Topic: Trademark

IP Report 2021

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

Proactive Trademark Registration Strategy Can Prevent Costly Customs Issues in China

By Justin Davidson (HK), Mark Edward Davis (CA) and Phoebe Poon (HK) on July 2, 2021 Posted in Brands, Intellectual Property, Trademark

Although it is not strictly necessary to file for a trade mark registration before using a mark, there are significant advantages to securing trademark protection, particularly in a company’s primary markets. Amongst other benefits, a trademark registration gives the owner the exclusive right to use that mark in association with the goods and services covered … Continue reading

Zooming in on generic trademarks

By Caroline Henrie (CA) and Jordana Sanft (CA) on June 22, 2021 Posted in Consumer goods, Trademark

Over the course of the last year Zoom became one of the most frequently used words. Due to its popularity, Zoom has been used as an adjective (“I’m hosting a Zoom trivia night”), a verb (“I’m Zooming”) and a noun (“I have a 9 am Zoom”). In the more recent months of the pandemic, expressions … Continue reading

This Bud’s Not for You: Federal Court Extinguishes Dispensary’s Use of BUDWAY Trademark

By Mat Brechtel (CA) on June 14, 2021 Posted in Litigation, Trademark

The authors wish to thank articling student Kevin Bushell for his help in preparing this legal update In an uncontested decision, Subway IP LLC v. Budway, Cannabis & Wellness Store, 2021 FC 583 (Budway), the Federal Court held that a dispensary’s use of the “BUDWAY” trademark constituted infringement, passing off, and depreciation of the goodwill … 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

CNIPA responds to a pandemic of COVID-related TM Applications

By Justin Davidson (HK), Phoebe Poon (HK) and Jerry Huang on April 1, 2021 Posted in Intellectual Property, Trademark

Since the start of the COVID-19 pandemic, numerous Chinese trademark squatters have surfaced with applications for marks closely related to the pandemic, such as “雷神山” (“Lei-Shen-Shan” in Chinese, which is a hospital built in response to the pandemic), “火神山” (“Huo-Shen-Shan” in Chinese, also meaning a hospital built in response to the pandemic), “方舱” (“Fang-Cang”, which … 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

The Hidden Perils of an Unregistered Trademark in a Passing Off Claim

By Mat Brechtel (CA) on February 24, 2021 Posted in Advertising, Brands, Enforcement, Trademark

The author would like to thank Melissa Wells for her assistance in preparing this article. Last week, in Hidden Bench Vineyards & Winery Inc. v. Locust Lane Estate Winery Corp., 2021 FC 156, the Federal Court dismissed an application by Hidden Bench Vineyards & Winery Inc. seeking a declaration that it is the owner of … Continue reading

Trouble at the Henhouse (and the Court House)

By Jordana Sanft (CA) on February 19, 2021 Posted in Trademark

The Tragically Hip (The Hip) is suing Mill Street Brewery (Mill Street) over “100th Meridian” Beer. The action was commenced in the Federal Court by Statement of Claim dated February 9, 2021 (Tragically Hip v. Mill Street Brewery). This case is sure to create fireworks and attract media attention given the extremely large fan base … Continue reading

NATIERRA: Presenting Fresh Evidence on Appeal

By Caroline Henrie (CA), Amy Grenon (CA) and Mat Brechtel (CA) on February 17, 2021 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

Expedited Examination for COVID-19 Related Marks Avoid Systemic Delays in Canadian Examination

By Mark Edward Davis (CA) and Caroline Henrie (CA) on February 3, 2021 Posted in Brands, Trademark

The delays in Canadian trademark examination are becoming excruciating. The Trademarks Act and the Trademark Regulations provisions do not expressly provide for expedited examination of a Canadian trademark application. The long-standing practice of the Canadian Intellectual Property Office (“CIPO”) was to refuse requests for the expedited examination. Section 2.2 of the Trademark Examination Manual, the … Continue reading

Michael Jordan deserves an apology from Qiaodan Sports for infringing his name rights for over 20 years

By Justin Davidson (HK) and Phoebe Poon (HK) on February 1, 2021 Posted in Brands, Intellectual Property, Trademark

According to the Shanghai Xinhua News Agency, the Shanghai Second Intermediate People’s Court handed down a first instance decision on 30 December 2020 in favour of Michael Jordan against Qiaodan Sports Company and Bairen Trading Company (both Chinese local companies) in respect of infringement of Michael Jordan’s name rights. In the lawsuit, Michael Jordan claimed … Continue reading

Passing off as Parsons: Injunction and Damages Granted to Halt Phishing Website

By Caroline Henrie (CA) on January 25, 2021 Posted in Advertising, Brands, Domain names, Enforcement, Trademark

Last week, in Parsons Inc. v Khan, 2021 FC 57, the Federal Court found the owner of a phishing website liable for passing itself off as the Applicants’, Parsons Corporation and Parsons Inc. (“Parsons”). Parsons, a multinational engineering and construction firm with a Canadian subsidiary, has applied-for and used, but not yet registered, the PARSONS … Continue reading

How the Canadian Trademarks Office Considers Inherent Distinctiveness

By Mark Edward Davis (CA) and Caroline Henrie (CA) on January 9, 2021 Posted in Brands, Trademark

Inherent distinctiveness is a measure of a trademark’s originality – those elements that make a brand unique and recognizable to the public. Trademarks indicate the source of goods or services for consumers. As such, distinctiveness is said to be the “essence of a protectable trademark and the foundation of trademark law”[1]. Canada Now Examines for … Continue reading

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

By Elizabeth Williams (CA) and Iwan Davies (CA) on January 5, 2021 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

Late-night law may have big impact on IP owners

By Tim Kenny (US), Alicia Groos (US), Sean Patrick McGinley (US) and Saul Perloff (US) on December 28, 2020 Posted in Copyright, Trademark

In a last minute effort to avoid a government shutdown, on December 21, 2020 Congress passed the Consolidated Appropriations Act, 2021.… Continue reading

New common EU Guideline on genuine use of trademarks in a form differing from the one registered

By Manuel Merling (DE) on November 24, 2020 Posted in Brands, Trademark

On October 15, 2020, the European Union Intellectual Property Network (EUIPN) has published its Common Practice No. 8 (CP8) about the ‘Use of a trade mark in a form differing from the one registered’. The CP8 provides guidelines and practical examples for users about the common standards to be applied by the EU Trademark Office … Continue reading

Burritos, Biden & Branding; Trump & Trademarks

By Jordana Sanft (CA) on November 4, 2020 Posted in Advertising, Brands, Counterfeiting, Enforcement, Intellectual Property, Trademark

When thinking about the 2020 United States presidential election, burritos may not be the first image that pops into your mind. But companies in industries ranging from food and beverages to clothing apparel are using brand power to encourage people to vote in this year’s United States presidential election. This blog, while about the use … 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

Bacardi Must ‘Gin and Beer It’ In Failed Trade Mark Opposition Proceeding

By Frances Drummond (AU) and Vicky Zhang (AU) on September 24, 2020 Posted in Trademark

The decision of Bacardi & Company Limited v Dickinson Distribution Group Pty Ltd [2020] ATMO 117 (1 July 2020) confirms the acceptance of the similarity between goods in classes 32 and 33, and in particular accepts that gin is similar to beer. Hence, it is vitally important for owners of marks registered in classes 32 … Continue reading

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

By Judith Robinson and Jonathan Chong on August 25, 2020 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

More Chinese punitive damages being awarded

By Justin Davidson (HK) and Phoebe Poon (HK) on August 13, 2020 Posted in Trademark

Further to the award of punitive damages to Balanced Body (revisit our blog post here), we have seen a string of cases in the first half of 2020 where Chinese judges awarded punitive damages to trade mark owners for trade mark infringement. Guangzhou Redsun was awarded 50 Million RMB against its ex-employee Guangzhou Redsun has … Continue reading