Topic: General

Federal Court of Canada Issues Default Judgment to Stop Online Infringement

By Roohie Sharma and Mark Edward Davis (CA) on November 17, 2021 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

NFTs and Intellectual Property Rights

By Will Garton and Farah Mukaddam (UK) on November 1, 2021 Posted in Ethics, General, Intellectual Property, technology and innovation

Any creative endeavour is in theory capable of being tokenised or “NFT’d”. Record prices are being reached for the sale of non-fungible tokens (NFTs). But what are NFTs? How are they created? Why are they so valuable? What does the buyer own? What rights do they confer? And why should IP lawyers care? Click here … Continue reading

Combatting Online Copyright Infringement

By Sarah Pennington and Mark Edward Davis (CA) on October 30, 2021 Posted in Copyright, Enforcement, General

The Internet is a fantastic platform for the widespread dissemination and exchange of works and information. It is also an increasingly popular medium for infringers to illegally source and share copyrighted materials. Losing control over you work is not only frustrating, it can damage your business or brand. Fortunately, copyright law prohibits the unauthorized reproduction … Continue reading

Trick-or-Treat Trademarks

By Jordana Sanft (CA) and Sarah Pennington on October 28, 2021 Posted in General

It’s that time of year again – whether you’re sneaking pieces from a child’s stash, or waiting to score some discounted leftovers off of the shelves once the big night has passed, Halloween promises a wealth of treats for candy lovers everywhere. We all have our top treats that we could spot from a mile … Continue reading

Beijing IP Court pilots mediation program for Trademark Office appeals

By Justin Davidson (HK), Phoebe Poon (HK) and Emma Qian on September 7, 2021 Posted in Brands, General, Intellectual Property, Trademark

In response to the rapid increase in the number of trademark prosecution administrative review cases (appeals from the Trademark Office – CNIPA), the Supreme People’s Court issued a Judicial Opinion on “Promoting the Reform of Administrative Litigation Proceedings by Dividing Complicated Cases and Simple Cases ” (the “Opinion”) in May 2021. The Opinion aimed to … Continue reading

IP Report 2021

By Georgina Hey (AU) and Maxine Richard on July 22, 2021 Posted in General, Intellectual Property, Trademark

We would like to acknowledge the contributions of Rex Lee and Amy O’Brien in preparing this blog. Intellectual Property (IP) Australia published their 9th annual edition of the Australian IP Report (the IP Report) on 29 April 2021. The IP Report, available here, offers a general overview of the current Australian IP climate. It outlines … Continue reading

Consultation Open for Australia’s Medical and Biotechnology Patent Box

By Jackie O'Brien (AU) on July 13, 2021 Posted in General, Intellectual Property, Patents

On 5 July 2021, the Government released its Discussion Paper setting out the Government’s proposal and seeking views from key stakeholders. The paper will be open for submissions until 16 August 2021. Now is the opportunity for stakeholders to put forward their suggestions as to what a patent box in Australia should entail. Patent boxes … Continue reading

Canadian Food and Beverage Industry Adopts Code for Advertising to Children

By Mark Edward Davis (CA) on July 6, 2021 Posted in Advertising, General

Through a coalition of four industry associations, the Canadian food and beverage industry has committed to a Code for the Responsible Advertising of Food and Beverage Products to Children (the “Food and Beverage Advertising Code”). A Guide for the Code for the Responsible Advertising of Food and Beverage Products to Children (the “Guide”) has also … Continue reading

Keezio v. The Shrunks: the Cost of a Counterclaim

By Christopher Wilson on June 16, 2021 Posted in Copyright, General, Intellectual Property

A recent decision from the BC Supreme Court serves as a reminder both of the risk of getting sued for defamation for publicly alleging copyright infringement, including on Amazon, and also that companies may be required to post security for costs in order to proceed with copyright and other intellectual property (IP) claims. The decision … Continue reading

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

By Karen MacDonald (CA) on May 29, 2021 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

Amazon’s 2020 Brand Protection Report – What Brand Owners Need to Know

By Sarah Pennington and Mark Edward Davis (CA) on May 27, 2021 Posted in Advertising, Brands, Counterfeiting, General, Intellectual Property, Trademark

On May 10, 2021, Amazon released its 2020 Brand Protection Report (the Report), the first of its kind published by the e-commerce giant. The Report offers insight into Amazon’s brand protection approach and efforts over the past year, including proactive controls, brand tools, and consequences for “bad actors”. With a growing number of fraudsters cropping … Continue reading

Emerging e-commerce trends in China and the potential impact on brands in a global marketplace

By Georgina Hey (AU) and Julie Zhu on May 17, 2021 Posted in General

Background E-commerce has brought many opportunities for brands to expand their footprint and tap into global markets. However, it has also given rise to a myriad of intellectual property (IP) infringement issues for companies, particularly for trade mark infringement and counterfeit activity. As the e-commerce market has matured, new trends have emerged, posing fresh challenges … Continue reading

Canadian Trademarks Office Takes Steps to Address Backlog

By Sarah Pennington and Mark Edward Davis (CA) on May 5, 2021 Posted in General

On May 3, 2021, the Canadian Intellectual Property Office (CIPO) published two new practice notices: (1) Measures to improve timeliness in examination; and (2) Requests for expedited examination. These notices outline CIPO’s plan to help clear its backlog of trademark applications, and to facilitate expedited review in particular circumstances. CIPO’s practice notices operate as general … Continue reading

Canada Consults on Online Copyright Reform

By Colin Hyslop (CA) on May 4, 2021 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

Revisions to PRC Medical Devices Regulations

By Justin Davidson (HK) and Stanley Ng on April 8, 2021 Posted in General

The PRC Regulations on the Supervision and Administration of Medical Devices (“Regulations”) have recently been amended and promulgated by the State Council. The new Regulations, which will be effective from 1st June 2021, provide some important changes of which the medical device industry should be aware. Under the current Regulations, a license to manufacture medical … Continue reading

Supreme Brand Recognition – The Notorious RBG

By Jordana Sanft (CA) on March 5, 2021 Posted in Brands, General, Trademark

In honour of International Women’s Day 2021 (IWD2021) it seems fitting to honour the iconic former Associate Justice of the Supreme Court of the United States, Ruth Bader Ginsburg (a.k.a RBG), who passed away on September 18, 2020. She was a trailblazer in fighting for gender equality in the legal arena and a force to … Continue reading

Executive Order to breathe new life into Made-in-America rules

By Andre Hanson (US) and Saul Perloff (US) on January 26, 2021 Posted in Advertising, General

Federal acquisition law and regulations often require government agencies to give purchasing preference to domestic suppliers. These preferences—some of which have remained unchanged since the Eisenhower Administration—have not always been implemented consistently or effectively. That uncertain landscape may be about to change. On Monday, January 25, 2021, the Biden Administration issued an Executive Order setting … Continue reading

Chipping Away at Official Marks

By Mat Brechtel (CA) on October 19, 2020 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

By Mark Edward Davis (CA) and Caroline Henrie (CA) on October 13, 2020 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

Protecting goodwill: When in doubt, be kind!

By Catherine Daigle (CA) and Fortunat Nadima Nadima on October 9, 2020 Posted in General, Trademark

For many people the word “BOSS” on a piece of clothing evokes the German luxury fashion house Hugo Boss. (Employers usually don’t need to affix a BOSS mark on their clothes to signal their position.) Yet for some, especially in Merseyside in the northwest of England, “BOSS” is also just a slang term used to … Continue reading

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

By Bianca Pietracupa (CA) on October 5, 2020 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?)

By Mat Brechtel (CA) and Patrick Chou (CA) on September 21, 2020 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

Global interactive guide on computer-implemented inventions

By Jackie O'Brien (AU), Daniel Posker and Vicky Zhang (AU) on September 16, 2020 Posted in General

Computer technologies are developing at a rapid pace and impacting on all sectors of the global economy. Inherent in this epochal shift towards and beyond the Information Age is a need for inventors of information technology to protect their computer-implemented inventions (CIIs).… Continue reading

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

By Mark Edward Davis (CA) and Colin Hyslop (CA) on September 1, 2020 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