Olympic Rings and Faster, Higher, Stronger

The Olympic Rings and and the motto “Faster, Higher, Stronger” are both Olympic marks. Olympic Rings Baron Pierre de Coubertin (died 1937) created this Olympic Rings design in 1913. They were published not later than 1920, when they were displayed on the Olympic flag at the Antwerp games. The Government of Canada prohibits the use […]

Piscitelli v. LCBO 2001 FedCt Decision re Millennium

Piscitelli has been cited as authority for: Drawing negative inferences, The standard of review in the face of new evidence, and That a Federal Court can a declare an official mark as unenforceable. Piscitelli has been cited in 5 cases in the Federal Court of Canada, as of August 2018, for: Drawing Negative Inferences [37] […]

ALOPEX ADVISORS Trademark Infringement Case

ALOPEX ADVISORS, LLC v. ALOPEX GOLD INC. filed a trademark infringement case, court file number T-1833-17, on November 2017. While it is too early to tell, it seems that ALOPEX ADVISORS will likely succeed based on their prior use of the Alopex head design in Canada since 2012, because of its priority based on use. Stay […]

Deceptively Misdescriptive Trademarks

Deceptively misdescriptive trademarks are not registrable under section 12(1)(b) of the Trademarks Act, which states: When trade-mark registrable 12 (1) Subject to section 13, a trade-mark is registrable if it is not … (b) whether depicted, written or sounded, either clearly descriptive or deceptively misdescriptive in the English or French language of the character or quality […]

Vancouver Career College v. Vancouver Community College

Vancouver Career College and Vancouver Community College are fighting over who owns the acronym VCC. The Vancouver Career College case is before the Supreme Court of Canada. In this trademark confusion case, the issues are: Respondent bringing passing off action against the applicant with respect to its trademarked name and acronym: In a passing off […]

Who Owns the Word Perks?

In a case appealed all the way to the Supreme Court of Canada, two companies fought over who owns the word “perks.” The case is called Venngo Inc v. Concierge Connection Inc. c.o.b. as Perkopolis, et al. The Supreme Court of Canada dismissed the appeal and the decision of the Federal Court of Appeal stands. 2017-11-23 Decision […]

Composite Trademarks

Composite Trademarks are marks made up of multiple elements that could be separated. Why Register Composite Trademarks? Registration of a composite mark, that incorporates an unregistrable word component, can provide useful enforcement rights. A composite trademark conveys the trademark impression to customers The mark is always used in a stylised get-up The word portion of […]

Can You Trademark the Swiss Flag Symbol?

Various forms of the Swiss Flag symbol appear on a variety of luggage and knapsacks sold in Canada. A trademark search of the CIPO database shows that there are many variations of the Swiss Flag symbol are registered and abandoned over the years. The Canadian Trademarks Act lists various types of prohibited marks at section […]

Picking a domain name

Picking a domain name that will engender trust and drive traffic your website is a critical step in building a successful website. Factors in Picking a Domain Name: An easy to type and spell domain name is the most important factor. A short domain name, less than 10 letters is preferable. A one or two-word […]

TIME DEVELOPMENT GROUP INC. & TIME DEVELOPMENT INC. v. TIMES GROUP CORPORATION & TIMES DEVELOPMENTS INC. 2017

A Federal Court determined that a registered trademark, TIMES GROUP CORPORATION, had been infringed by a confusing tradename, TIME DEVELOPMENT GROUP, per The Honourable Mr. Justice O’Reilly, 2016 FC 1075. Time Development Group Inc. appealed the decision to the Federal Court of Appeal.   Time Development Group Inc. v. Times Group Corporation: Plaintiff registered its corporate name as […]

Why Buy a Mattress Anywhere Else is a trademark

The Federal Court of Canada granted Sleep Country an interlocutory injunction against Sears’ use of “There is no reason to buy a mattress anywhere else” because it was causing a loss of distinctiveness to Sleep Country’s trademark, “Why Buy a Mattress Anywhere Else?” It appears that Sleep Country’s radio slogan, “Why Buy a Mattress Anywhere […]

Trademark priority

There are two situations where trademark priority is important to applicants in Canada. The first situation is about who has a filing date priority. The second situation is who has superior title to a trademark based on use in Canada. Who has trademark priority? A. The first person to apply to register in Canada? (i.e. Canadian […]

Top Domain Sales

Domain names are considered property in Canada and elsewhere. Some domain names have a significant inherent value beyond their initial acquisition cost. Domain names in our top domain name sales lists usually have one or more of the following characteristics: Short domain names Surname domain names Brandable domain names Spellable domain names Generic domain names […]

Why Buy Domain Name sumo.com for $1.5 Million USD?

There is an inherent value in domain names. The sumo.com domain name sold for 1.5 million USD. It took Noah Kagan of SumoMe.com 7 years of negotiations to buy the domain name sumo.com. SumoMe.com is now redirected to sumo.com. SumoMe.com transitioned to sumo.com for $1.5 million SumoMe paid $500,000 up front and it will pay […]

How Do You Trademark

How do you trademark? You trademark a word, picture, sound or a slogan by using it as a trademark and filing a trademark application with the intellectual property office in each country that you want trademark protection in. In Canada, trademark applications are filed with CIPO, the Canadian Intellectual Property Office. A trademark application needs […]

Trademark Cases

Decisions in Canadian trademark cases are binding on lower courts if they are decided by the Supreme Court of Canada, the Federal Court of Appeal, or the court of appeal in any given Province. It should not matter how old the case is, these cases should be valid authority if the cases have not been overruled. […]

Cancelling a Trademark in Canada

Cancelling a Trademark in Canada can be done in two ways. Canceling a Trademark Based on Non-Use Start a section 45 proceeding with the Registrar of Trademarks in the Canadian Intellectual Property Office. A section 45 proceeding is not a court proceeding. However, either party may appeal from the Registrar of Trademark’s decision to the […]

HERTZ SYSTEM INC et al v. HERC EQUIPMENT RENTALS INC

The HERTZ System, Inc. v. HERC Equipment Rentals is a case filed in March 2016 in the Federal Court of Canada. Essential facts: HERC EQUIPMENT RENTALS INC. ON-1389811 Incorporated on 2000-01-24 Heavy equipment rental business based in Hamilton, Ontario Linkedin profile Trademark: HERC, Searched, 1775377 filed November 10, 2014, based on use in CANADA since June 2002. Claims: […]

Claiming services in a trademark application

Trademark applicants should be cautious about the services that they claim. If the services claimed are not beneficial to the public or if they are self-serving and only done to sell the applicant’s goods, then applications are open to opposition and trademark registrations are vulnerable to cancellation proceedings. Only claim services in a trademark application, if you […]

Registering surnames and clearly descriptive trademarks

The Canadian Trade-marks Act gives foreign applicants an unfair advantage in their ability to register trademarks that are names, surnames or clearly descriptive trademarks, which would otherwise be unregistrable pursuant to section 12 of the Trade-Marks Act. The Amendments to the Trade-marks Act (not yet in force) will repeal this loophole soon. Merely descriptive marks on the USPTO’s […]

French Press is a Generic Trademark

Mr. Justice Mosley performed a distinctiveness analysis and found that FRENCH PRESS is a generic trademark. The Federal Court of Canada expunged trademark registration TMA 475,721 for FRENCH PRESS covering Non-electric coffee makers. Bodum USA, Inc. v. Meyer Housewares Canada Inc., 2012 FC 1450; Bodum USA, Inc. v. Meyer Housewares Canada Inc., 2013 FCA 240 (appeal dismissed) THE LEGISLATIVE and […]

Registrable Trademarks

Be mindful when selecting a brand. Not all words and names are capable of being protected as trademarks. Section 12(1) of the Trade-Marks Act limits what kinds of trademarks may be registered. So choose registerable trademarks as brands for your business. Suggestive (less than clearly descriptive, but still suggest the goods or services —think Facebook®) – […]

RE/MAX, LLC v. PROPERTY MAX REALTY INC. AND OTHERS T-545-16

RE/MAX, LLC sued PROPERTY MAX REALTY INC. AND OTHERS for trademark infringement in Vancouver Canada according to Federal Court file T-545-16. PROPERTY MAX REALTY INC. appears to operate from propertymax.ca. Trademark Infringement and Passing Off PROPERTY MAX’s logo doesn’t look anything like the RE/MAX logo, the name includes the words “MAX REALTY” and that may be the basis for […]

Laches in Canada

Laches is a legal doctrine that bars those who take too long to assert a legal right to any entitlement to compensation or relief. In order to establish the defense of laches, a party must show undue or unreasonable delay by the other party in asserting its rights, and prejudice resulting from the delay. A […]

Select a Brand Name that is Registrable

It is important to select a brand name that you can register as a trademark in Canada. Products need a distinctive brand name to build goodwill and enhance their reputation. Spend money building a brand using a mark that you can’t register is a waste. Anyone can compete with you using the same brand or […]

What is a Trade-Name?

What is a trade-name? A “trade-name” means the name under which any business is carried on, whether or not it is the name of a corporation, a partnership or an individual;  Trade-marks Act, R.S., 1985, c. T-13, s. 2;  1993, c. 15, s. 57;  1994, c. 47, s. 190;  2014, c. 20, s. 369, c. 32, […]

What Is a Trademark?

A trademark is a mark that distinctly identifies your business brand, goods, and services. If your trademark is not distinctive, it is usually not registrable. A mark is a word, symbol, or design used to distinguish goods or services of one company from others. Canada still uses the hyphenated spelling for trade-mark for now. Pending […]

Do Not Commit Perjury on Affidavits

A party before a tribunal may submit an affidavit as evidence to help a tribunal member or a judge determine the facts in a matter. A trademark owner is required to submit an affidavit to the Registrar of Trademarks when responding to a Section 45 notice or when opposing a trademark application. Let Right Prevail The […]

A man’s name is his own property

A man’s name is his own property, and he has the same right to its use and enjoyment as he has to that of any other species of property. If such use be a reasonable, honest, and fair exercise of such right, he is no more liable for the incidental damage he may do a […]

Federal court of appeal cancels Speed Queen trademark registration

The low threshold of evidence required to show use of a trademark is not all that minimal according to the Federal Court of Appeal’s recent decision in Alliance Laundry Systems LLC v. Whirlpool Corporation LP. Since there is no option to cross-examine affiants, affidavits in section 45 proceedings need to contain solid facts proving use during the […]

Trans-Pacific-Partnership Agreement #TPP

Twelve countries signed the Intellectual Property Rights Chapter of the Trans-Pacific-Partnership Agreement “TPP” on October 9, 2015. TPP is an expansion of the Trans-Pacific Strategic Economic Partnership Agreement (TPSEP or P4), which was signed by Brunei, Chile, New Zealand, and Singapore in 2005. In 2008, Australia, Canada, Japan, Malaysia, Mexico, Peru, the United States, and Vietnam joined the TPP. It […]

Trademark Search

You may do a CIPO trademark search on the CIPO database: http://www.ic.gc.ca/app/opic-cipo/trdmrks/srch/tmSrch.do?lang=eng   and a USPTO trademark search on the USPTO TESS database: http://www.uspto.gov/trademarks-application-process/search-trademark-database and a global trademark search on the WIPO brand database at: http://www.wipo.int/portal/en/index.html

Protect Your Game

Stephen Charles McArthur speaks at Casual Connect MISTAKE #1: Trying to use an NDA to protect your game. When hiring contractors (and in some places even employees) to build your game with code and images, you need to get them to sign a “Work For Hire Agreement.” Make sure you have a work for hire […]

How Many Panelists are Optimal for a UDRP Complaint

In a domain dispute, you may select either one panelist or three panelists to decide who gets a domain name. How Many Panelists are Optimal for a UDRP Complaint? It costs less to file a UDRP complaint if you select a single panel member than selecting a three member panel to decide your domain dispute. Savvy trademark […]

Doctrine of Laches in Patent Suits

Federal Circuit says that the doctrine of laches applies to damages in patent cases since limitation periods in patent suits are not Federal law The Federal Circuit ruled on September 18, 2015 that the doctrine of laches can still be used to bar the recovery of pre-suit damages in long-delayed patent suits. The doctrine of laches lets […]

Canadian Trademark Legislative Changes

Parliament made significant changes to Canadian Trademark laws in BILL C-31 during 2017. Although the changes have received Royal Assent, we don’t know when they will be in force. Keep checking the Canadian Trademarks Act for updates. CIPO is making progress to modernize Canada’s intellectual property (IP) framework. The following is an overview of the […]

Proper Trademark Use

Proper trademark use is vital to obtaining and maintaining trademark registration. When you first adopt a trademark, you may use the TM symbol. You may only use the R symbol after obtaining a trademark registration. Proper Trademark Use Identify the trademark that you registered. Identify the goods and services that it is registered for. Use […]