Topic: Trademark

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

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

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

By Mark Edward Davis (CA) and 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

Manufacturing in China? Chinese courts confirm the benefits of seeking local registered protection

By Georgina Hey (AU) and Henry Yuan on August 3, 2020 Posted in Trademark

Putting aside some recent COVID-related bumps in the road, China remains the world’s largest manufacturer. A large portion of its manufacturing consists of original equipment manufacturing (OEM) under contract. OEM involves manufacturing goods intended for export only, and not for sale domestically in China. This business model has solidified China as a critical manufacturing hub … Continue reading

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

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

July Update – Response from Canadian Courts to COVID-19

By Madeleine Hodgson (CA), Mat Brechtel (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

A Generic Word Combined With “.Com” Can Create A Protectable Trademark

By Felicia Boyd (US) and Andrea Shannon (US) on July 8, 2020 Posted in Trademark

In United States Patent And Trademark Office, Et Al., v. Booking.Com B. V. (No. 19-46, Jun. 30, 2020), the Supreme Court held that the combination of a generic term with “.com”—referred to as a “generic.com term”–could be a protectable trademark. Booking.com, an enterprise that maintains a travel-reservation website by the same name, sought federal registration … 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

A smooth [not crunchy] win in Bega’s favour

By Matt Allen (AU), Alyson Poole (AU) and Frances Drummond (AU) on June 18, 2020 Posted in Trademark

The facts of the 2019 Federal Court decision in Kraft Foods Group Brands LLC v Bega Cheese Limited were far from simple. The case centred around a battle between Kraft and Bega, involving considerations of ownership and divestment of rights in trade dress and goodwill and internal and external trade mark licensing structures. Ultimately, the … Continue reading