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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

This month, we continue our discussion and review the basic principles concerning protection under the Industrial Designs Act. Appeal To and Be Judged Solely by the Eye The Act provides that “design or industrial design” means features of shape, configuration, pattern or ornament and any combination of those features that, in a finished article, appeal to and are judged solely by the eye. To be protected a design must appeal to and be judged solely by the eye. This requiremen

Since our last report there have been several developments in copyright, industrial design and breach of confidence. This update highlights policy shifts and notable decisions. AI-Canada's National Artificial Intelligence Strategy On June 4, 2026, Canada released an additional report confirming that Canadians must be open to the enormous opportunities in AI but must also be candid about the real concerns. AI raises hard questions about job security, privacy, sustainability, s

In Anne Frank Fonds v Anne Frank Stichting Case C-788/24 the Court of Justice of the European Union, the highest court of the EU, considered the right to make a work available on a website and the impact of technical protection measures implemented to restrict access to the work. The decision should be helpful to online content providers. The Right to Make Available The Copyright Act includes as one of the rights which make up copyright, the sole right in the case of any lit

A recent decision of the General Court of the European Union dismissed Croc’s appeal from a decision invalidating its EU design registration for its highly recognized clog. Crocs, Inc. v EUIPO, General Court, Case T-228/25. The Facts A third party filed an application with the European Intellectual Property Office (EUIPO) for a declaration of invalidity of the EU design registered by Crocs, Inc. for a design for footwear. The initial drawing of the design is set out below: Th

The principal issue seems to have become whether the defendant's operation of the TEMU platform amounted to copyright infringement or was protected by the hosting defence. On a more practical level, title to the copyrights in issue was a key factor. The Facts The plaintiffs are part of a group of companies operating an online fashion and lifestyle retail business through websites featuring the SHEIN brand. Shein-branded garments in issue in the case were procured under a su

In an action for trademark infringement an Associate Judge of the Federal Court allowed the defendant’s request to protect certain confidential information by means of a “solicitor’s eyes only” (“SEO”) designation. The designation would prevent the plaintiff from accessing specified confidential information produced in the litigation. Northern Reflections Ltd. v Artizia Inc. 2026 CanLII 71256 The Facts The plaintiff alleged that the defendant infringed its registered tradema

Protecting a design by registration may improve the competitiveness of the business since the registration can prevent the design from being copied and imitated by competitors. In addition, the design is a business asset which may become valuable and can be freely assigned or licensed. The Industrial Design Act has been amended to make it consistent with the Geneva (1999) Act of the Hague Agreement Concerning the International Registration of Industrial Designs and to give th

In our July blog, we discussed the importance of product shape and appearance as tangible elements of a brand. In many markets, product shape is a key component of brand identity. Consumer perception may be strongly influenced by the aesthetic appearance of the product and its packaging. The primary methods of protecting product shape and appearance are registration under the Trademarks Act as a three-dimensional shape or a mode of packaging goods, registration under the Indu

A decision of the EU General Court concerns the registrability of a three-dimensional trademark for packaging where the relevant legal issue was whether the shape consisted exclusively of features necessary to obtain a technical result. The General Court is the lower of the two Courts that make up the Court of Justice of the European Union. The Trademark The Applicant filed a trademark application for following three-dimensional sign: in association with packaging containers

In a previous article, we discussed the requirement that parties obtain leave before filing additional evidence on an appeal from the Registrar of Trademarks to the Federal Court. Federal Court Clarifies Leave Requirement for New Evidence in Trademark Appeals. The Federal Court has now applied the same test to refuse leave. The Test for Filing New Evidence In one of the first decisions to consider this requirement, the Court concluded that a more flexible approach to leave

Pleadings define each party’s case. They frame the litigation and set out the material facts said to support the causes of action or defences presented. A party may move to strike an opposing pleading where it fails to disclose a reasonable cause of action or a tenable defence. The Facts HBI Canada manufactures and wholesales smoking accessory products. It distributes its products (the “HBI Canada Products”) to authorized distributors, resellers, dealers, and retailers, who

Last July in a blog post A Sweet Case we dealt with a decision of the Federal Court which has now been resolved. GRC Food Services Ltd. v. Chocoladefabriken Lindt & Sprüngli AG 2026 FC 594. The Facts The Applicant filed a trademark application for the MASTER CHOCOLAT mark for use with chocolates, chocolate confectionary and other goods, and the operation of a business dealing in the sale of this type of product. The Opposition Chocoladefabriken Lindt & Sprüngli Ag (Lindt) opp

Product shape and appearance are tangible elements of a brand. Perception of the brand is strongly influenced by the aesthetic appearance of the product and its packaging. Both elements can affect the image and values associated with the brand, as well as serving to differentiate the brand from other brands. A familiar example of a brand being expressed through product shape is the COCA-COLA® bottle, which is one of the world’s most widely recognized product shapes. The effe

There are numerous potential defences to an action for passing off. Some of the common defences are described below. The Lack of Distinctiveness If a plaintiff does not show that the “get-up” under which its goods or services are offered to the public is recognized by the public as distinctive of its goods or services, it will not succeed. Further if a defendant uses the characteristic features of the get-up commonly used in the relevant trade this may be a defense to a claim

In January of 2025, we discussed the Federal Court’s decision in Auberge & Spa Le Nordik Inc. v. Therme Development (CY) Ltd., 2024 FC 1765. In this case, the Applicant had sought to strike specific services from the registrations for THERME, THERME GROUP, THERME WOMANS HEAD LOGO and THERME WOMAN LOGO owned by Therme Development (CY) Ltd. (TD), mainly related to health spa resort services. Clearly Descriptive A trademark is not registrable if whether depicted, written or soun

Since our last report there have been a number of developments in copyright, industrial design, and breach of confidence law. This update highlights notable decisions, legislative trends, and policy shifts shaping this environment. AI Developments a) Canada The government ran a further 30-day public consultation to shape a renewed AI strategy. Input was sought from October 1 to 31, 2025. An AI Strategy Task Force was named. The Task Force was composed of representatives from

How much evidence is enough to win a passing off case—particularly where the parties are notforprofit organizations and the alleged goodwill arises from a single event? In Federation of Asian Canadians Toronto v. Asialicious Holdings Inc., 2026 FC 495, the Federal Court confirmed that credible, well-documented early use can be decisive, even where damages are modest. The Facts Federation of Asian Canadians Toronto (FACT) is a not-for-profit corporation created in connection w

Our webinar took place on May 5, 2025. If you missed it, here's a link to a recording. To stay informed visit my blog and subscribe to my bi- monthly newsletter discussing the latest decisions and law concerning trademarks and copyright. If you have questions, please contact me at jmckeown@LN.Law John McKeown Loopstra Nixon LLP. 130 Adelaide St W Suite 2800Toronto, Ontario, M5H 3P5Canada jmckeown@LN.Law 437 290-5960 This article is of general nature and is not intended t

In prior posts, we reviewed the core elements a plaintiff must establish to succeed in a passing-off claim. This month, we examine those elements in greater detail. Goodwill In any passing-off action, the plaintiff must satisfy the Court that it has goodwill in the relevant indicia of trade—whether a brand name, trade name, or other distinguishing feature—such that the relevant public associates goods or services offered in connection with those indicia with the plaintiff. In