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.
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.
In a recent Federal Court Trial Division decision, the trademark registration for LIVE, registered in association with, among other things, hotel, entertainment and advertising services, was expunged for non-use during the relevant three year period. The Court reviewed a number of conflicting decisions on the use of marks in Canada in the context of non-use cancellation proceedings, where the primary service is performed outside of Canada – for example, the relevant hotel or entertainment establishment is physically located outside Canada – but some ancillary or related aspect of the services could be said to be performed in Canada – for example reservations for the hotel or for tickets to the entertainment venue could be made by Canadians while physically located in Canada.
The Court reiterated that in order for there to be use of a mark in Canada, it is essential that some aspect of the services must be offered directly to Canadians or performed in Canada and that it must be demonstrated that people in Canada obtained “some tangible, meaningful, benefit” from the use of the Mark in association with the registered service. In expunging the registration, the Court found that “simply holding a reservation for a hotel in the US is not a tangible and meaningful benefit enjoyed in Canada, despite that it may ensure that a room will be available upon arrival. The tangible benefit occurs only once the person leaves Canada and travels to the US and fulfills the reservation.” A similar conclusion was arrived at in relation to entertainment services. The advertising services were not performed for any third party, meaning there was no trademark use.
Barring an appeal, the decision is noteworthy as it appears to be counter to a recent Federal Court decision involving hotel services provided in very similar circumstances. In this case, the Judge distinguished the earlier decision, on the basis that “Unlike in Hilton, there are no rewards points that can be used in Canada. …Rewards points could not be earned in Canada or redeemed in Canada. There is no evidence of a tangible, meaningful benefit enjoyed in Canada from making an online reservation.“
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!
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:Read more
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.
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 Trade–marks Act. These were passed back in 2014 and it is now anticipated that these will come into force in 2019 (maybe).