Who has trademark priority? A. The first person to apply to register in Canada? (i.e. Canadian application date July 1, 2016) or B. The first person to apply for a trademark registration in the world within the prior 6-months and claims its priority date in its Canadian application? (i.e. USPTO application date May 1, 2016 and its
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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.
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Cancelling a Trademark in Canada is a procedure that starts in the CIPO trademark office and usually does not involve any court proceeding unless there is an appeal. To cancel a trademark, you need to start a section 45 proceeding. The trademark owner must file evidence showing To cancel a trademark, you need to start
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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
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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
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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
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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®) –
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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
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It is important to select a brand name that you can register as a trademark in Canada. Most products and services need a distinctive brand name to build goodwill and enhance their reputation. If you spend money building a brand using a mark that you can’t register, anyone can compete with you using the same brand or
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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
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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
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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
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Trademarks For Small Business Watch this USPTO video to learn some basic facts about trademarks for small business:
CIPO is making progress to modernize Canada’s intellectual property (IP) framework. The following is an overview of the trademarks legislative work that is underway to help Canada better align itself with international best practices. Take a look at the Update to the trademarks online tools page to see which applications and forms will be adapted
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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 trademark registration.
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
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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
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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.
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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
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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
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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
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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)
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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
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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
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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
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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
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