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There’s Something About The 17th – The Tinkering Continues With More Canadian Trademark Practice Changes

The Canadian Intellectual Property Office (“CIPO”) has published amended Practice Notices and a Guidance document on Nice Classification, Divisional Applications and Temporary Appointment of Trademark Agents. Issued January 17, 2020, these changes have immediate effect and have material implications for prosecuting trademark applications at CIPO.

Read more in this Knowledge Bytes article.

 

Significant Canadian Practice Changes: CIPO Limiting Availability of Extensions of Time

The Canadian Intellectual Property Office (“CIPO”) has published a new practice notice limiting an applicant’s ability to obtain extensions of time to respond to an Examiner’s Report. Issued January 17, 2020, the change has immediate effect and has significant implications for prosecuting trademark applications at CIPO.

Read more in this Knowledge Bytes article.

Trademark Interlocutory Injunctions: A POWERful Tool—When Available

As Canadian trademark practitioners know, historically it has generally been difficult to obtain interlocutory (or interim) injunctions in trademark infringement matters. This has been particularly so due to the difficulty in showing irreparable harm, if the injunction were not granted.

As the recent decision of the Alberta Court of Queen’s Bench in Corus Radio Inc. v. Harvard Broadcasting Inc., 2019 ABQB 880 shows, there may be some novel ways to argue irreparable harm, including what is essentially a consideration of ‘lost opportunity’. In this case, a trademark owner was able to convince the Court to enjoin use of similar marks by another party, notwithstanding some 15 years’ absence of use by the owner in the relevant marketplace.

Read more in this Knowledge Bytes article.

Trademark, copyright, or both?

In her article (read here), our colleague Caroline Camp reviews the recent Trademark Opposition Board (the “Board”) case of Pablo Enterprise pte. Ltd. v Hai Lun Tang, 2019 TMOB 54. As Caroline discusses, this case serves as an important reminder that trademark and copyright protection can and do overlap. Moreover, the case confirms that the Board has jurisdiction to assess certain copyright claims within the context of a trademark opposition. Accordingly, if an applicant attempts to register a trademark which includes design elements that are already subject to third party copyright protection (registered or not), the copyright owner may oppose registration on grounds that the applicant is not entitled to use the mark because such use constitutes copyright infringement.

Communication Breakdown: Canadian Quirks to Madrid Trademark Filing System that Foreign Applicants and their Counsel need to know

Canada joining the Madrid international trademark filing system earlier this year came as welcome news to much of the international trademark community. Hidden in that euphoria however, are a couple of Canadian quirks that are likely to trip up unwary applicants and their foreign trademark Counsel.

This Knowledge Bytes article, reviews the limited Canadian Intellectual Property Office (CIPO) communications that will be sent to the World Intellectual Property Office (WIPO) and to foreign representatives of applicants who designate Canada in their applications for international registration. The bottom line is that a resident Canadian trademark agent should be appointed for all such applications, so that important communications from CIPO not go astray or languish, unattended, for an undue period of time.

Distinctly (not) distinctive

The Supreme Court of Canada recently denied leave to appeal from the Federal Court of Appeal’s (the “FCA”) decision in Sadhu Singh Hamdard Trust v. Navsun Holdings Ltd., 2019 FCA 10 (CanLII). Caroline Camp writes about the implications of the case. Most interesting is that the FCA confirmed that intervening use of a mark by a third party, even if that use amounts to infringement of a registered trademark, can be sufficient to cause the registered mark to lose its distinctiveness and therefore become unenforceable. So the mantra “use it or lose it” is actually “use it and enforce it or lose it” in Canadian trademark practice. Read her complete article here.

A look back: What you need to remember from 2018 in trademark law

As summer comes to a close, it’s a good time to reflect on some of the significant case law developments that occurred in 2018, which have, and continue to have, an impact on Canadian trademark law and practice. Our colleague Scott Lamb is a contributor to CLE BC’s perennially anticipated Annual Review of Law & Practice, writing the Trademarks chapter. Key litigation developments from last year are succinctly summarized in an excerpt from Scott’s chapter here.