News & Analysis as of

Trademark Registration Canada Trademarks Act

Smart & Biggar

BYOOVIZ is confusing with BEOVU: Federal Court finds violation of Novartis’ trademark rights

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In a decision dated January 24, 2024, Justice Pallotta allowed Novartis’ application, finding that Biogen and Samsung’s use of the trademark BYOOVIZ in association with an ophthalmologic drug violates Novartis’ rights in its...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

Generic.com — Registrable In Canada?

The U.S. Supreme Court recently confirmed that a “generic.com” term may be eligible for federal trademark registration in the U.S., in certain circumstances. We will review the relevant decisions, discuss the Canadian legal...more

Smart & Biggar

The fight over depreciation of goodwill in Canada keeps going and going …

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While comparative advertising can be an effective tool for comparing and contrasting competing brands, there are limits on what claims can lawfully be made. One such limit is provided by Section 22 of the Trademarks Act,...more

Haug Partners LLP

Global Developments and Considerations for Registering Cannabis and Cannabis-Related Trademarks

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This article discusses the global developments for the registration of cannabis and cannabis-related trademarks in the United States, Canada, Mexico, and the European Union....more

International Lawyers Network

Understanding Trademarks Act Changes

On June 17, 2019, Canada’s Trademarks Act changed, resulting in its modernization. Canada has now joined five international intellectual property treaties, including the Madrid Protocol, Singapore Treaty and Nice Agreement,...more

Smart & Biggar

It’s the final countdown: Top 10 changes to Canada’s trademark law on June 17th

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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

Smart & Biggar

Nice Classification with a trap – Canada introduces “class top-up” fees with no back door

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With the long awaited changes to the Canadian Trademarks Act and Regulations just around the corner, brand owners should be excited about Canada’s alignment with international trademark standards and the new opportunities...more

Smart & Biggar

What’s in a name? Canada may have just made it more difficult to register name and surname marks

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The Canadian Intellectual Property Office has recently revised its Practice Notice regarding name and surname objections....more

International Lawyers Network

New Trademark Laws – Canada | Part I

June 17, 2019 is the big day – a day anticipated since 2014. The major changes to the Canadian Trademarks Act will be implemented on this day. What does this mean for trademark owners?...more

Smart & Biggar

Canada’s Anti-Dilution Remedy is Not Limited to Registered Trademarks: The bunny keeps going… and going… and going

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Section 22 of the Canadian Trademarks Act, depreciation of a registered trademark’s goodwill, is a potentially powerful yet generally under-utilized weapon for dealing with damaging comparative advertising campaigns. In the...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

Changes to Canadian Trademark Law, Eh?

Those of us with clients who do business in Canada have been watching with interest as Canada prepares to implement significant changes to its trademark laws. The new Trademarks Act (no more Trade-hyphen- marks!) was enacted...more

Smart & Biggar

Don’t let your brand go to pot (Part I): 4 things that cannabis brand owners need to know

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The Canadian federal government is moving quickly towards legalizing the possession and consumption of cannabis for recreational purposes. However, Canada’s cannabis industry is already “overgrown” with many licensed (and...more

Bennett Jones LLP

The Best Defence Is a Good Offence: How to Get Rid of Threatening Trademark Registrations

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In Ontario cottage country, locals have been confronted with the registration of the trademark HALIBURTON, the name of the county in which they operate. The registration may threaten uses made by other businesses in the area....more

Smart & Biggar

Protecting Your Harvest in Canada: Naming and Registering Plant Varieties

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Under Canada’s intellectual property laws, plant breeders may apply to protect their plant varieties by applying for a plant variety denomination pursuant to the Plant Breeders’ Rights Act. Similarly, Canadians may protect...more

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