Category: Canadian Trademark Law

Canadian trademark law comprises:

Trademark Legislation:

Trade-marks Act,

Trademark Regulations,

 

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 […]

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 […]

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 […]

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®) – […]

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 […]

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 […]

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 […]

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 […]

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 […]

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 […]

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 […]

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) […]

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 […]