Canada's trademarks profession had an exciting 2018. The long-awaited changes to the Trademarks Act were announced, many of which will bring Canada into line with the rest of the world. In addition, further unexpected legislative developments were announced, which will significantly affect trademark protection.
A number of trademark cases were heard by the Canadian courts in 2018, including a decision on a motion for summary judgment brought by Duracell, a decision on whether Imperial Tobacco Canada Limited's trademarks were confusing in light of new survey evidence filed on appeal and a decision on whether retail store services require a brick-and-mortar establishment or direct delivery of products to Canada to constitute use of a trademark in Canada.
Section 22 of the Trademarks Act, depreciation of a registered trademark's goodwill, is a potentially powerful yet generally underused weapon for dealing with damaging comparative advertising campaigns. Dilution-type claims to prevent comparative ads displaying a registered trademark are particularly complex as they require that the advertising actually 'use' the registered mark within the meaning of the Trademarks Act.
A recent Federal Court of Canada decision signals that it is maintaining consistency in its broad interpretation of use of a trademark in connection with services and provides comfort for non-Canadian businesses that have no physical presence in Canada. The decisions reverse a longstanding trend by the Trademarks Opposition Board of ignoring ancillary services as being sufficient to constitute use in Canada.
After more than one year of negotiations, Canada recently reached a new free trade agreement with Mexico and the United States. Among other things, the US-Mexico-Canada Agreement has updated the North American Free Trade Agreement's IP chapter in order to modify the landscape for pharmaceuticals and for patent, copyright and trademark owners. While Canada is already compliant with many of the new agreement's provisions, a number of the changes may have an impact on its IP laws.
Non-Canadian retailers can breathe a sigh of relief thanks to a recent Federal Court decision which reaffirms its position that providing retail store services does not require a bricks-and-mortar establishment or direct delivery of products to Canada to constitute 'use' of a trademark in Canada. The decision also reverses the Trademarks Opposition Board's longstanding trend of ignoring ancillary services as being sufficient to constitute 'use' in Canada.
The Federal Court of Appeal recently dealt the Canadian Council of Professional Engineers another blow against its strategy of claiming an exclusive monopoly in the words 'engineer' and 'engineering', and opposing trademark applications that include these words.
The Supreme Court has denied Philip Morris's request for leave to appeal the Federal Court of Appeal's precedent-setting decision in Imperial Tobacco Canada Limited v Philip Morris Products SA. The appeal court had held that Philip Morris had infringed the MARLBORO trademark by selling no-name cigarettes in packaging incorporating the well-known 'red roof' packaging trade dress of Philip Morris's Marlboro brand.
The Supreme Court of Canada recently issued two landmark decisions relating to the trademarks BARBIE and VEUVE CLICQUOT, providing a broader scope of protection for famous trademarks in Canada. The Supreme Court emphasized that a difference in wares or services does not "trump" all other factors - rather, different factors will be given different weight in different situations.
Under Canadian trademark law it is fundamental that a registered trademark remain distinctive of a single source throughout the country in order for the mark to be valid and enforceable. The Federal Court of Appeal recently upheld a decision emphasizing this idea, as well as the strictness with which it may be applied.
In recent months trademark law has received increased attention from the Supreme Court of Canada. In 2005 the court heard two cases involving the famous trademarks VEUVE CLICQUOT and MATTEL. The court's decisions are under reserve, and it is hoped that when released the decisions will clarify the scope of protection of famous (and not quite famous) trademarks in Canada.
The Canadian Supreme Court has granted Mattel leave to appeal the rejection of its opposition against an application to register the trademark BARBIE'S and its design. The Supreme Court granted leave to hear the appeal, even though Mattel failed to succeed in all of its previous attempts to block the application in the Trademarks Office, the Federal Court and the Federal Court of Appeal.
As a result of a landmark decision rendered by the Federal Court of Appeal on May 10 2005, the claimed date of first use or making known of a trademark in Canada is no longer a factor to be considered by examiners in deciding the priority of co-pending applications (during prosecution, as opposed to opposition).
The Supreme Court of Canada has granted leave to hear an appeal of the Federal Court of Appeal's decision in Veuve Clicquot Ponsardin v Les Boutiques Cliquot Ltee. In so doing, the Supreme Court will have an opportunity to discuss - and perhaps clarify - the scope of protection for famous marks in Canada.
To avoid the risk of brand appropriation, the filing of an application in Canada should be given serious consideration when filing elsewhere. The relatively low cost involved in filing in Canada emphasizes the desirability of prompt protection.