Topic: General

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Chipping Away at Official Marks

Mat Brechtel (CA)By Mat Brechtel (CA) on Posted in General, Trademark
Last week, the Supreme Court refused leave to appeal in Ontario (Energy) v. Quality Program Services Inc., 2020 FCA 53, putting to rest the idea that an official mark operates as an absolute defence to trademark infringement. The Federal Court of Appeal, which now stands, upheld a Federal Court decision that Ontario’s use of its … Continue reading

Federal Court of Appeal Reviews Meaning of “Use” of a Trademark in Canada

Mark Edward Davis (CA)Caroline Henrie (CA)By Mark Edward Davis (CA) and Caroline Henrie (CA) on 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

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

Bianca Pietracupa (CA)By Bianca Pietracupa (CA) 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

Comparing Apples and Oranges (and Pears?)

Mat Brechtel (CA)Patrick ChouBy Mat Brechtel (CA) and Patrick Chou on Posted in General
The saying goes you can’t compare apples and oranges, but technology giant Apple is arguing that you can compare, and even confuse, apples and pears. In late 2019, Super Healthy Kids applied to register a pear-shaped trademark in Canada for use in connection with Prepear, its meal prep app. Once the opportunity arose, Apple filed … Continue reading

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

Mark Edward Davis (CA)Colin Hyslop (US)By Mark Edward Davis (CA) and Colin Hyslop (US) 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

COVID-19: Major risk flowing from non-exclusive IP licenses under German insolvency law

Tiffany ZillioxMaximilian SchmitzRegina RathBy Clemens Rübel, Tiffany Zilliox, Maximilian Schmitz and Regina Rath on Posted in General
The COVID-19 pandemic poses a major challenge for large parts of the economy, causing many companies to fail and a domino effect on other companies with which they had business relationships. Where a party to an IP license becomes insolvent and regular insolvency proceedings are commenced, an insolvency administrator will take over the management of … Continue reading

German Federal Constitutional Court rules on constitutional procedural rights of interim injunction defendants

Maximilian SchmitzTiffany ZillioxBy Maximilian Schmitz and Tiffany Zilliox on Posted in General
The German Federal Constitutional Court has handed down several landmark decisions which strengthen defendant rights in interim injunction proceedings (Federal Constitutional Court decision of  27 June 2020, case no. 1 BvR 1379/20; decision of 3 June 2020, case no. 1 BvR 1246/20; decisions of 30 September 2018, case no.  1 BvR 1783/17 and 1 BvR … Continue reading

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

Mark Edward Davis (CA)Sarah PenningtonBy Mark Edward Davis (CA) and Sarah Pennington on Posted in Advertising, Counterfeiting, General, Trademark
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

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

Karen MacDonald (CA)Iwan Davies (CA)By Karen MacDonald (CA) and Iwan Davies (CA) 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

Brexit and the Ongoing Effects on Trademarks and Designs

Béatrice DuboisBy Béatrice Dubois on Posted in General
With less than six months until the end of the transition period (December 31, 2020), Boris Johnson’s government launched a major information campaign on July 13 known as “Check, Change and Go” to help individuals and businesses prepare for the Brexit reality. The United Kingdom’s withdrawal from the European Union will indeed have economic and … Continue reading

July Update – Response from Canadian Courts to COVID-19

Madeleine Hodgson (CA)Mat Brechtel (CA)By Madeleine Hodgson (CA), Mat Brechtel (CA) and Natasha John on Posted in General, Trademark
Canadian jurisdictions continue to relax social distancing measures and take steps towards resuming operations while maintaining safe practices. This post provides an update on the status of the courts across Canada. We will continue to provide updates as matters progress. Please feel free to reach out to our litigation team with any questions you may … Continue reading

Implementation of the Madrid Protocol in Hong Kong

Justin Davidson (HK)Phoebe Poon (HK)By Justin Davidson (HK) and Phoebe Poon (HK) on Posted in General, Trademark
On 19 June 2020 Hong Kong gazetted the Trade Marks (Amendment) Ordinance, paving the way for the application of the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks (Madrid Protocol) in Hong Kong.  This follows on from the outcome of a public consultation conducted back in 2014. Currently, there are 106 … Continue reading

Canada’s Trademark Overhaul – 1 year out

Karen MacDonald (CA)By Karen MacDonald (CA) 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

Google Goes Organic to Fight Counterfeiters

Mat Brechtel (CA)By Mat Brechtel (CA) on Posted in Counterfeiting, Domain names, General, Trademark
In the midst of the global pandemic, Google has provided some welcome news in the ongoing fight against counterfeiters. Google recently updated its legal complaint system to allow trademark owners to report webpages that sell or promote the sale of counterfeit goods, and has committed to removing the webpages from the search engine’s organic (non-advertisement) … Continue reading

Insights from the Australian Intellectual Property Report 2020

Amanda Caldwell (AU)Vicky Zhang (AU)By Amanda Caldwell (AU) and Vicky Zhang (AU) on Posted in Copyright, General, Patents, Trademark
Intellectual Property (IP) Australia published their 2020 edition of the Australian IP Report (the IP Report) on 24 April 2020. The IP Report, which can be accessed here, provides a current overview of the IP sector in Australia and the latest data on the IP rights (IPR) administered by IP Australia. Reports such as the … Continue reading

Singapore leads the way on promoting its IP Hub

Justin Davidson (HK)Jeremiah ChewBy Justin Davidson (HK) and Jeremiah Chew on Posted in General, Trademark
The Intellectual Property Office of Singapore (IPOS) made headlines recently when its Chief Executive, Daren Tang, was appointed as the next Director-General of the World Intellectual Property Organisation with effect from 1 October 2020 (see this link for more information). As Chief Executive of IPOS since November 2015, Daren has earned accolades for several initiatives … Continue reading

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

Mark Edward Davis (CA)Sarah PenningtonBy Mark Edward Davis (CA) and Sarah Pennington on Posted in General
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

Courts Across Canada Continue Reopening Plans

Mat Brechtel (CA)Madeleine Hodgson (CA)Renaud Garon GendronBy Mat Brechtel (CA), Madeleine Hodgson (CA) and Renaud Garon Gendron on Posted in Copyright, Counterfeiting, General
Please see our updated version of this article, published July 10, 2020. Update – Response from Canadian Courts to COVID-19 As many Canadian jurisdictions begin to relax certain social distancing measures, it is time for an update on the status of the courts across Canada. As with the rest of us, the courts across Canada … Continue reading

Canadian Intellectual Property Office Further Extends Statutory Deadlines to June 15, 2020

Mark Edward Davis (CA)Caroline Henrie (CA)By Mark Edward Davis (CA) and Caroline Henrie (CA) on 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
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