Topic: Trademark

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

Bianca Pietracupa (CA)By Bianca Pietracupa (CA) 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

Mihaela DumitreanBy Mihaela Dumitrean 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

Bianca Pietracupa (CA)By Bianca Pietracupa (CA) 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

The highs and lows of the 2019 Australian IP Report

Georgina Hey (AU)By Georgina Hey (AU) and Benjamin Kende on Posted in Trademark
The highs and lows of the 2019 Australian IP Report To mark World Intellectual Property Day, IP Australia released its seventh edition of the Australian Intellectual Property Report 2019 (Report). The Report provides a snapshot of the Australian IP landscape in 2018 by consolidating data, highlighting trends and critically analysing its future. In this article, … Continue reading

Is this really the end of the three-stripe trade mark ?

Clément MonnetBy Clément Monnet on Posted in Trademark
In its decision dated 19 June 2019 (Case T-307/17), the General Court of the European Union has confirmed the invalidity of Adidas’ European Union trade mark, which consists of three parallel equidistant parallel stripes of identical width applied on a product in any direction. Adidas, a world-renowned German company specializing in the manufacture and marketing … Continue reading

Unauthorized invoices – Canadian trademark owners beware

Mark Edward Davis (CA)Maneesha Gupta (CA)By Mark Edward Davis (CA) and Maneesha Gupta (CA) on Posted in Trademark
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

Amendment to Chinese Trade Mark Law on bad faith trade mark applications with no intention to use

Justin Davidson (HK)Phoebe Poon (HK)By Justin Davidson (HK) and Phoebe Poon (HK) on Posted in Trademark
Complaints regarding the growth of bad faith trade mark applications in China have been raised for a while now.  The existing Trade Mark Law in China does not readily imply bad faith on trade mark applicants with no genuine intention to use. On 23 April 2019, the Standing Committee of the National People’s Congress passed … Continue reading

It’s NUT yours, it’s mine: Kraft Foods v Bega Cheese and the importance of intellectual property due diligence

Rebecca Brenikov (AU)Frances Drummond (AU)By Rebecca Brenikov (AU) and Frances Drummond (AU) on Posted in Trademark
It’s the peanut butter packaging debate that has recently captured the hearts and minds of the Australian public. Whether you were confused or not, the Court’s decision (found here) highlights the need for thorough IP due diligence whether you are purchasing or selling a company, and reiterates the importance of understanding the assets being dealt … Continue reading

How a chatbot helps you prepare for the Trade-marks Act

Lorelei Graham (CA)Michelle Fernando (CA)By Lorelei Graham (CA) and Michelle Fernando (CA) on Posted in Trademark
Sweeping changes to the Canadian Trade-marks Act will finally be implemented putting Canadian brand owners on equal footing with the rest of the world. Taking effect on June 17, 2019, the changes will allow for the consistent classification of a brand owner’s goods and services as Canada will finally adopt this process under the Nice … Continue reading

Canadian Trademark Oppositions – Put your best foot forward

Mark Edward Davis (CA)Maneesha Gupta (CA)By Mark Edward Davis (CA) and Maneesha Gupta (CA) on Posted in Trademark
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

Venezuela and US trademark owners

Susan Ross (US)By Susan Ross (US) on Posted in Trademark
US owners of patents and trademarks who have registered them in Venezuela find themselves in the unusual position of being prohibited by the US government from paying Venezuela any required fees in the Venezuelan cryptocurrency, the Petro.  For more information, please read our Legal Update.… Continue reading

Ok Google, Hey Siri, Hi Alexa – have you renewed my trade mark yet?

Frances Drummond (AU)Alyson Poole (AU)Sophie Lees (AU)Rebecca Brenikov (AU)By Frances Drummond (AU), Alyson Poole (AU), Sophie Lees (AU) and Rebecca Brenikov (AU) on Posted in Trademark
With the ever increasing ubiquity of technologies improving everyday tasks in personal life, it is little wonder that such technologies are also offering efficiencies and advantages in the work context.  Phrases such as process automation, data mining, machine learning and actionable intelligence are no longer far-out themes, but instead are being used regularly (and with … Continue reading

Brexit: EU trade mark renewals in event of no-deal

Clare Jackman (UK)By Clare Jackman (UK) on Posted in Trademark
In our recent post (click here to access), we confirmed that for EU trade marks which are registered at the withdrawal date, either 29 March 2019 (no-deal scenario) or 31 December 2020 (deal scenario), new UK national rights will be cloned onto the UK register, automatically, without charge and retaining all relevant dates. The new … Continue reading

Good to know: The US trademark office has a ‘proof of use’ audit program for trademark registrations

Georgina Hey (AU)Rebecca Brenikov (AU)By Georgina Hey (AU) and Rebecca Brenikov (AU) on Posted in Trademark
The US Patent and Trademark Office (USPTO) requires trademark owners to support their trademark registrations by providing one specimen of use per class, at both 6 years and 10 years after the trademark registration date. So, for instance, if you have a registration covering ‘clothing, footwear and headgear’ in class 25, providing the US trademark … Continue reading

Canada: Further trademark amendments are here — Bill C-86 is given Royal Assent

Amy Grenon (CA)By Amy Grenon (CA) on Posted in Copyright, Trademark
Canada’s core IP statutes have been amended by Bill C-86, which received Royal Assent as the Budget Implementation Act, 2018, No. 2, SC 2018, c 27 on December 14, 2018. The final version of the legislation includes amendments to the Trade-marks Act that are substantially identical to the version that received first reading on October … Continue reading
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