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… Continue reading Composite Trademarks
Author: David Michaels
David Michaels, J.D., B.Eng., CHRM is a trained attorney who holds certificates in Canadian Trademark Law (2012) and Canadian Patent Law (1996) from McGill University. He has worked in the area of trademark law in Canada since 1995 and in the USA since 1993.
David is a legal blogger, brand consultant, an eCommerce entrepreneur, and an aeronautical engineer.
Warning & Disclaimer: The pages, articles and comments on trademarkpro.ca do not constitute legal advice, nor do they create any attorney-client relationship. The articles published express the author's notes of the current state of trademark law and should not be attributed as opinions of the author, his employer, clients or the sponsors of trademarkpro.ca. The author does not warrant that these notes are up-to-date. Trademark law is constantly changing and it varies between jurisdictions and even within jurisdictions. This website should not be relied upon.
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… Continue reading Can You Trademark the Swiss Flag Symbol?
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… Continue reading Picking a domain name
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… Continue reading TIME DEVELOPMENT GROUP INC. & TIME DEVELOPMENT INC. v. TIMES GROUP CORPORATION & TIMES DEVELOPMENTS INC. 2017
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… Continue reading Why Buy a Mattress Anywhere Else is a trademark
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… Continue reading Trademark priority
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… Continue reading Top Domain Sales
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… Continue reading Why Buy Domain Name sumo.com for $1.5 Million USD?
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… Continue reading How Do You Trademark
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.… Continue reading Trademark Cases
CANADA GOOSE INC v SEARS CANADA INC. Trademark Infringement Case Settled
Canada Goose and Sears Canada sent a letter to the Federal Court of Canada in November 2016 to inform the court that they had settled their cases against each other just in time for the winter coat season. Sears Canada had been selling a variety of winter parkas with a furry liner along the brim… Continue reading CANADA GOOSE INC v SEARS CANADA INC. Trademark Infringement Case Settled
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… Continue reading Cancelling a Trademark in Canada
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:… Continue reading HERTZ SYSTEM INC et al v. HERC EQUIPMENT RENTALS INC
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… Continue reading Claiming services in a trademark application
Registering surnames and clearly descriptive trademarks
Can you Register a Surname as a Trademark? Paragraph 12(1)(a) of the Trademarks Act stipulates that a trademark is registrable if it is not a word that is primarily merely the name or the surname of an individual who is living or who has died within the preceding thirty years. The leading cases pertaining to… Continue reading Registering surnames and clearly descriptive trademarks
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… Continue reading French Press is a Generic Trademark
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®) –… Continue reading Registrable Trademarks
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… Continue reading RE/MAX, LLC v. PROPERTY MAX REALTY INC. AND OTHERS T-545-16
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… Continue reading Laches in Canada
Surnames can not be registered as a trademark
Words that are primarily merely surnames can not be registered as trademarks, per section 12(1)(a) of the Trade-marks Act: 12. (1) Subject to section 13, a trade-mark is registrable if it is not (a) a word that is primarily merely the name or the surname of an individual who is living or has died within the… Continue reading Surnames can not be registered as a trademark
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… Continue reading Select a Brand Name that is Registrable
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,… Continue reading What is a Trade-Name?
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… Continue reading What Is a Trademark?
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… Continue reading Do Not Commit Perjury on Affidavits
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… Continue reading A man’s name is his own property
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… Continue reading Federal court of appeal cancels Speed Queen trademark registration
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… Continue reading Trans-Pacific-Partnership Agreement #TPP
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… Continue reading Protect Your Game
Basic Facts About Trademarks For Small Business
Trademarks For Small Business Watch this USPTO video to learn some basic facts about trademarks for small business:
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… Continue reading How Many Panelists are Optimal for a UDRP Complaint
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… Continue reading Doctrine of Laches in Patent Suits
Canadian Trademark Legislative Changes (2019)
Canada’s Bill C-31 made significant changes to Trademark law in Canada, effective on June 17, 2019. Summary of Canadian Trademark Law Changes (2019) The changes to Canada’s trademark laws, under Bill C-31, will officially go into effect June 17, 2019. The new Trademarks Act includes the following changes: Canadian trademark application fees going up from… Continue reading Canadian Trademark Legislative Changes (2019)
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… Continue reading Proper Trademark Use
Using an Invoice to Prove Use of a Trademark in connection with Goods
If a trademark registration for goods is challenged in a section 45 proceeding, then the owner needs to prove that it has used the trademark with all of the goods listed in their application. Using an Invoice to Prove Use of a Trademark in connection with Goods If the trademark does not appear on the… Continue reading Using an Invoice to Prove Use of a Trademark in connection with Goods
Federal Court Powers
Are there limits to Federal Court of Canada’s powers to grant relief? Yes, there are limits to the Federal Court’s powers. Every law of Canada shall be so construed and applied as not to abrogate, abridge or infringe or to authorize the abrogation, abridgment or infringement of any of the rights or freedoms recognized and declared in… Continue reading Federal Court Powers
Trademarks obtained improperly or abandoned may be canceled. Trademark cancellation may be very effective in dealing with claims of trademark infringement. A Trademark cancellation of a US trademark is a legal proceeding before a federal court or the TTAB administrative tribunal at the USPTO where a person petitions to remove a trademark registration from the trademark register.… Continue reading Trademark Cancellation
Register A Slogan As A Trademark
Q. Can You Register A Slogan As A Trademark? A. Yes, “Just Do it” is Nike’s famous slogan and they registered it. Trademarks: JUST DO IT!, Refused, 0624000 Trademarks: JUST DO IT, Registered, 1337724, TMA716435 Trademarks: JUST DO IT, Registered, 1060303, TMA583574 Trademarks: JUST DO IT, Registered, 0737830, TMA477741 In fact, brand owners are very litigious… Continue reading Register A Slogan As A Trademark
Isn’t incorporating like trademarking the company
Question: Isn’t incorporating like trademarking the company? Answer: No. Incorporating gives you some common law rights, but not the exclusive right to use the distinctive word in your corporate name throughout Canada for the services the business provides. For example, the distinctive portion of Michaels Inc. and Michaels Tech Inc. is “Michaels.” The name of a company is… Continue reading Isn’t incorporating like trademarking the company