NRF Digital Team

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Québec French Language Law Reform: Upcoming Changes for Businesses

Photo of Catherine Daigle (CA)By Catherine Daigle (CA) and NRF Digital Team on Posted in Advertising, Brands, Trademark
Following a well-publicized debate, on May 24, 2022, the National Assembly of Québec finally passed the Act respecting French, the official and common language of Québec (Bill 96), a major reform of the 1977 Charter of the French Language (the Charter, also known as Bill 101). The Charter sets out language requirements for product packaging, … Continue reading

Federal Court of Canada Issues Default Judgment to Stop Online Infringement

By NRF Digital Team on Posted in General
Default judgment can be an effective way to stop online infringement.  The Federal Court’s decision in Kaira District Co-operative Milk Producers’ Union Limited v. AMUL Canada, 2021 FC 636 is the most recent example of the effectiveness of default judgment.  Kaira District Co-Operative Milk Producers’ Union Limited and Gujarat Cooperative Milk Marketing Federation Ltd. (collectively, … Continue reading

Canada’s Federal Court of Appeal: Site-blocking Orders are Here to Stay

By NRF Digital Team on Posted in General
The Federal Court of Appeal, in Teksavvy Solutions Inc. v. Bell Media Inc., 2021 FCA 100 (“Teksavvy”), affirmed an order compelling non-party Internet service providers (ISPs) to block access to websites of the pirated television streaming service GoldTV. This decision confirms that blocking orders are available in Canada as a remedy to limit access to … Continue reading

Canada Consults on Online Copyright Reform

By NRF Digital Team on Posted in Copyright, General, Intellectual Property
On Wednesday, April 14, 2021, the Canadian government launched a consultation on “a Modern Copyright Framework for Online Intermediaries”, seeking comments from the public until May 31. The goal of this consultation is to “ensure that Canada’s copyright framework for online intermediaries reflects this evolving digital world.” Alongside the announcement of this consultation, the government … Continue reading

NATIERRA: Presenting Fresh Evidence on Appeal

Photo of Caroline Henrie (CA)By Caroline Henrie (CA) and NRF Digital Team on 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

Breaking new ground(s)? McDonald’s opposes “McMortgage” citing depreciation of goodwill

Photo of Elizabeth Williams (CA)By Elizabeth Williams (CA) and NRF Digital Team on Posted in Brands, Trademark
For the first time ever, Canada’s Trademark Opposition Board (TMOB) has held that a ‘depreciation of goodwill’ claim can serve as a valid ground of opposition in trademark opposition proceedings. In doing so, the TMOB has arguably continued the recent trend in Canadian trademark jurisprudence of expanding the application of the depreciation of goodwill remedy … Continue reading

Stuff of folklore: the sale of Taylor Swift’s masters

By NRF Digital Team on Posted in Copyright
Scooter Braun and Ithaca Holding’s recent acquisition of the record label Big Machine Records and, most importantly, the master recordings of Taylor Swift’s first 6 albums is no love story. Indeed, Scooter Braun’s subsequent USD $300 million sale of these masters to the Disney family founded private equity firm, Shamrock Capital, has Ms. Swift seeing … Continue reading

Domain Names and Online Trademarks: When is a Consumer Confused?

By NRF Digital Team on Posted in Advertising, Domain names, General
As more businesses move online, the value and importance of domain names and online trademark enforcement grows. The Superior Court of Quebec has reaffirmed that a confusing domain can land your business in legal trouble. The dispute arose between the unregistered trademark of Cabanons Mirabel, and confusing domain names chosen by a competitor. Cabanons Mirabel … Continue reading

Where the Rubber Hits the Road: Damages for Canadian E-Commerce Copyright Infringement

By NRF Digital Team on Posted in Copyright, General
In Rallysport Direct LLC v 2424508 Ontario Ltd, 2020 FC 794, the Canadian Federal Court awarded $357,500 in statutory damages and $50,000 in punitive damages for infringement of copyright in 1,430 photographs. Background Rallysport Direct LLC (RSD) is a wholesaler and direct-to-consumer supplier of aftermarket automotive components and accessories. It sells its products on its … Continue reading

The Quebec Superior Court declines to issue a Norwich order to identify the supplier of grey market perfumes

By NRF Digital Team on Posted in Counterfeiting, Trademark
In a recent judgment, the Quebec Superior Court denied a request for an order against a wholesaler/retailer to identify the suppliers of branded products obtained via parallel importation and sold in Quebec without the brand owner’s authorization. The brand owner sought the information in order to sue the products’ suppliers. Coty Inc., a manufacturer of … Continue reading

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

By NRF Digital Team on Posted in Counterfeiting, General, Trademark
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

By NRF Digital Team on Posted in Counterfeiting
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

By NRF Digital Team on Posted in General, Trademark
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

Ready, set, Zoom! Trials in the time of COVID-19

By NRF Digital Team on Posted in General
On May 21, 2020, in Rovi Guides, Inc. v Videotron Ltd., the Federal Court of Canada took an important step forward in its digital evolution, setting the parameters for a remote trial to be conducted by videoconference, following a trial management conference. The decision gives an indication as to how the Federal Court envisages trials … Continue reading

Be careful how you ask – Canadian court considers demand letters

By NRF Digital Team on Posted in General, Patents
In the recent decision, Fluid Energy Group Ltd v Exaltexx Inc, 2020 FC 81, the Canadian Federal Court granted an interlocutory injunction prohibiting a plaintiff patent holder in a patent infringement action from sending cease and desist letters to suppliers associated or involved with the defendant alleged infringer. This decision builds upon other recent Canadian … Continue reading

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

By NRF Digital Team on Posted in General
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

Online Brand Management: Avoiding Toxic Social Influencers

Photo of Elizabeth Williams (CA)By Elizabeth Williams (CA) and NRF Digital Team on Posted in Advertising, General, Trademark
Online brand protection must be taken into consideration, particularly when faced with changing consumer behavior, market uncertainty and rampant misinformation. Social influencers with large audiences that value their opinions on consumer products and health regimes are a valuable tool for companies and governments looking to reach large online communities quickly. However, some influencers have been … Continue reading

UPDATE ON COVID-19 : CIPO announces extensions in wake of outbreak in Canada

Photo of Catherine Daigle (CA)By Catherine Daigle (CA) and NRF Digital Team on Posted in Copyright, General, Patents, Trademark
Given the many challenges faced by all businesses in dealing with the COVID-19 outbreak, the Canadian Intellectual Property Office (CIPO) has advised that it will relax filing deadlines for the remainder of March 2020.  This decision was first announced on March 16, 2020 and further updated yesterday, March 19, 2020. What you need to know All … Continue reading

Securing a Site-blocking Order in Canada: Sure! But how?

Photo of Renaud Garon GendronBy Renaud Garon Gendron and NRF Digital Team on Posted in Copyright, General
The Federal Court has recently issued an order compelling Internet service providers (ISPs) to block their customers from accessing pirate subscription streaming sites operated by anonymous defendants. Although Bell Media Inc. v. GoldTV.Biz, 2019 FC 1432 is the first decision of its kind in Canada, the Court held that site-blocking orders fall squarely within its … Continue reading

No damages without invalidation ab initio – a look at Wenger SA v Travelway Group International Inc

By NRF Digital Team on Posted in Trademark
A valid trademark registration is an absolute defence to claims of passing off where there is no significant difference between the impugned mark as registered and the mark being used.[i] This is because a trademark registration gives the trademark owner the exclusive right to use that trademark throughout Canada.[ii] A party claiming passing off against … Continue reading

Appoint your Canadian Trademark Agent for Peace of Mind for Madrid applications

By NRF Digital Team on Posted in Trademark
On June 17, 2019 Canada acceded to the Madrid Protocol.  Foreign applicants can now file a single International trademark application with the International Bureau of World Intellectual Property Organization (WIPO) and request trademark protection in Canada. Generally, the Canadian Intellectual Property Office (CIPO) will issue a Courtesy Letter advising the applicant’s representative before the International Bureau of WIPO that in Canada … Continue reading

Confusion: More than just the sum of its parts

By NRF Digital Team on Posted in Trademark
In claims for trademark infringement and passing off, plaintiff success is determined by the ability to establish confusion. Section 6 of the Trade-marks Act (the Act) provides a non-exhaustive list of elements to be considered by the court, namely inherent distinctiveness, length of time, nature of the goods, services or business, nature of the trade … Continue reading
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