Category: Canada

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Proposed New French Language Requirements For Businesses in Québec

After losing the battle in court over the requirement that businesses must add French language to English trade-marks displayed on signage outside their stores, the Québec government announced its intention in June 2015 to make modifications to Québec’s Regulation respecting the language of commerce and business (“Regulation”). As recently reported in the media, the Québec government has announced proposed … Continue Reading

Excuses, Excuses: Saving a Canadian Trade-mark Registration in the Absence of Use

In a recent decision of the Federal Court of Appeal (“FCA”), the FCA took the rare opportunity to consider an appeal from a section 45 expungement proceeding. In One Group LLC v Gouverneur Inc, the FCA reviewed the Registrar’s decision not to expunge One Group LLC’s (“One Group”) trade-mark registration for STK (the “Mark”) on … Continue Reading

Canada’s Federal Court Provides Welcome Guidance on Geographically Descriptive Trademarks

Canada’s Federal Court of Appeal (the “Court of Appeal”) has recently had the opportunity to clarify the test for  registrability of geographically descriptive trademarks in two separate decisions. The most recent of these is the decision in MC Imports Inc. v. AFOD Ltd., 2016 FCA 60.  In the proceedings underlying the appeal, MC Imports Inc. … Continue Reading

USE IT OR LOSE IT- in Canada

Under the Canadian Trade-marks Act, one can request that the Registrar of Trade-marks commence Section 45 Proceedings to cancel a trademark registration for non-use.  The Act states that the Registrar shall, upon the written request by any person (who pays the prescribed fee) after three years from the date of registration of a trademark, unless … Continue Reading

BOTNET TAKEDOWN: FIRST WARRANT ISSUED UNDER CANADA’S ANTI-SPAM LAW

Canada’s anti-spam law (“CASL”) outlines violations, enforcement mechanisms, and penalties aimed at protecting online consumers against spam, electronic threats, and misuse of digital technology. CASL’s anti-spam rules came into effect on July 1, 2014. CASL’s software update and installation rules came into effect on January 15, 2015. The latter rules are often referred to as … Continue Reading

Be Careful How You Get Over the Paywall: Recent Canadian Decision Holds That Non-Subscribing Reader of Paywall Article Infringed Copyright

A recent decision from the lowest court of the Province of Ontario has raised questions over how recent amendments to Canada’s Copyright Act regarding “technological protection measures” (“TPMs”), such as subscription “paywalls”, will be interpreted and balanced with traditional copyright analysis. In 1395804 Ontario Limited (Blacklock’s Reporter) v. Canadian Vinters Association, the central question considered … Continue Reading

IT’S NICE IN CANADA THESE DAYS – CANADIAN TRADE-MARKS OFFICE IS ADOPTING NICE CLASSIFICATION

As of September 28, 2015, the Canadian Trade-marks Office  (“CIPO”) indicated that it accepts trade-mark applications with the goods and services grouped and classed according to the Nice Classification system.  CIPO issued a Practice Notice entitled Nice Classification on September 28, 2015.  Prior to September 28th, the Nice classification system was not used in Canada … Continue Reading

Back to school – Keyword advertising 101

In the 21st century, when advertising is frequently conducted via the Internet, the use of keyword advertising has become an increasingly contentious point of trade-mark law. In short, keyword advertising is a form of online advertising in which a business selects words or phrases (the “keywords”) that trigger its advertisements to appear when the user … Continue Reading

“The Donald” Trump – Avoids Trade-mark Licensor Liability in Canada

I spent years at my office watching the gradual construction of the 70-story mixed-use TRUMP TOWER complex in downtown Toronto, Canada.  It is now a Toronto landmark and a place for the lawyers and bankers in the financial district to wine and dine clients.  Trump, two of his affiliated companies (Affiliates) plus the licensed developer … Continue Reading

Canadian Court Orders Google to Scrub Its Search Results

The internet’s sheer breadth often gives the impression that it transcends local legal jurisdictions. As commerce and trade become increasingly electronic ventures, courts now grapple with how to enforce orders against parties not operating within traditional physical jurisdictions. In June, the British Columbia Court of Appeal (the “Court”) in Equustek Solutions Inc. v. Google Inc., … Continue Reading

FIRST PENALTIES ISSUED UNDER CANADIAN ANTI-SPAM LAW

The Canadian anti-spam law (“CASL”) came into effect on July 1, 2014 and includes the ability to levy severe administrative monetary penalties of up to $10 million for one violation of CASL. In March, 2015, the Canadian Radio-television and Telecommunications Commission (“CRTC”) gave its first indication on issuing penalties and addressing violations of CASL by … Continue Reading

.SUCKS Sunrise Registration Period Now Open – Let the Griping Begin

The Trademark Clearinghouse (“TMCH”) Sunrise Period for the new gTLD .SUCKS launched March 30, 2015 and is open until May 29, 2015.  During this sunrise phase, trademark holders who have registered their trademark registrations with the TMCH will be eligible to register the corresponding .SUCKS domain.  The General Availability period opens June 1, 2015, at … Continue Reading

Managing the transition: the impact of Canada’s amended Trade-marks Act on pending trade-mark applications

The recent amendments to Canada’s Trade-marks Act present many interesting opportunities and challenges to brand owners and their counsel.  This article focuses primarily on the impacts for Canadian trademark applications that are pending at the time the amended Act comes into force—that is, applications that have been filed with the Canadian Intellectual Property Office (CIPO) but that … Continue Reading

Canada: Combating Counterfeit Products Act Receives Royal Assent

On December 9, 2014 Royal Assent was given to Bill C-8, the Combating Counterfeit Products Act. The intention of Bill C-8 is to give the government and holders of trade-marks and copyrights new mechanisms for enforcement, along with substantial remedies, in order to combat counterfeit and black-market goods. Before the introduction of Bill C-8, Canada had … Continue Reading
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