By Marie Lussier of Fogler Rubinoff LLP In July 2024, I discussed proposed changes to trademark proceedings in Canada. Following a public consultation period, revised Regulations came into force on April 1, 2024 that incorporate those proposed changes. The changes aim to improve the efficiency of dispute resolution proceedings in Canada. Time will tell if … Continue Reading
By Marie Lussier In January 2025, the Registrar of Trademarks launched a pilot project in which it sends notices to certain registrants asking them to show use of their registered mark, failing which their registration is to be cancelled. These notices are subject to the same modalities as those issued at the request of a … Continue Reading
A recent decision of the Federal Court, Trial Division in Little Brown Box Pizza, LLC v. DJB (2024 FC 1592) provides guidance on the question of special circumstances that can excuse an absence of trademark use in Section 45/summary cancellation proceedings. The Court’s analysis and findings should be particularly useful to U.S./non-Canadian brand owners looking … Continue Reading
As discussed in my short article of July 10, 2024, important changes to the Canadian Trademark Regulations have been proposed. The changes have not yet come into effect and are still subject to change. The consultation period closed on July 8, 2024. In future articles, I will discuss comments that are being debated and next … Continue Reading
On June 8, 2024, proposed amendments to Canada’s Trademarks Regulations were published in the Canada Gazette. The public consultation period is open until July 8, 2024, and comments will be posted on the Canada Gazette website following the end of the consultation period. A coming-into-force date has not yet been set but the Canadian Intellectual … Continue Reading
The Quebec Charter of the French Language (the “Charter”) was adopted nearly 50 years ago to protect the status of the French language in the province of Quebec. It includes many rules, several of them directed at the language of business in Quebec, and some regarding the use of French on both product packaging and … Continue Reading
Canadian brand owners should prepare now for fee increases coming into force in 2024. Overall, fees are set to increase by 20 to 35%. In particular, the government fee for filing a Canadian trademark application is increasing to $460 for the first class and $140 for each additional class (the current fees are $350 and … Continue Reading
In Canada, there are practising patent agents and trademarks agents who are not lawyers. They are not admitted to any bar of any province or territory in Canada and are not members of any law society. The College of Patent Agents & Trademark Agents (CPATA) is the recently created regulator of patent and trademark agents … Continue Reading
On September 8, 2021, the Federal Court of Appeal (FCA) in Canada released its decision in Salna v. Voltage Pictures, LLC, 2021 FCA 176 which considered whether a reverse class action, a term used colloquially to describe where a plaintiff seeks certification of a respondent/defendant class proceeding, could be pursued in connection with a copyright … Continue Reading
The rise of online intermediaries, such as Google, Amazon, and Facebook, has radically changed the way in which many businesses and individuals operate and has introduced novel legal and business questions and challenges. It is easier and cheaper than ever for bad actors to use online tools, whether it be websites, platforms, or online profiles, … Continue Reading
When a corporation expands its business into Canada, consideration should be given to whether it can register its brand as a trademark in this new market. While a corporation may operate in this market without registered trademarks, many statutory frameworks, like the Canadian regime, offer additional benefits to companies[1] that have registered marks. If a … Continue Reading
The British Columbia decision Equustek Solutions Inc. v Jack[1] highlights the difficult, time consuming, and expensive exercise that organizations may find themselves in when an employee misuses confidential information. In today’s environment, information can be downloaded, transferred or shared instantly. How can organizations best protect their intellectual property assets and confidential information to maintain their … Continue Reading
The Supreme Court of Canada has denied leave to appeal of the Ontario (Energy) v Quality Program Services Inc.1 Federal Court decision, thereby bringing finality to whether public authorities are immune to trademark infringement claims arising from use of their official marks. This Federal Court case law confirms that registered trademark owners will continue to enjoy the … Continue Reading
“Use it or lose it” is a staple expression known to Canadian trademark lawyers. Once a business successfully registers a trademark in Canada, it must “use” its registered mark in Canada or it may lose the protections provided by the Trademarks Act (the “Act“). With the advent of e-commerce, many non-Canadian businesses can now advertise their services … Continue Reading
The U.S. Supreme Court recently confirmed that a “generic.com” term may be eligible for federal trademark registration in the U.S., in certain circumstances. We will review the relevant decisions, discuss the Canadian legal framework with respect to registration of such mark and consider the implications of seeking registration of a “generic.com” or a “generic.ca” mark … Continue Reading
The Federal Court of Canada (the “FCTD“) recently released Toys “R” Us (Canada) Ltd v Herbs “R” Us Wellness Society, in which it considered whether a cannabis company, Herbs “R” Us Wellness Society (“Herbs R Us“), had breached Sections 20, 7(b) and 22 of Canada’s Trademarks Act (the “Act“) with respect to claims of trademark … Continue Reading
On June 5, 2020, the Federal Court of Appeal (“FCA“) released its decision in 3510395 Canada Inc. v. Attorney General of Canada et al., 2020 FCA 103, in which it upheld the constitutionality of Canada’s anti-spam legislation (“CASL“). CASL is the federal law which regulates the way in which businesses may communicate with consumers using electronic means. The … Continue Reading
Canada’s COVID-19 Emergency Response Act came into force on March 25, 2020. Perhaps overlooked amongst emergency relief, health care and financial effects is Part 12 of the Act which makes changes to the Patent Act. Why should the general public care about this? I’m glad you asked.… Continue Reading
On June 17, 2019, Canada’s Trademarks Act changed, resulting in its modernization. Canada has now joined five international intellectual property treaties, including the Madrid Protocol, Singapore Treaty and Nice Agreement, all related to trademarks. There has been a great deal of activity to get ready for the changes. To implement the changes, the Canadian Trademarks … Continue Reading
June 17, 2019 is the big day – a day anticipated since 2014. The major changes to the Canadian Trademarks Act will be implemented on this day. What does this mean for trademark owners? These changes will affect the types of trademarks which are protectable, the basis for registration, the procedures for filing trademarks, the … Continue Reading
The Canadian Trademarks Act amendments, which are allegedly coming into force in early 2019, include the removal of the requirement that a trademark applicant declare that it has been using its trademark before it files the application or before registration in Canada. The amendments are meant to bring Canada’s laws in line with international treaties. The … Continue Reading
As part of the implementation of various changes to Canadian Trademark Laws, the Federal Government of Canada released in June, 2017 the new proposed Trademark Regulations for public consultation. Canada has been modernizing its trademark law, including by moving to join three International Treaties administered by the World Intellectual Property Organization (WIPO) dealing with trademarks. … Continue Reading
The plaintiff in a copyright infringement action has the option to choose to receive statutory damages rather than to establish its actual quantum of damages it has suffered. Statutory damages range from a minimum of $500 to a maximum of $20,000 for the infringements related to a given work. A plaintiff might choose statutory damages … Continue Reading
The mattress business is a competitive one! Trade-marks in the mattress business are valuable! Sleep Country Canada Inc. is a major mattress retailer in Canada. It is best known for its slogan “Why Buy a Mattress Anywhere Else?”. It owns two Canadian trade-mark registrations for this slogan. This trade-mark, together with its accompanying musical jingle, … Continue Reading
