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.
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
The Utility of Recent Force Majeure Amendments to Canadian Trademark Law
In 2014 and 2015, Canada passed a number of amendments to its Trademarks Act allowing for extensions of time due to unforeseen circumstances. These amendments were driven, in part, by the Northeast Blackout of 2003, in which millions of people (including 10 million in Ontario) lost power for two or more days. As a result, some IP practitioners were unable to meet deadlines falling on those days – prompting calls for amendments allowing extensions for “force majeure” events to the Patent Act, the Trademarks Act, and the Industrial Design Act.
Although these amendments were enacted more than a decade after this blackout, these “force majeure” provisions have become incredibly relevant in the context of unprecedented challenges posed by the global COVID-19 pandemic.
The words “force majeure” do not appear in the Canadian Trademarks Act. However, at least three provisions now afford trademark owners and the Registrar of Trademarks some flexibility in addressing the effects of so-called “acts of God” under Canadian law—events beyond a party’s control which make performance of their obligations impossible. The relevant provisions:
- allow for an extension of time to claim priority for a period of up to seven days in certain circumstances (section 34(5));
- allow for an extension of time to pay renewal fees for a period of up to seven days in certain circumstances (section 46(5)); and
- allow the Registrar to designate time periods in which deadlines are automatically extended to the next day outside of the time period, on account of unforeseen circumstances and when it is in the public interest to do so (section 66(2)).
This last provision came into force on November 5, 2018. Less than two years later, the Registrar exercised this power to designate March 16, 2020 to March 31, 2020 as days during which any deadline is automatically extended—in this case, to April 1, 2020. The Registrar may further extend this period, but at the time of writing we have no confirmation in this regard.
Parties wishing to rely upon the prior two provisions ought to refer to the Canadian Intellectual Property Office’s Practice Notice “Extensions of time due to force majeure for priority and renewal”, published June 17, 2019. Notably, the Practice Notice makes specific reference to “virus/bacterial epidemic outbreaks” as an example of a potential force majeure event.
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:
Read more