and False Labels: Federal Court Grants Interlocutory Injunction in a Trademark Case

In a recent trademark passing off case, TFI Foods Ltd. et al. v. Every Green International Inc., 2020 FC 808, the Canadian Federal Court granted an interlocutory injunction prohibiting the defendant from selling grey goods in Canada.  Specifically, the defendant was enjoined from using labels falsely identifying it as the exclusive manufacturer of certain imported … Continue reading

Canadian Intellectual Property Office Further Extends Deadlines to July 6, 2020

The Canadian Intellectual Property Office (CIPO) has announced a further extension of deadlines to July 6, 2020. All statutory deadlines under the Patent Act, the Trademarks Act, and the Industrial Design Act falling between March 16, 2020 and July 3, 2020 are now automatically extended to July 6, 2020 as a result of the ongoing … 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

Canadian Intellectual Property Office Further Extends Statutory Deadlines to June 1, 2020

The Canadian Intellectual Property Office (CIPO) has announced a further extension of deadlines to June 1, 2020. CIPO is working hard to continue operations as usual in these unforeseen circumstances. To ensure Canadian intellectual property owners do not have their rights compromised by the Covid-19 pandemic, CIPO has extended statutory deadlines that fall between March 16 … Continue reading

Canadian Court Openings Begin – Closure Updates May 1

Please see our updated version of this article, published July 10, 2020. As a further update to our post earlier this week, the Federal Court and British Columbia Supreme Court issued updated notices, and Quebec has extended its declaration of a state of health emergency until May 6, 2020. We will continue to provide updates … 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 Intellectual Property Office further extends deadlines to May 18, 2020

The Canadian Intellectual Property Office (CIPO) announced today that it has further extended deadlines under the Patent Act, the Trademarks Act and the Industrial Design Act to May 18, 2020. While Canadian intellectual property owners should always consult with their professional advisors concerning specific deadlines, the general effect of CIPO’s designation means that deadlines falling … Continue reading

Court Suspensions Continue, with Some Exceptions

Please see our updated version of this article, published July 10, 2020. An Update on the Response from Canadian Courts to COVID-19 We are now more than a month in to social distancing measures, and it is time for an update on the status of the courts across Canada. As with the rest of us, … Continue reading

Canadian Courts Can Act Swiftly to Stop Trademark Infringement and False Advertising

Canadian courts have demonstrated their intention, and ability, to continue to dispense justice despite the pandemic. Adaptability has always been a recognized strength of the common law. In many cases, particularly those involving trademark infringement and false advertising, time is of the essence.   There is every reason to expect that justice will continue to be … Continue reading

Federal Court of Canada Extends Suspension Period to May 15, 2020

By Updated Practice Direction and Order dated April 4, 2020, the Federal Court has further extended the Suspension Period to May 15, 2020.  It has simultaneously mapped out a strategy to keep the Court running as efficiently as possible under the circumstances. During the Suspension Period (which began March 16, 2020 and currently runs until May … Continue reading

Canadian Federal Court of Appeal Extends Suspension of Hearings to May 15, 2020

In a Notice to the Parties and the Profession issued April 2, 2020, the Federal Court of Appeal has confirmed that the suspension period implemented on March 16, 2020 will be extended to Friday, May 15, 2020.  All matters scheduled to be heard during this Suspension Period are adjourned. The business of the Court will … Continue reading

UPDATE: Canadian Intellectual Property Office further extends all deadlines to May 1st

In response to the continuing disruption caused by the COVID-19 outbreak,  the Canadian Intellectual Property Office (CIPO) has announced on March 27, 2020 a further extension for filing deadlines  – all deadlines ending in the month of April 2020 will automatically be extended to May 1, 2020. Parties in proceedings before the Trademarks Opposition Board should … Continue reading

Response from Canadian Courts to COVID-19

Please see our updated version of this article, published July 10, 2020. We know you have a lot to think about and plan right now and over the next few weeks. You can rely on us to keep your intellectual property litigation matters  moving forward.  To that end, we wanted to provide an update on … Continue reading

Unauthorized Reproduction of Online Content Proves Costly

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

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

Canadian Trademark Oppositions – Put your best foot forward

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

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”

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

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

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

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

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
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