Trademarks, Trademarks Act

The OQLF’s new guidelines: practical resources for trademarks on products

Smart & Biggar on 9/27/2024

On June 26, 2024, the Regulation to amend mainly the Regulation respecting the language of commerce and business (the Regulation) was published in the Gazette officielle du Québec. Since then, the Office québécois de la...more

CIPO’s new Specificity Guidelines for goods and services: what you need to know

Smart & Biggar on 9/25/2024

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

Important Amendments to Canadian Trademark Regulations

International Lawyers Network on 7/12/2024

On June 8, 2024, proposed amendments to Canada’s Trademarks Regulations were published in the Canada Gazette. The public consultation period is open until July 8, 2024, and comments will be posted on the Canada Gazette...more

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

Smart & Biggar on 2/23/2024

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

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

Smart & Biggar on 6/23/2021

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

Trademarks in 2020: Notable Canadian trademark cases and developments

Smart & Biggar on 1/26/2021

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

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

Faegre Drinker Biddle & Reath LLP on 11/19/2020

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

Generic.com — Registrable In Canada?

International Lawyers Network on 8/14/2020

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

Businesses Beware: Depreciation in Goodwill Claims Not Bound By Industry Lines

International Lawyers Network on 7/31/2020

The Federal Court of Canada (the “FCTD“) recently released Toys “R” Us (Canada) Ltd v Herbs “R” Us Wellness Society, in which it considered whether a cannabis company, Herbs “R” Us Wellness Society (“Herbs R Us“), had...more

Not all pun and games: Federal Court not amused with cannabis company’s brand parody

Smart & Biggar on 7/13/2020

In a recent decision of Canada’s Federal Court illustrates the danger of adopting a mark or name “inspired” by a famous or well-known brand, even when confusion is unlikely. The decision is a cautionary tale, particularly for...more

Whether or not there’s a will, there’s still a way to infringers’ profits in Canadian trademark litigation

Smart & Biggar on 5/14/2020

Late last month, in a landmark decision heralded by brand owners, the U.S. Supreme Court ruled in Romag Fasteners, Inc v Fossil Group, Inc that a plaintiff in a trademark infringement suit is not required to show that a...more

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

Smart & Biggar on 5/12/2020

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

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

Haug Partners LLP on 3/5/2020

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

True or False? Testing the limits of comparative advertising – Petline v Trupanion

Smart & Biggar on 2/22/2020

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

What the amendments to the USMCA mean for Canadian IP law

Smart & Biggar on 1/3/2020

On December 10, 2019, Canada, the United States and Mexico signed the Protocol of Amendment to the Agreement between the United States of America, the United Mexican States and Canada (commonly referred to as the USMCA). The...more

A long and winding road: Canada nears the end of an ambitious project to modernize patent, trademark and industrial design laws

Smart & Biggar on 8/13/2019

On July 30, 2019, Canada acceded to the Patent Law Treaty. This accession marks the near completion of a long and ambitious journey by Canada to modernize its patent, trademark and industrial design laws and to harmonize...more

Trademarks › Trademarks Act

The OQLF’s new guidelines: practical resources for trademarks on products

CIPO’s new Specificity Guidelines for goods and services: what you need to know

Important Amendments to Canadian Trademark Regulations

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

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

Trademarks in 2020: Notable Canadian trademark cases and developments

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

Generic.com — Registrable In Canada?

Businesses Beware: Depreciation in Goodwill Claims Not Bound By Industry Lines

Not all pun and games: Federal Court not amused with cannabis company’s brand parody

Whether or not there’s a will, there’s still a way to infringers’ profits in Canadian trademark litigation

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

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

True or False? Testing the limits of comparative advertising – Petline v Trupanion

What the amendments to the USMCA mean for Canadian IP law

A long and winding road: Canada nears the end of an ambitious project to modernize patent, trademark and industrial design laws

New Amendment to Chinese Trademark Law Seeks to Combat “Bad Faith” Filers

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

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

Trademarks in Canada: A year of change and global harmony

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

New Trademark Laws – Canada | Part I

New Canadian Trademark Rules Go Into Effect June 17, 2019

MarkIt to Market® - November 2018

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

Trademarks › Trademarks Act

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