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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

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

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