trademarks

CIPO Further Extends Trademark Deadlines until at least May 1, 2020 due to COVID-19

By In CIPO, Legislation, Trademark Practice

As noted earlier, the Canadian Intellectual Property Office had extended deadlines falling between March 16, 2020 and March 31, 2020 automatically until April 1, 2020. In light of the ongoing disruption and uncertainty due to COVID-19, CIPO has now further extended that earlier automatic extension.

All deadlines falling between March 16, 2020 and April 30, 2020 will now automatically be extended until at least May 1, 2020. Further extensions may be announced by CIPO, based on how the situation evolves in the coming weeks. CIPO has also indicated that while it remains open, significant delays should be expected for all CIPO services.

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 March 27, 2020), can be found here.

CIPO Extends Trademark Deadlines until at least April 1, 2020 due to COVID-19

By In CIPO, Legislation, Trademark Practice

On account of the COVID-19 situation, the Canadian Intellectual Property Office has just announced that all deadlines falling between March 16, 2020 and March 31, 2020 will automatically be extended until at least April 1, 2020. In light of the uncertainty around the evolving situation, the period for automatic extensions may be further extended.

CIPO’s complete announcement, first made March 17, 2020 (and last updated March 19, 2020), can be found here.

Trademark Interlocutory Injunctions: A POWERful Tool—When Available

By In Branding, Case Law, Litigation, Protection & Enforcement

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?

By In Case Law, Trademark Oppositions

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.

Distinctly (not) distinctive

By In Case Law, Litigation, Protection & Enforcement

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

By In Case Law, Litigation

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.

LIVE is dead in the water – The Federal Court tackles another thorny trademark use decision

By In Case Law, Litigation, Protection & Enforcement, Registration

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.“