Beginning in January 2025, the Canadian Trademarks Office (CIPO) will start proactively and unilaterally (i.e., without a request by a third party) sending notices to registered trademark owners requiring them to prove that...more
Those familiar with filing and prosecuting trademark applications in Canada will know that the Canadian Intellectual Property Office (CIPO) has among the world’s most stringent standards for assessing the specificity of goods...more
9/25/2024
/ Batteries ,
Brand ,
Canada ,
Canadian Intellectual Property Office (CIPO) ,
Food Supply ,
Goods or Services ,
Robots ,
SaaS ,
Trademarks ,
Trademarks Act ,
Websites
Last year, we discussed the ever-increasing interest in green branding and how marketing claims related to the environment are receiving increased scrutiny by Canadian regulatory authorities. It should therefore come as no...more
Trademarks allow consumers to distinguish between products and services of one business and those of another, making them a most valuable business asset. However, that asset’s value is closely tied to the extent to which an...more
Over the past several years, companies across the globe have seen an increasing demand for green and sustainable products and services. This demand has resulted in the rise of “green branding”. Green branding is where a...more
4/13/2023
/ Advertising ,
Corporate Branding ,
Corporate Counsel ,
Environmental Claims ,
Green Guides ,
Green Marketing ,
Greenwashing ,
Marketing ,
Sustainability ,
Trademarks ,
Unfair or Deceptive Trade Practices
“Official marks” are a unique feature of Canadian trademark law. Many trademark owners, even in Canada, are unaware of official marks. Those who are aware, are often unclear about the rights provided and the options available...more
The world of digital marketing & advertising is fast-paced and always evolving to adopt the latest technology and capitalize on pop culture trends and new media channels. Join us to learn about the legal aspects of these...more
Earlier in the year, the Canadian Trademarks Office announced new measures intended to improve delays in the processing of trademark applications. With the time to examination for national applications exceeding three years...more
If a latte is poured without anyone to photograph it, does it make a design?
Instagram, TikTok and YouTube are this century’s silver screen. They’re the way people stay in touch, share artistry, and learn about the...more
The Tokyo 2020 Olympic Summer Games officially kick-off today. Taking place a year later than scheduled as a result of the pandemic, and amid no small amount of controversy, the Games will look a little different than...more
It is a fundamental principle of trademark law that no business should be able to prevent others from using apt language to accurately describe their goods and services. For this reason, clearly descriptive trademarks are...more
Until just a few years ago, most Canadian brand owners doing business abroad had limited options for protecting their trademarks outside of Canada. They were obliged to file separate applications in each country of interest,...more
On Monday, May 3, 2021, the Canadian Trademarks Office published two new Practice Notices with respect to Requests for expedited examination and Measures to improve timeliness in examination intended to improve delays in the...more
Until last year, most Canadian brand owners doing business abroad had limited options for protecting their trademarks outside of Canada. They were obliged to file separate applications in each country of interest, except in...more
Comparative advertising can be a useful tool for marketers. It positions competing brands against each other and helps consumers make better choices. However, there are legal limits to comparative advertising which are set...more
2/22/2020
/ Brand ,
Canada ,
Comparative Advertising ,
Competition Act ,
Corporate Branding ,
Dismissals ,
False Statements ,
Insurance Industry ,
Loss of Goodwill ,
Misleading Statements ,
Pets ,
Trademarks ,
Trademarks Act
If you filed a Madrid application on behalf of your client, and designated Canada, you should have received a “Courtesy Letter” from the Canadian Intellectual Property Office (CIPO) advising you as follows...more
12/9/2019
/ Administrative Procedure ,
Best Practices ,
Canada ,
Canadian Intellectual Property Office (CIPO) ,
Client Communication ,
Foreign Trademark ,
Intellectual Property Protection ,
Madrid Protocol ,
Trademark Agents ,
Trademark Application ,
Trademarks ,
WIPO ,
Written Notice
A little over a month has passed since Canada acceded to the Madrid Protocol. The moment was historic, with the Canadian Intellectual Property Office (CIPO) being the first office to allow trademark applicants to use the...more
After five years of anticipation, sweeping changes to Canada’s trademark law will finally come into force on June 17, 2019. The changes, which are substantial, have been canvassed in previous IP Updates. The following briefly...more
6/5/2019
/ Amended Rules ,
Canada ,
Canadian Intellectual Property Office (CIPO) ,
Color Marks ,
Declaration of Use ,
Divisional Applications ,
Filing Fees ,
Madrid Protocol ,
Nice Classification ,
Non-Use of Trademarks ,
Renewal Fees ,
Scent Marks ,
Taste Marks ,
Third-Party Rights ,
Trademark Application ,
Trademark Cancellation ,
Trademark Ownership ,
Trademark Registration ,
Trademark Renewal Applications ,
Trademarks ,
Trademarks Act
It has been said that Instagram, YouTube and blogging represent the height of creative self-expression on the Internet. However, if a brand has sponsored an individual’s content, then the claim to self-expression has its...more
3/28/2019
/ Ad Standards Canada ,
Advertising ,
Canada ,
Competition Act ,
Corporate Branding ,
Disclosure Requirements ,
False Advertising ,
Fashion Branding ,
Federal Trade Commission (FTC) ,
Hashtags ,
Influencers ,
Marketing ,
Misleading Statements ,
Social Media
Non-Canadian retailers can breathe a sigh of relief thanks to the Federal Court of Canada’s decision in Dollar General Corporation v 2900319 Canada Inc, 2018 FC 778 (“Dollar General”). The decision reaffirms the Court’s...more
As trade talks between Canada and the United States dominate the headlines, it is hard to ignore the strong economic ties between these neighbouring nations. For example, the total volume of goods exported from the U.S. in to...more
6/1/2018
/ Canada ,
Corporate Branding ,
Descriptive Trademarks ,
Disclaimers ,
Goods or Services ,
Intellectual Property Protection ,
International Harmonization ,
Madrid Protocol ,
Nice Classification ,
Popular ,
Trade Agreements ,
Trademark Registration ,
Trademark Renewal Applications ,
Trademark Specimen ,
Trademarks ,
Use in Commerce
In the wake of the 2014 announcement that the Canadian Trademarks Act would undergo significant overhaul, there was much speculation about how the changes would impact the behaviour of those filing trademark applications in...more
William Shatner made headlines in November when he took to Twitter to express his displeasure that his name and likeness were used without his permission to promote a condo development in Hamilton, Ontario. The development in...more
1/17/2018
/ Advertising ,
Canada ,
Celebrities ,
Commercial Use ,
Damages ,
False Advertising ,
Intrusion Upon Seclusion ,
Misappropriation ,
Name and Likeness ,
Personality Rights ,
Popular ,
Privacy Torts ,
Social Media ,
Video ,
Without Consent