Maintained by Clark Wilson LLP

Wheat Kings and Alleged Wrongdoings: The Tragically Hip Sues Mill Street over “100th Meridian” Beer

On February 9, 2021, THE Incorporated – better known as “The Tragically Hip” or “The Hip” – filed a Statement of Claim (the “Claim”) in Canada’s Federal Court, alleging trademark infringement, copyright infringement, passing off, and other causes of action against Mill Street Brewing. The Claim has been previously reported in Canadian media.

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Bricks and Mortar or Online Order? Federal Court of Appeal decides what Constitutes Trademark “Use” in Association with Hotel Services

Over the last few decades, Courts in Canada have grappled with whether “hotel services” and “motel services” can be performed in Canada in the absence of physical hotel premises in the country. In its decision in Hilton Worldwide Holding LLP v. Miller Thomson LLP (2018 FC 89) (“Hilton Worldwide FC”),  the Federal Court of Canada (the “Court”) found that, in some circumstances, such services can indeed be performed in Canada, even in the absence of a physical hotel in Canada. On appeal to the Federal Court of Appeal (the “Court of Appeal”), in  Miller Thomson v Hilton Worldwide Holding LLP, (2020 FCA 134) (“Hilton Worldwide FCA”), the Court of Appeal agreed and affirmed most of the earlier findings of the Court. Read more

CIPO Issues Blanket Extension to Trademark Deadlines (Again): Until August 31, 2020

After previously announcing what was supposed to have been the final (for now) blanket extension of time, the Canadian Intellectual Property Office has made yet one further automatic extension, effectively until August 31, 2020. This is to account both for continuing COVID-19 disruptions and certain critical maintenance to CIPO’s systems, which was to occur at the end of the previous (final) automatic extension and would have meant CIPO’s online and fax services would have been unavailable for a period.

These extensions now effectively cover deadlines falling between March 16, 2020 and August 30, 2020. No further automatic extensions are anticipated in the short term, though should the evolving situation with the pandemic warrant, we may see these again. As we noted when CIPO made its last announcement, further extensions of time may still be available on a case-by-case basis, due to ‘exceptional’ circumstances that are ‘beyond the control of the person concerned’ (in addition to any standard extensions of time that may be available).

As a best practice, we recommend still meeting the original deadlines for all Canadian trademark matters, where possible. Clark Wilson LLP’s trademark group remains accessible and available to assist, and is working to meet such deadlines where we have timely instructions.

CIPO’s latest announcement on these automatic extensions, first made March 17, 2020 (and last updated August 19, 2020), can be found here.

CIPO Issues Notice of Final Blanket Extension (for now)

The Canadian Intellectual Property Office has just published notice of its decision to further extend the “designated days” period on account of continuing COVID-19 disruptions. Since the onset of the pandemic in Canada in early March, CIPO has issued nine such notices, effectively creating a “blanket extension” of all CIPO deadlines arising since then.  This latest extension will expire on August 21, 2020, which means all deadlines falling between March 16 and August 23 will now come due on August 24—assuming, of course, they haven’t already been addressed.

In a departure from its prior notices, CIPO has indicated that this is the last blanket extension it intends to grant for the time being. However, CIPO’s standard extension practice notice does provide for extensions of time in ‘exceptional’ circumstances that are ‘beyond the control of the person concerned’, so it may be possible for applicants to obtain further extensions on individual matters. Some explanation of unique hardship, however, will likely be necessary to justify the extension request; pointing merely to the existence of the pandemic will likely not suffice. Careful, case-by-case consideration should be given to the deadline faced to ensure the appropriate response.

CIPO Again Extends Trademark Deadlines Due to COVID-19: Until August 10, 2020

Now for the eight time, the Canadian Intellectual Property Office has again extended its earlier automatic extensions on account of continuing COVID-19 disruptions, until at least August 10, 2020 (the previous and seventh extension discussed here). These extensions now effectively cover deadlines falling between March 16, 2020 and August 9, 2020. Yet again, CIPO has not indicated this is the last automatic extension, and therefore further extensions are likely though not certain.

As a best practice, we recommend still meeting the original deadlines for all Canadian trademark matters, where possible. Clark Wilson LLP’s trademark group remains accessible and available to assist, and is working to meet such deadlines where we have timely instructions.

CIPO’s latest announcement on these automatic extensions, first made March 17, 2020 (and last updated July 15, 2020), can be found here.

Yet Another CIPO Extension to Trademark Deadlines Due to COVID-19: Until July 20, 2020

In light of the continuing COVID-19 disruptions, the Canadian Intellectual Property Office has again extended its earlier automatic extensions, now until at least July 20, 2020 (the previous and sixth extension discussed here). These extensions now effectively cover deadlines falling between March 16, 2020 and July 19, 2020. Again, CIPO has not indicated this is the last automatic extension, and therefore further extensions are likely though not certain.

As a best practice, we recommend still meeting the original deadlines for all Canadian trademark matters, where possible. Clark Wilson LLP’s trademark group remains accessible and available to assist, and is working to meet such deadlines where we have timely instructions.

CIPO’s latest announcement on these automatic extensions, first made March 17, 2020 (and last updated June 30, 2020), can be found here.

Sixth CIPO Extension to Trademark Deadlines Due to COVID-19: Until July 6, 2020

Once again, in light of COVID-19 disruptions, the Canadian Intellectual Property Office has extended its earlier automatic extensions until at least July 6, 2020 (the previous extension discussed here). These extensions now effectively cover deadlines falling between March 16, 2020 and July 5, 2020. CIPO has not indicated this is the last automatic extension, and therefore further extensions are likely though not certain.

As a best practice, we recommend still meeting the original deadlines for all Canadian trademark matters, where possible. Clark Wilson LLP’s trademark group remains accessible and available to assist, and is working to meet such deadlines where we have timely instructions.

CIPO’s latest announcement on these automatic extensions, first made March 17, 2020 (and last updated June 9, 2020), can be found here.