Blog

In this blog we deal with recent developments concerning trademarks, copyright and other laws that have a direct impact on branding and marketing. I have written numerous case comments concerning the leading decisions as well as other short articles. A brief index of the material follows: TRADEMARKS Competition Act Drip Pricing and Misleading Representations: Lessons from Cineplex v. Commissioner of Competition Actions for Infringement Checklist of Matters to Consider Before

Understanding brand management and its intersection with Canadian laws is vitally important to your business. Join John McKeown, Partner at Loopstra Nixon, on May 5, 2026, for a webinar on the current and emerging legal considerations in brand management.   This session coincides with the release of the 6th edition of Brand Management in Canadian Law , which explores these topics in greater detail.Topics discussed will include:· Measuring, enhancing and protecting brand value

The decision to commence legal proceedings should not be made on an ad hoc basis. Proper due diligence and early information gathering allow for a better assessment of the strengths and weaknesses of the prospective plaintiff’s case and help shape an effective litigation strategy—including whether non-litigation options should be considered.    1. Identify the Rights in Issue  - Is the claim based on a registered trademark(s), common law rights, copyright, neighbouring rights

The Facts  Promotion in Motion, Inc. (PIM), PIM sought to register the trademarks SWISSKISS and SWISSKISS & Design as shown below for in association with “Chocolate of Swiss origin” collectively, the “SWISSKISS Trademarks” .We discussed the decision of the Federal Court Judge in the blog post Not a Good Day for the Use of Survey Evidence In Trademark Cases The Opposition Hershey Chocolate & Confectionery LLC (Hershey) opposed PIM’s trademark applications based on several of

Generally, advertising law in Canada is governed by the Federal Competition Act. The purpose of the Act is to maintain and encourage competition in Canada so as to promote the efficiency and adaptability of the Canadian economy. The provisions of the Act directed at misleading representations aim to improve the quality and accuracy of marketplace information and discourage deceptive marketing practices. The Act applies to all kinds of advertising including online representati

A decision of the Federal Court confirms that a lack of inherent distinctiveness was the most important element in determining whether the marks in issue were confusing.  996660   Ontario Ltd. v. Falesca Importing Ltd.  2026 FC 114 The Facts The applicant filed a trademark registration for the trademark FALESCA MOLISANA, based on proposed use in association with Italian food products. The opponent opposed the application primarily on the basis that the FALESCA MOLISANA tradem

The Facts The Appellant appeals from a decision of the Trademarks Opposition Board, refusing its application for registration of the trademark FILTER DESIGN. The FILTER DESIGN trademark consists of the “positioning of a sign” in the form of a pattern of diamond-shaped apertures on the surface of certain air filters. The Board refused the application on grounds that the diamond-shaped apertures were dictated primarily by a utilitarian function, and the trademark was unregistra

The Codification The Act contains a statutory codification of the tort of passing off. The subsections provide that no person shall: 7(b) direct public attention to his goods, services or business in such a way as to cause or be likely to cause confusion in Canada, at the time he commenced so to direct attention to them, between his goods, services or business, and the goods, services or business of another; 7(c) pass off other goods or services as and for those ordered or re

Generally, advertising law in Canada is governed by the Federal Competition Act. The purpose of the Act is to maintain and encourage competition in Canada so as to promote the efficiency and adaptability of the Canadian economy. The provisions of the Act directed at misleading representations aim to improve the quality and accuracy of marketplace information and discourage deceptive marketing practices. The Act applies to all kinds of advertising including online representati

This month we are discussing claims for passing off. It is a relatively flexible claim which can be helpful to an aggrieved plaintiff. Passing Off A claim for passing off is a tort and is a Judge-made concept which is a part of the common law. The claim has a long history. Originally the claim was like the tort of deceit and required a misrepresentation concerning the origin of the goods which was calculated to deceive purchasers and divert business from the plaintiff to the

The past year has brought significant changes and clarifications in Canadian trademark law. This article highlights the most notable developments providing insights to help trademark owners and practitioners navigate the shifting landscape.  Acquisition The Trademarks Act  does not provide a form of evergreening based on an abandoned application that does not reflect any use of the mark Sea Tow Services International Inc. v. C-Tow Marine Assistance Ltd  2025 FC 27 Ltd  2025 F

The past year has brought a wave of developments in copyright, industrial design, and breach of confidence   law, driven in part by the rapid evolution of generative AI and shifting regulatory landscapes. This update highlights notable decisions, legislative trends, and policy shifts shaping this environment in 2025. Generative Artificial Intelligence The US Copyright Office released a Report on Copyright and Artificial Intelligence Part 3: Generative AI Training in a prepub

In Novartis AG v. Biogen  2024 FC 52 the plaintiff successfully sued for infringement of its registered trademark and passing off for a pharmaceutical preparation for ophthalmology and pharmaceutical preparations for prevention and treatment of ocular disorders and diseases.  The Appeal Biogen Inc. appealed to the Federal Court of Appeal. 2025 FCA 212 They argued in substance that the application judge erred in her “likelihood of confusion” analysis: (1) by treating patients

The Superior Court of Justice has issued an important decision concerning allegations of infringement asserted against AI companies. The decision may help rights holders. Toronto Star Newspapers Limited v. OpenAI Inc. , 2025 ONSC 6217 The plaintiffs, including several Canadian new media companies, sued a number of OpenAI entities, including operating companies and the parent /holding companies of the operating companies. The OpenAI companies were located and served with the s

An Overview We are continuing our discussion of the Combating Counterfeit Products Act  (CCPA) which has implemented the border enforcement regime.  As previously noted, the new regime is a great improvement over the previous statutory provisions but requires a relatively large investment of time and resources in proceedings in the courts and triggers potential exposure for the storage and handling charges for the detained goods—and, if applicable, for the charges for destroy

Introduction: Border Enforcement under the CCPA We are continuing our discussion of the Combating Counterfeit Products Act (CCPA) which has implemented the border enforcement regime. As previously noted, the new regime is a great improvement over the previous statutory provisions but requires a substantial investment of time and resources in proceedings in the courts and triggers potential exposure for the storage and handling charges for the detained goods—and, if applicable

When two of Canada’s largest providers of inpatient and outpatient mental health and addiction services clashed over the use of the term “GUARDIANS,” the plaintiff sought an interlocutory injunction from Federal Court. This decision highlights the formidable legal hurdles applicants face. Schlegel Health Care Inc. v. Edgewood Health Network Inc. 2025 FC 1639 The Background of the Dispute  The plaintiffs and the defendant are business competitors and are the two largest provid

The Federal Court considered whether the Trademarks Opposition Board was wrong to find that the nearly identical trademarks CHEFS-OWN for bean sprouts and CHEF’S OWN for sauces and seasonings could co-exist because the channels of trade and the nature of the goods were sufficiently dissimilar that confusion was unlikely?  Yat Sun Food Products Ltd. v. Griffith Foods International Inc . 2025 FC 1688 Background of the Dispute  The Applicant owns the registered trademark CHEFS-O

Background In a previous article Section 45 Proceedings and a Change in the Ownership of the Mark we dealt a decision of the Federal Court that considered the impact of the special circumstances exception in section 45 proceedings where there has been a change in the ownership of the mark. Subsection 45(1) allows the Registrar to require that the registered owner of a trademark furnish to the Registrar evidence of use of the mark within the three-year period immediately pre

The Federal Court has confirmed that in the absence of new material evidence   a determination of the T.M.O.B. will frequently be reviewed in a deferential fashion. The Facts Sandals Resorts International 2000 Inc. (Sandals) filed a trademark application for THE WORLD’S ONLY SIX STAR LUXURY INCLUDED VACATION & Design (Mark) shown below. advice should be sought about your specific circumstances.  G6 Hospitality IP LLC (G6) opposed the application. It owns trademarks and trade