The Trademarks Act, R.S.C., 1985, c. T-13, has recently been amended (not yet in force) to create a simple and efficient mechanism to allow the Registrar to give public notice that subparagraph 9(1)(n)(iii) of the Trademarks Act relating to “official marks” does not apply if the entity that made the …
Battle of the Stripes: Adidas versus Thom Browne (Part 1)
On December 14, 2020, Adidas filed an opposition with the United States Patent and Trademarks Trial and Appeal Board against Thom Browne’s US trademark applications for a red, white, and blue parallel stripe for use on footwear. Adidas has opposed the applications, which have been filed on an intent-to-use basis, on the grounds of likelihood of confusion and dilution by blurring.
Greater Clarity for Subject-Matter Eligibility in Canadian Patents: The Benjamin Moore Case
By Marc Lampert The Federal Court, in Benjamin Moore & Co. v. Attorney General of Canada, 2022 FC 923, has recently issued a decision that may help address a controversial practice by the Canadian Intellectual Property Office (CIPO); and in doing so, will add much needed certainty for patent Applicants. …
Upcoming Changes to Canadian Patent Rules: How to Plan Ahead
By Marc Lampert and Ammar Kalanaki Recent amendments to the Patent Rules will come into force on October 3, 2022 and introduce (1) excess claim fees, and (2) a request for continued examination (RCE) practice; among several other amendments. The new Rules will apply to any application for which a request …
CULT GAIA REFUSED U.S. TRADEMARK REGISTRATION OF ITS “GAIA’S ARK” HANDBAG DESIGN, DUE TO GENERICNESS AND NON-DISTINCTIVENESS ISSUES
Dubbed as the Instagram “it” bag in 2016, Cult Gaia’s “Ark” bag design was recently refused trademark registration in the United States following the brand’s five-year battle to obtain registration for the design of its bag.
When Culture And Copyright Clash In An UGGly Lawsuit
The “Ugg” phenomena took North America by storm when Oprah Winfrey first endorsed the Ugg boots – furry, cozy, shaggy, and ‘ugly’ footwear. While these unique looking booties were heckled for some time, the footwear eventually became not only mainstream, but also coveted by celebrities and the general public alike. …
Claiming use goes as a trademark filing basis in Canada
In the Federal Court decision of Metro Brands S.E.N.C. v. 1161396 Ontario Inc. 2017 FC 806, at issue was whether showing use in association with a trademark is only required for the general classes of goods or whether there needs to be use of each of the specific claimed goods …
Netflix takes ‘softball’ approach with Stranger Things pop-up bar
Though companies have traditionally been counselled to aggressively monitor and enforce their intellectual property, some are taking other approaches in an effort to earn positive publicity, especially where circumstances of the infringement are more minor, Toronto intellectual property lawyer Erika Murray tells AdvocateDaily.com. Read more…
Trademarked Stork Upheld in Canadian Copyright Case
A recent trademark infringement case between Stork Market Inc v. 1736735 Ontario Inc. (Hello Pink Lawn Cards Inc), 2017 FC 779 has resulted in a win for the plaintiff and retribution in the amount of $30,000. The copyright and trademark case deals with competitors in the business of renting and …
Canada Launches Public Consultation On reform of Copyright Board
The Copyright Board system changes are intended to allow for creators to get paid properly and on time. New business opportunities in the current fast-moving economic environment should mean more money for creators and users. The Copyright Board of Canada is in charge of establishing royalties to be paid …