Maintained by Clark Wilson LLP

No Going Back – Canada Formally Accedes to Singapore, Madrid and Nice Treaties

The Canadian Intellectual Property Office (CIPO) has announced that as of March 17, 2019, Canada has formally acceded to the Singapore Treaty, the Madrid Protocol and the Nice Agreement.  All three of these treaties will come into force in Canada on June 17, 2019.

According to CIPO “As of that date, trademark owners in Canada will be able to apply for trademark protection in more than 100 jurisdictions through a single application, in one language, with one set of fees and in one currency.”

June 17, 2019 will also be the coming into force date for numerous other significant changes to Canadian trademark practice.  Please see our recent post which explains some of the most important changes.  These are exciting times for trademark owners and their legal Counsel in Canada!

Royal Assent Received for Most Recent Amendments to Canada’s IP Legislation

Bill C-86, the Budget Implementation Act, 2018 (the “Act”), received Royal Assent on December 13, 2018, after moving through Parliament at a blistering pace. In all, less than two months elapsed between the tabling of the bill and its passage.

These amendments will affect the Trade-marks Act, the Patent Act and the Copyright Act.  In addition, a new regulatory body for Canadian Patent and Trade-mark Agents will be created pursuant to the College of Patent and Trade-mark Agents Act. 

The most significant amendments to Trade-marks Act are as follows:

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Delays Nourish Desires: Canada’s New Trademark Laws Come Into Force June 17, 2019

Earlier today, the Canadian Intellectual Property Office announced that long-anticipated amendments to Canada’s trademark laws will come into force on June 17, 2019.  It also published a new set of Trademarks Regulations, which will support those amendments.

First introduced in June of 2014, the amendments contain the most significant changes to Canada’s trademark law in decades, (discussed in earlier posts) including:

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Parliament Tables Proposed Amendments to the Trade-marks Act

On October 29, 2018, the Canadian Parliament tabled, in a surprise to many practitioners, the Budget Implementation Act 2 (Bill C-86), which would amend, among other things, the Patent Act, Trade-marks Act, and Copyright Act. In addition, the bill contains provisions enacting the College of Patent and Trade-mark Agents Act .

Proposed amendments to the Trade-marks Act include adding bad faith as a ground of opposition and expungement; requiring use as a precondition of alleging infringement in some circumstances; adding some restrictions to the term of official marks; giving the Registrar additional powers to govern the process of opposition proceedings; and requiring leave to file additional evidence with the Federal Court on appeal from a decision of the Registrar.

David Bowden

No Hotel in Canada? No Problem – Trademark Owner Maintains Trademark Registration With Hotel Services

The Federal Court of Canada (the “Court”) recently released its decision in Hilton Worldwide Holdings LLP v Miller Thomson, 2018 FC 895. In the decision underlying this appeal, the Registrar expunged the Canadian trademark registration for WALDORF-ASTORIA, owned Hilton Worldwide Holdings LLP (“Hilton”), on the basis of non-use. The Court allowed the appeal, and found that Hilton had proven the requisite use of its trademark in Canada, notwithstanding the fact that it did not operate a physical hotel in Canada.

Under the Canadian Trade-marks Act (the “Act”) a trademark is deemed to be used in association with services if it is “used or displayed in the performance or advertising of those services.” Courts have found that this statutory provision includes a condition that the services themselves must be performed or delivered inside Canada, and the mere advertisement of services in Canada does not constitute use within the meaning of the Act.

For trademarks associated with hotels, the Registrar has interpreted this condition restrictively. The Registrar has issued a number of recent decisions which found that the operation of a “bricks and mortar” hotel in Canada is necessary to establish the use of a trademark for “hotel” or “hotel services” in Canada (see, for instance, Bellagio Limousines v Mirage Resorts Inc, 2012 TMOB 220; Stikeman Elliot LLP v Millennium & Copthorne International Limited, 2017 TMOB 34; and Ridout & Maybee LLP v Sfera 39-E Corp, 2017 TMOB 149).

In contrast to the Registrar’s decisions involving “hotel services”, the Court has increasingly recognized circumstances in which companies operating outside of Canada can establish use of their trademarks in association with services directed to consumers in Canada. In HomeAway.com v Hrdlicka, 2012 FC 1467, the Court held that the appearance of a trademark on a computer screen via a website accessed in Canada, regardless of where the information may have originated from or is stored, constitutes use and advertising of the mark in Canada. The evidence in HomeAway.com also showed that people in Canada used the service at issue to post available rental properties located in Canada, and that these postings were available online to customers in Canada.

In allowing the appeal brought by Hilton, the Court focused on the ordinary understanding of the term “hotel services”, which would include ancillary services, such as reservation and booking services. Because these ancillary services would be included in “hotel services”, the Court found the Registrar erred in equating these services with “the operation of a hotel” – services which can only be performed at a physical hotel location. The ancillary services, in contrast, go beyond the physical “bricks and mortar” hotel, and the evidence showed that Hilton had performed such services in Canada, despite operating a physical hotel in another country.

Moreover, the type of hotel services which can be delivered online had greatly expanded since Hilton’s registration issued. The scope of the registration, according to the Court, must be considered in light of the development in online commerce as it relates to the ordinary commercial understanding of “hotel services.” Technological developments which occurred post-registration meant that Hilton could provide services online to Canadians who benefited from them. This also supported Hilton’s claim that it used the mark in Canada.

The decision forms part of a growing trend of Canadian trademark decisions which recognize that companies based entirely outside of Canada can offer services in Canada, and that the performance of those services will constitute use in Canada of the trademarks associated with such services.

David Bowden

Canadian Trademarks Law: 2017 in Review

Our very own Scott Lamb’s annual take on major developments in the world of Canadian trademark law has been recently published in the authoritative Annual Review of Law & Practice. A copy of Scott’s insightful update can be found online here. Notably, one of the biggest highlights from 2017 were the publication of draft regulations in relation to the long awaited coming into force of significant amendments to the Canadian Trademarks Act. These were passed back in 2014 and it is now anticipated that these will come into force in 2019 (maybe).

2018 Global 500 Brands: Who Takes Prime Spot?

February is the month Canadians look to for signs winter may come to an early end. It’s also the month when trademark practitioners around the world eagerly await Brand Finance’s Global 500 report. With an impressive 42% increase in brand value, AMAZON jumped from 3rd spot last year, to take the lead this year. Staying steady at number 2 was APPLE, seeing a 37% increase in brand value. The former leader, GOOGLE, now comes in 3rd, with a relatively modest 10% increase in brand value (it’s affiliated YOUTUBE brand, however, saw a 114% increase, vaulting from number 112 to 42!). While there was movement within the top ten brands, as a group these remained the same as last year, highlighting the staying power of already dominant brands. The top brands remained principally tech-focused and for the first time since the Global 500 study began, the top 5 were all technology brands. Rounding out the top ten in 2018 were SAMSUNG, FACEBOOK, AT&T, MICROSOFT, VERIZON, WALMART and ICBC. As is evident, United States-based brands dominated, but Chinese brands continue to make strong gains: in 2008 they accounted for a mere 3% of the total brand value (lagging far behind other countries), and in 2018 they account for 15%, coming in second to the United States (48% in 2008 to 43% today). According to the report, the strongest brand of the year was DISNEY (ranking 31 overall in value), while the top Canadian brand by value was RBC at number 107.