Topic: General

Protecting goodwill: When in doubt, be kind!

By Catherine Daigle (CA) and NRF Digital Team 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 NRF Digital Team 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 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 NRF Digital Team 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

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

By Clemens Rübel, Tiffany Zilliox, Maximilian Schmitz and Regina Rath on September 1, 2020 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

By Maximilian Schmitz and Tiffany Zilliox on August 21, 2020 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

By Sarah Pennington on August 11, 2020 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

By NRF Digital Team on July 24, 2020 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

By Béatrice Dubois on July 20, 2020 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

By Madeleine Hodgson (CA) and Natasha John on July 10, 2020 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

By Justin Davidson (HK) and Phoebe Poon (HK) on June 24, 2020 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

By NRF Digital Team on June 17, 2020 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

Insights from the Australian Intellectual Property Report 2020

By Amanda Caldwell (AU) and Vicky Zhang (AU) on June 16, 2020 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

By Justin Davidson (HK) and Jeremiah Chew on June 11, 2020 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

By Sarah Pennington on June 10, 2020 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

The effect of Brexit on .eu domain names

By Manuel Merling (DE) and Clément Monnet on June 7, 2020 Posted in Domain names, General

Since the United Kingdom (UK) will be a third country after the end of the transition period (ending December 31, 2020) EU law will no longer apply[1]. This change of the legal situation also has effects on the .eu domain names. Amid the transition period from 1 February 2020 through to 31 December 2020 during … Continue reading

New Balance lands a win in China

By Justin Davidson (HK) and Phoebe Poon (HK) on June 1, 2020 Posted in Counterfeiting, General, Trademark

New Balance, the US sports shoemaker, has had a tough time of it in the PRC IP courts over the last twenty years, in particular against Niu Ba Lun (China) Co., Ltd. and its predecessors (New Barlun), a serial Chinese copycat. A low point was perhaps in 2016, when the Guangdong Higher People’s Court had … Continue reading

Courts Across Canada Continue Reopening Plans

By Madeleine Hodgson (CA) and Renaud Garon Gendron on May 28, 2020 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

By Caroline Henrie (CA) on May 27, 2020 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

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

By NRF Digital Team on May 27, 2020 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

Demand may be booming, but are breaches looming? We discuss compliance with Australian Country of Origin labelling regulations in the context of COVID-19

By Georgina Hey (AU), Alyson Poole (AU) and Matt Allen (AU) on May 13, 2020 Posted in General

In recent articles, we have commented on the Australian Competition and Consumer Commission’s (ACCC) Country of Origin (COO) labelling regulations as they relate to food packaging and more recently, the ACCC’s focus for 2020 on misleading or deceptive claims relating to food packaging. Our previous articles can be reviewed here and here.… Continue reading

Be careful how you ask – Canadian court considers demand letters

By NRF Digital Team on May 11, 2020 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 April 29, 2020 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