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?
Category: Canadian Trademark Law
Canadian trademark law comprises:
Trademark Legislation:
- Trade-marks Act
- Amendments to the Trade-marks Act (not yet in force)
- Olympic and Paralympic Marks Act
Trade-marks Act,
- 1 – Short Title
- 2 – Interpretation
- 7 – Unfair Competition and Prohibited Marks
- 12 – Registrable Trade-marks
- 16 – Persons Entitled to Registration of Trade-marks
- 17 – Validity and Effect of Registration
- 23 – Certification Marks
- 26 – Register of Trade-marks
- 30 – Applications for Registration of Trade-marks
- 40 – Registration of Trade-marks
- 41 – Amendment of the Register
- 46 – Renewal of Registrations
- 47 – Extensions of Time
- 48 – Transfer
- 49 – Change of Purpose in Use of Mark
- 50 – Licences
- 51.01 – Offences and Punishment
- 51.02 – Importation and Exportation
- 51.02 – Interpretation
- 51.03 – Prohibition
- 51.04 – Request for Assistance
- 51.05 – Measures Relating to Detained Goods
- 51.1 – No Liability
- 51.11 – Powers of Court Relating to Detained Goods
- 52 – Legal Proceedings
- 62 – General
- 67 – Newfoundland
- 69 – Transitional Provision
Trademark Regulations,
- 2 – Interpretation
- 3 – Correspondence
- 12 – General
- 15 – Journal
- 18 – Eligibility for Examination
- 19 – Examining Board
- 20 – Qualifying Examination
- 21 – Listing of Trade-Mark Agents
- 22 – Renewal
- 24 – Application for Registration
- 30 – Amendment of Application for Registration
- 34 – Advertisement of Application for Registration
- 35 – Opposition
- 48 – Transfer
- 51 – Register
- 53 – Objection Proceedings Under Section 11.13 of the Act
- SCHEDULE – Tariff of Fees
- Olympic and Paralympic Marks Regulations
- and cases
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… 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
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
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
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
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
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
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
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)
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
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
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