Olympic Rings and Faster, Higher, Stronger

Olympic rings mark is a prohibited mark

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… Continue reading Olympic Rings and Faster, Higher, Stronger

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… Continue reading Composite Trademarks

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?

Trademark priority

Registered trademark symbol

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

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.… Continue reading Trademark Cases

Claiming services in a trademark application

Registered Trademark Symbol

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

French Press

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

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®) –… Continue reading Registrable Trademarks

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

Federal court of appeal cancels Speed Queen trademark registration

Speed Queen logo

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

Canadian Trademark Legislative Changes (2019)

Changes trademark law in Canada 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

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.… Continue reading Trademark Cancellation

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

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… Continue reading Domain Names and Trademark Infringement

Generic Trademark

A bag of original pretzel crisps.

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… Continue reading Generic Trademark

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)… Continue reading Canadian Trademark Cases

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… Continue reading Official Marks Canada

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… Continue reading Trade-marks Act Canada

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… Continue reading Changes to Canadian Trademark Law 2014

What Can I Trademark?

Trademarks are the best way to protect words, phrases, and logos, in most countries. Trademarks are registered on a country by country basis, except in Europe where you may register a EU Community trademark or a trademark in one or more EU countries. There is no such thing as a global trademark, but there is a… Continue reading What Can I Trademark?