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 Registrable Three-Dimensional Marks and Utilitarian Function When is a Trademark “Clearly Descriptive”? Place of Origin Acquisition of Rights Get it in Writing! Acquisition of Rig

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

The Combating Counterfeit Products Act  (CCPA) implemented the border enforcement regime. It provides the Canada Border Services Agency (CBSA) with the authority to act against the commercial movement of counterfeit goods at the border and adds new criminal offences relating to counterfeit goods. It also allows rights holders to file a request for assistance with the CBSA, in turn, enabling border officers to share information with them regarding suspect shipments. The regime

Section 22 makes another statutory right available to the owner of a registered trademark in addition to the right to claim infringement....

The Federal Court of Appeal has firmly stated the law concerning the standard of review on appeals to it, the liability of directors and...

A decision of the U.K. Intellectual Property Enterprise Court deals with the copyright in a label of a bottle of wine and an importer’s...

The UK Supreme Court, the U.K. highest court, has confirmed that trademark infringement because of post-sale confusion is a viable cause...

The Facts  The University of British Columbia (UBC) is the registered owner of the trademark SAGE & Design Mark, as shown below: for use...

Generative Artificial Intelligence The US Copyright Office released a Report on Copyright and Artificial Intelligence Part 3: Generative...

The Requirement to Show Use To succeed in action for infringement relying on section 19 or 20 of the Act, the plaintiff must show that...

This month we are continuing the discussion about infringement. There is an additional statutory right to claims under sections 19 and 20...

As stated in a recent decision of the Federal Court, when is a TOYOTA bumper no longer a TOYOTA brand product? According to the...

A recent decision of the U.K. Court of Appeal raises interesting issues concerning industrial design registrations. Safestand Ltd v...

The Background  Often in response to an opposition the applicant causes a separate proceeding(s) to be brought under section 45 of the...