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 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 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.

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 […]

Trademark Cancellation

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. […]

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 […]

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 […]

Nice Classification for Canadian Trademarks

The Canadian Intellectual Property Office (“CIPO”) adopted the international Nice Classification for trademark applications in 2015. As of January 1, 2017, CIPO applies the 11th Edition of the Nice Classification to all New applications. If you have filed your application prior to January 1, 2017, and have chosen to submit a Revised application, you may choose […]

Domain Names and Trademark Infringement

Owning and using domain names is not automatically trademark infringement. A trademark is not a monopoly of all domain names with the trademark. Some trademark bullies have tried to claim that they have a monopoly of all domain names containing their registered trademark. Often, domain name holders give in to these bullies. However, some have […]

Property Rights in Domain Names

Domain name registrants have property rights in most types of domain names comprising incorporeal rights and equitable rights. Whether there are property rights in .ca domain names is still in question. Domain names are not corporeal property. You can’t touch or hold domain names. However, anyone can use a domain name to find a website that […]

Generic Trademark

A generic trademark merely describes the goods or services. Specifically, a mark is merely descriptive under Trademark Act Section 2(e)(1), 15 U.S.C. 1052(e)(1), if it describes an ingredient, quality, characteristic, function, feature, purpose or use of the relevant goods. See In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987); In re Bed […]

Canadian Trademark Cases

The Leading Cited Canadian Trademark Cases are: Re/Max International, Inc. v. Metro/Max Realty Inc. (1997) 82. C.P.R. (3d) 110 (T.M.O.B.) Marineland Inc. v. Marine Wonderland and Animal Park Ltd. (1974) 16 C.P.R. (2d) 97 (F.C.T.D.) Goodall Rubber Co. v. Goodyear Tire and Rubber Co. (1999) 3 C.P.R. (4th) 393 (T.M.O.B.) Tone-Craft Paints Ltd. v. Du-Chem Paint Co. Ltd. (1969) […]

Black v Molson Canada domain dispute

Douglas Black sued Molson Canada in the Ontario Superior Court of Justice to decide their domain dispute. Black v Molson Canada, 60 O.R. (3d) 457, [2002] O.J. No. 2820 Court File No. 02-CV-231-828CM3 Ontario Superior Court of Justice B. Wright J. July 18, 2002 Intellectual property — Trademarks — Domain Name — Applicant registering domain […]

Official Marks Canada

Official Marks in Canada are trademarks that are used and adopted by a public authority under government control. A public authority has been described as an entity that is subject to government control and engages in activities that benefit the public (United States Postal Service v. Canada Post Corporation, 2007 FCA 10). Trademarks Act, Section […]

Trade-marks Act Canada

Click to see the Trade-marks Act (R.S.C., 1985, c. T-13) current to 2015-03-03 and last amended on 2015-01-01. Previous Versions Some of the amendments to the Trade-marks Act, including changing the title of the Act to the Trademarks Act, have not taken effect yet. The Trade-Marks Act was amended on December 31, 2013, before it […]

Changes to Canadian Trademark Law 2014

Major Changes to Canadian Trademark Law happened when Canada updated its Trademarks Act effective June 19, 2014. Some of the minor changes are: Trade-mark became trademark; Wares became goods; Some of the major changes are: A mark becomes a sign, which is far more expansive; The concept of a “proposed trade-mark” is gone! The definition […]

Trademark Offices

Trademark Offices Canadian Intellectual Property Office – Trade-mark Office EU Office for Harmonization in the Internal Market (Trade Marks and Designs) Japan Patent Office UK Intellectual Property Office United States Patent and Trademark Office World Intellectual Property Organization

Trademark Associations

Trademark Associations American Intellectual Property Law Association Anti Copying In Design British Brands Group Business Europe European Brands Association European Communities Trade Mark Association INDICAM Intellectual Property Owners Association International Intellectual Property Institute International Trademark Association Licensing Executives Society International Licensing Executives Society (USA […]