Topic: Trademark

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

USPTO Expedited Initial Examination for COVID-19-Related Trademark Applications

By Andrea Shannon (US) on June 18, 2020 Posted in Trademark

On June 15, 2020, the U.S. Patent and Trademark Office (“USPTO”) announced a new program, effective June 16, 2020, to help expedite the initial examination of U.S. trademark applications for marks relating to qualifying COVID-19 medical goods or services. The USPTO typically examines trademark applications in the order they are filed, with most applicants receiving … Continue reading

Canada’s Trademark Overhaul – 1 year out

By Karen MacDonald (CA) 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

Google Goes Organic to Fight Counterfeiters

By Mat Brechtel (CA) on June 16, 2020 Posted in Counterfeiting, Domain names, General, Trademark

In the midst of the global pandemic, Google has provided some welcome news in the ongoing fight against counterfeiters. Google recently updated its legal complaint system to allow trademark owners to report webpages that sell or promote the sale of counterfeit goods, and has committed to removing the webpages from the search engine’s organic (non-advertisement) … 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

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

Canadian Intellectual Property Office Further Extends Statutory Deadlines to June 1, 2020

By Mark Edward Davis (CA) on May 14, 2020 Posted in Copyright, General, Patents, Trademark

The Canadian Intellectual Property Office (CIPO) has announced a further extension of deadlines to June 1, 2020. CIPO is working hard to continue operations as usual in these unforeseen circumstances. To ensure Canadian intellectual property owners do not have their rights compromised by the Covid-19 pandemic, CIPO has extended statutory deadlines that fall between March 16 … Continue reading

Canadian Intellectual Property Office further extends deadlines to May 18, 2020

By Mark Edward Davis (CA) on April 27, 2020 Posted in Copyright, General, Patents, Trademark

The Canadian Intellectual Property Office (CIPO) announced today that it has further extended deadlines under the Patent Act, the Trademarks Act and the Industrial Design Act to May 18, 2020. While Canadian intellectual property owners should always consult with their professional advisors concerning specific deadlines, the general effect of CIPO’s designation means that deadlines falling … Continue reading

Court Suspensions Continue, with Some Exceptions

By Madeleine Hodgson (CA), Renaud Garon Gendron, Mat Brechtel (CA) and Mark Edward Davis (CA) on April 27, 2020 Posted in Copyright, Counterfeiting, General, Patents, Trademark

Please see our updated version of this article, published July 10, 2020. An Update on the Response from Canadian Courts to COVID-19 We are now more than a month in to social distancing measures, and it is time for an update on the status of the courts across Canada. As with the rest of us, … Continue reading

Willfulness not required for profits awards in trademark infringement suits

By Tim Kenny (US), Felicia Boyd (US) and Joy Wang (US) on April 24, 2020 Posted in Trademark

A trademark infringement suit is not required to show willful infringement as a precondition to a disgorgement of the infringers’ profits.… Continue reading

Could the use of Punitive Damages be the way forward in China?

By Justin Davidson (HK) and Phoebe Poon (HK) on April 17, 2020 Posted in Counterfeiting, General, Trademark

In September 2019, the Shanghai Pudong District People’s Court awarded triple punitive damages to Balanced Body Inc., which according to the Shanghai government news report was the first such award for a Shanghai Court to a foreign plaintiff. Background Balanced Body is a provider of Pilates equipment and education and holds PRC trade mark registrations … Continue reading

Federal Court of Canada Extends Suspension Period to May 15, 2020

By Mark Edward Davis (CA) on April 6, 2020 Posted in Copyright, General, Patents, Trademark

By Updated Practice Direction and Order dated April 4, 2020, the Federal Court has further extended the Suspension Period to May 15, 2020. It has simultaneously mapped out a strategy to keep the Court running as efficiently as possible under the circumstances. During the Suspension Period (which began March 16, 2020 and currently runs until May … Continue reading