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Canada Corporate Counsel Trademarks

Smart & Biggar

False alarm: the risks of groundless online takedown complaints

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Online takedowns are an essential and effective tool for intellectual property rightsholders. Such tools are a common response to infringement on online marketplaces. A recent Canadian decision highlights the risks associated...more

Smart & Biggar

Canadian Trademark Law 2023: A Year in Review

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2023 was an active year in Canadian trademark law. Canadian Courts addressed a wide range of issues, from licensing to comparative advertising to co-branding.   Notable changes also emerged from the Canadian Trademarks...more

Stikeman Elliott LLP

Canadian Intellectual Property Office (CIPO) Official Fees to Increase Substantially on January 1, 2024

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CIPO has recently announced that most of its official fees will increase by at least 25% in 2024. These adjustments will affect all pending applications for patents, trademarks, industrial designs and copyrights, as well as...more

Smart & Biggar

Federal Court of Canada launches specialized Intellectual Property Chambers pilot project

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With the creation of specialized Chambers in the Federal Court, parties can be confident that judges assigned to their intellectual property matters in Canada will have intellectual property expertise. ...more

Smart & Biggar

Trademark troll loses registration after appropriating well-known mark

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The Federal Court of Canada, in a May 2022 decision,1 has ordered a B.C. man’s trademark registration to be expunged for “bad faith” after finding it was filed solely for the purpose of resale. This is the first decision in...more

Smart & Biggar

Canadian Patent Law 2021: A round-up of interesting developments and court decisions

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2021 saw changes in Canadian patent legislation, and a variety of court decisions addressing rarely interpreted provisions of the Patent Act, early consideration of recently enacted provisions, and new takes on central tenets...more

Smart & Biggar

Canadian Trademark Law 2021: A Year in Review

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2021 offered many lessons to Canadian trademark owners including: reminders of the challenges of enforcing inherently weak trademarks and the importance and benefits of registering IP rights at the Canadian border. As well,...more

Smart & Biggar

Federal Court finds Subway’s trademark rights infringed by cannabis retailer that adopted “Budway” parody mark

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Earlier this month, the Federal Court issued its decision in Subway IP LLC v Budway, Cannabis & Wellness Store, 2021 FC 583, a case involving a cannabis retailer that knowingly adopted a parody mark in connection with its...more

Smart & Biggar

Fast Tracking Canadian Trademark Applications - Trademarks Office Publishes New Practice Notices to Reduce Examination Delays

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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

Smart & Biggar

Trademarks in 2020: Notable Canadian trademark cases and developments

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There were several notable trademark cases in Canada in 2020, including those addressing comparative advertising, depreciation of goodwill, brand parody, trademark ‘use’ in the absence of a brick-and-mortar location, and...more

Smart & Biggar

Trademarks Office to allow expedited examination for COVID-related goods and services

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This week, for the first time in more than a decade, the Canadian Trademarks Office announced that it will grant requests for expedited examination of trademark applications. However, expedited examination will be limited to...more

Faegre Drinker Biddle & Reath LLP

U.S. Parties Seeking to Register Their Marks in Canada Currently Face Increased Delays and Added Potential Bars to Registration

O Canada. Ohhh, Canada! – Delays and Restrictions on Trademark Registrations - With the assistance of local Canadian counsel, we frequently assist U.S. parties that use their marks in Canada to pursue registrations for their...more

International Lawyers Network

Trademark Use: No Need For A "Bricks And Mortar" Presence In Canada

“Use it or lose it” is a staple expression known to Canadian trademark lawyers. Once a business successfully registers a trademark in Canada, it must “use” its registered mark in Canada or it may lose the protections provided...more

Dickinson Wright

CIPO Pandemic Response: NEW Deadline Extension is August 28, 2020*

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The Canadian Intellectual Property Office (CIPO) has now updated its Service and Website Interruptions page to inform the public of a new final deadline extension in response to the ongoing health crisis....more

Dickinson Wright

CIPO Pandemic Response: Final Deadline Extension Ends August 21, 2020*

Dickinson Wright on

The Canadian Intellectual Property Office (CIPO) has now updated its Service and Website Interruptions page to inform the public of a new, and final, deadline extension in response to the ongoing health crisis....more

Dickinson Wright

CIPO Pandemic Response: Update July 2020*

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The Canadian Intellectual Property Office (CIPO) has now updated its Service and Website Interruptions page to inform the public of new deadline extensions in response to the ongoing health crisis....more

Dickinson Wright

CIPO Pandemic Response: Update June 2020* #2

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The Canadian Intellectual Property Office (CIPO) has now updated its Service and Website Interruptions page to inform the public of new deadline extensions in response to the ongoing health crisis....more

Dickinson Wright

CIPO Pandemic Response: Update June 2020*

Dickinson Wright on

The Canadian Intellectual Property Office (CIPO) has now updated its Service and Website Interruptions page to inform the public of new deadline extensions in response to the ongoing health crisis....more

Dickinson Wright

CIPO Pandemic Response: Update May 2020*

Dickinson Wright on

The Canadian Intellectual Property Office (CIPO) has now updated its Service and Website Interruptions page to inform the public of new deadline extensions in response to the ongoing health crisis....more

Dickinson Wright

CIPO Pandemic Response: Update April 2020*

Dickinson Wright on

The Canadian Intellectual Property Office (CIPO) has now updated its Service and Website Interruptions page to inform the public of new deadline extensions and that its document dissemination service has now resumed...more

Dickinson Wright

CIPO Pandemic Response and Canada’s New Compulsory Patent Licensing Provisions

Dickinson Wright on

The Canadian Government and its operating agencies have provided a number of responses to the COVID-19 Emergency.  The purpose of this alert is to provide information about the responses pertaining to intellectual property in...more

Smart & Biggar

Canadian Trademarks Office issues new limits on extensions of time for responding to office actions

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Prior to January 17, 2020, extensions of time were readily available during Canadian trademark prosecution.  A single six-month extension could be secured without providing any substantive reasons. Further six-month...more

ArentFox Schiff

USPTO Announces New Rule Requiring US-Licensed Attorneys to Represent Foreign Applicants and Registrants

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In response to the significant increase in fraudulent filings, effective August 3, 2019, all foreign-domiciled applicants, registrants, or parties to trademark proceedings must be represented by a US-licensed attorney....more

Smart & Biggar

The date is set: June 17, 2019 — Canada’s New Trademark Law will be in Force

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After years of uncertainty, a date has been finally been set for the implementation of Canada’s new trademark law. The new law will come into force on June 17, 2019. This date was announced today, with the publication of the...more

Dorsey & Whitney LLP

Only in Canada, eh? Canada’s Broad Interpretation of Trademark “Use” Gives U.S. Retailers A Big Leg Up

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Two recent decisions of the Federal Court of Canada pave the way for U.S. and other non-Canadian businesses to secure and maintain trademark rights for their retail or hotel operations even where they do not have a bricks and...more

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