The federal government is moving quickly towards legalising the possession and consumption of cannabis for recreational purposes. Although Canada's cannabis industry is already 'overgrown' with many licensed and unlicensed producers all vying for consumers' attention with different brands and strains of cannabis, only a few have taken advantage of the exclusive rights afforded producers under the Plant Breeders' Rights Act.
The federal government is moving quickly towards legalising the possession and consumption of cannabis for recreational purposes. However, Canada's cannabis industry is already 'overgrown' with both licensed and unlicensed producers, all vying for consumers' attention. Brand owners, start-ups and so-called 'ganjapreneurs' in Canada's cannabis industry face a number of unique challenges and should strategise accordingly – ideally before launching a cannabis brand in Canada.
The Canada Border Services Agency, the federal organisation responsible for policing Canada's borders, recently issued a customs notice to advise the public and rights holders that its Border Watch hotline now accepts information and tips on dangerous counterfeit or pirated goods that are destined for Canada. This hotline is yet another tool available to rights holders that wish to protect their brands in Canada.
The recent Federal Court decision in SuperShuttle International, Inc v Fetherstonhaugh & Co is a helpful reminder to registered rights holders of the dangers of not using their trademarks in association with the specific goods or services covered by their registrations. Rights holders should review regularly both their trademark portfolios and the services provided, to ensure that their trademark portfolios adequately capture and protect such services.
The strictness of US law concerning trademark use in connection with services contrasts with a more liberal view in Canada. While Canadian courts traditionally applied a strict test requiring both advertising and actual performance of the services in Canada in order to find use, more recently they have held it to suffice if the brand owner is merely ready, willing and able to provide the advertised services in Canada.
Among the amendments to the Trademarks Act introduced by Bill C-31 is the repeal of Section 14 of the act, which provides non-Canadian brand owners with a material advantage over Canadian brand owners. Once the changes are in force, both Canadian and non-Canadian applicants will need to file evidence that their mark has actually become distinctive, and not merely that the mark is "not without distinctive character".
The Trademarks Act prohibits a person from adopting a trademark consisting of, or so nearly resembling as to be likely to be mistaken for, "any matter that may falsely suggest a connection with any living individual". The recent Federal Court decision in Jack Black LLC v Attorney General of Canada confirms that the standard to be met in order to sustain an objection on this basis is extremely high.
The Federal Court has recognised that Harley-Davidson may sell its Screamin' Eagle brand of clothing in Canada, notwithstanding another party's trademark registration for SCREAMING EAGLE. The decision demonstrates that a famous house mark may help to insulate an allegedly confusing sub-brand from creating a reasonable likelihood of confusion.
Under the Trademarks Act, only an "interested person" or a "person interested" in a matter at issue may apply to the Federal Court for certain remedies. The court recently ruled on what constitutes an 'interested person' within the meaning of Section 53.2 of the act in Victoria's Secret Stores Brand Management, Inc v Thomas Pink Limited.
The Federal Court's recent decision in Trans-High Corporation v Hightimes Smokeshop and Gifts Inc showcases a summary and expeditious procedure for enforcing trademark rights in Canada. The entire proceeding, from service of the notice of application to the court's decision, took only five months.
Certification marks may be used to identify wares and services that are of a certain defined standard. Such marks are an efficient way to distinguish the superior craftsmanship or quality of traders' wares and services from those of competitors. However, Canadian trademark law contains a number of important peculiarities regarding certification marks of which applicants and registrants alike should be aware.