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Category Archives: Trade-marks

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Cheese, olives and other agricultural products to get geographical indication protection under CETA

Posted in Intellectual Property, Trade-marks

Canada’s latest trade deal is set to expand the protection of geographical indications to a wide array of agricultural products.

On October 30, 2016, Canada and the European Union signed the Comprehensive Economic and Trade Agreement (“CETA”). A day later, the Government of Canada tabled Bill C-30 (the “Bill”) for the purpose of implementing CETA into the country’s legislative landscape. One of the primary operative effects of CETA, as a trade agreement, is that it will eliminate 95% of all existing tariffs applied to goods traded between the two jurisdictions. Apart from the direct economic impact … Continue Reading

Use of trademarks as keywords not infringement, Australia court holds

Posted in Intellectual Property, Litigation, Trade-marks

The purchase of a competitor’s trade-mark as an online advertising keyword is not an infringement, according to a recent Federal Court of Australia decision. In making its finding, the Court in Veda Advantage Limited v Malouf Group Enterprises Pty Limited, [2016] FCA 255 relied on evidence that the keywords were not visible to consumers and were selected and provided to Google by the defendant, rather than being used to identify a trade source. However, use of the trademark in a “sponsored link” in relation to the same services as those of the registered mark was held to be an infringement … Continue Reading

Canadian Trademark Law Adapts to Online Software Licence Sales

Posted in Intellectual Property, Technology License Agreement, Trade-marks

The online sale of a software licence constitutes a “use” in relation to a good for the purposes of Canadian trademarks. This was the recent holding of the Federal Court of Canada in Specialty Software v Bewatec, 2016 FC 223. This decision strengthens trademark protection for software in Canada and demonstrates that courts will adapt legal concepts to modern technology. Here, the traditional model of purchasing software on tangible media, such as a CD-ROM, is simply outdated. Software as a service (SaaS) offerings have greatly increased in recent years with the explosion of cloud computing, which essentially provides … Continue Reading

New Year, New Border Enforcement Measures in Effect

Posted in Copyright, Intellectual Property, Trade-marks

On December 31, 2014, the Canada Gazette published an order proclaiming into force sections 2, 5 and 6, subsection 7(6) and sections 43, 44 and 60 of the Combating Counterfeit Products Act, c. 32, S.C. 2014, as of January 1, 2015.  The Act itself received Royal Assent on December 9, 2014.

The principal effect of this order is to bring into force new border enforcement measures intended to combat the importation or exportation of trade-mark or copyright-infringing goods.[1]  These measures involve three main features:

  • Prohibitions on importation and exportation of infringing copies or goods[2] under the Copyright
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Granting Trademark Protection to the Design and Layout of Retail Stores

Posted in Intellectual Property, Trade-marks

On July 10, 2014 the Court of Justice of the European Union (the “CJEU”) issued its decision in Apple Inc. v. Deutsches Patent und Markenamt[1] and recognized the possibility to register a three-dimensional representation of the design and layout of a retail store as a Community Trade Mark.

In May 12, 2010, Apple Inc. (“Apple”) filed two applications for marks that are described mainly as the design and layout of a retail store.[2] The United States Patent and Trademark Office (the “USPTO”) granted registration on January 22, 2013. The trademarks are each … Continue Reading

Third Party’s Right to Use Official Mark in a Domain Name Upheld: BC Court of Appeal Rejects ICBC’s Claim of Trade-mark Infringement

Posted in Intellectual Property, Trade-marks

Third Party’s Right to Use Official Mark in a Domain Name Upheld: BC Court of Appeal Rejects ICBC’s Claim of Trade-mark Infringement  

On July 22, 2014, the B.C. Court of Appeal dismissed the claim of B.C.’s provincial auto insurer, the Insurance Corporation of British Columbia (ICBC), that a personal injury lawyer’s registration and use of domain names incorporating its official mark “ICBC” violated the Canadian Trade-Marks Act. 

In Insurance Corporation of British Columbia v. Stainton Ventures Ltd., 2014 BCCA 296 the Court held that the domain names <icbcadvice.ca> and <icbcadvice.com> did not infringe ICBC’s rights as internet users will … Continue Reading

Canadian Trademarks: Cathay Pacific wins battle over “Asia Miles” versus “Air Miles”

Posted in Intellectual Property, Trade-marks

On June 11, 2014 Justice O’Reilly of the Federal Court released his decision relating to the registerability of the trademark “Asia Miles” in light of opposition from Air Miles International.

The trade-marks opposition board had upheld Air Miles International’s opposition to the registration of “Asia Miles”.  Justice O’Reilly, on an application for judicial review, interfered with the Board’s findings and sent it back for reconsideration.

For the full written decision see: Cathay Pacific v. Air Miles International, 2014 FC 549.

This decision is important to the law of trademarks for the following reasons:

  1. Use of a mark includes
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Evolving Law of Trade Dress in a Digital World

Posted in Intellectual Property, Trade-marks

In an increasingly crowded market, businesses are investing heavily into unique customer experiences to boost brand identity and loyalty. As expected, there is a growing need to protect the design and other distinguishing elements incorporated into the products, packaging as well as off and online customer experiences. Collectively, these features are known as the trade-dress or the look and feel of the brand. The recent crack-down on 22 counterfeit Apple stores illustrates the importance of trade-dress protection.

This article provides an overview of the law on trade-dress in Canada and surveys the movement in the US to protect the trade … Continue Reading

A Massive House-Cleaning: Canadian Government Tables Five New IP Treaties

Posted in Intellectual Property, Patents, Trade-marks

On January 28, 2014, the Government of Canada signalled its intent to transform  its intellectual property regimes by tabling five intellectual property law treaties in Parliament. If implemented into domestic law, these treaties would harmonize Canada’s trade-mark, patent and industrial design legislation with its major trading partners. Following a 21-sitting-day waiting period, the Government will be able to introduce legislation to implement these treaties. Such legislation will transform important aspects of the trade-marks practice in Canada, and will lead to significant changes in the industrial designs field as well.

Some key points and concerns about the treaties include the … Continue Reading

The Treacherous Gap Between Goods and Services in Trade-marks Law

Posted in Intellectual Property, Trade-marks

Although it may seem arbitrary to a layperson, the gap in legal treatment between trade-marks for goods and trade-marks for services is treacherous for trade-mark owners. This gap can result in the loss of valuable rights, or the inability to enforce important trade-mark registrations. The recent NetJets case discussed below highlights how even a valuable mark can be deemed “abandoned” because it falls between the cracks of use for goods and use for services. While NetJets is a U.S. case, a very similar result could arise under Canadian law.

Use for Goods  – A Strict Standard

To understand how this … Continue Reading

Trade-marking Colour When Applied to Packaging

Posted in Intellectual Property, Trade-marks

 Colour is a crucial component of many brands. Most often the first thing a consumer will notice about a logo or product package is its colour. Think of red for Coca-Cola®, brown for UPS® or blue for IBM®.  Given its importance in branding, it is no surprise that colour has been the subject of trade-mark claims.

Section 30(h) of the Trade-marks Act (the “Act”) requires that an application for the registration of a trade-mark other than word mark include “a drawing of the trade-mark and such number of accurate representations of the trade-mark as may be prescribed”.[1] Section 27(1) … Continue Reading

ICANN’s Trademarks Clearinghouse Opens For Business

Posted in Intellectual Property, Trade-marks

With the launch of the Trademarks Clearinghouse, brand owners can now stake their territory In the brave new world of expanded generic top level domain names (“gTLD’s”).  The Internet Corporation for Assigned Names and Numbers (“ICANN”), the non-profit organization that manages and coordinates the system of domain names and IP addresses used on the internet, has put into operation what it calls “the most important rights protection mechanism built into ICANN’s new gTLD program”.

The Trademarks Clearinghouse (“Clearinghouse”), which is operated by Deloitte and IBM, is a centralized database of information submitted by brand … Continue Reading

Hot Off the Press – Doing Business in Canada 2012

Posted in Copyright, Intellectual Property, M&A/Finance, Patents, Privacy, Trade-marks

If your organization is currently thinking about establishing or acquiring a technology business in Canada, the 2012 edition of Doing Business in Canada, written by McCarthy Tétrault, will prove to be a valuable resource. The guide provides a broad overview of the legal considerations that non-residents should take into account to help ensure their success as they enter into a business venture in Canada. Each section offers timely information, up-to-date legislative provisions and insightful commentary on different areas of law. After downloading the guide, we encourage you to consult one of our lawyers for a more comprehensive analysis … Continue Reading

The Lion Roars – But Can It Be Trade-marked?

Posted in Intellectual Property, Trade-marks

As followers of the Canadian trade-marks scene will almost certainly have learned, last week Metro-Goldwyn-Mayer succeeded in a long-running battle with the Canadian Intellectual Property Office in getting a trade-mark registration for its longstanding “roaring lion” sound mark. As was widely reported, the Federal Court issued an order setting aside the decision of the Trade-marks Office refusing MGM’s application. The Office then quickly issued a new sound mark practice notice indicating that it would accept other sound mark applications.

The practice notice cautions that “where a sound mark is considered to be functional and/or clearly descriptive or deceptively misdescriptive, an … Continue Reading

Tech Law Summit Recap – Key Developments in IP Law

Posted in Copyright, Intellectual Property, Patents, Trade-marks

The recent McCarthy Tétrault Technology Law Summit included a panel on “Key Developments in IP Law,” featuring James Skippen, Chairman and Chief Executive Officer, WiLAN Inc. and McCarthy Tétrault partners Beth MacDonald, David Gray and Barry Sookman. Paul Armitage, another McCarthy Tétrault partner, moderated the panel.

Patents

James Skippen commented on the growing awareness of the value of intellectual property, and patents, in particular. He observed that, instead of being a neglected asset class, patents are playing a more prominent role, and may even, in some circumstances, exceed the value of a company’s other assets. 

After describing WiLAN Inc.’s  history … Continue Reading