• You are currently browsing the archives for the Legislation category.

  • Archive for the ‘Legislation’ Category

    « Older Entries |

    When Prior Use is not Prior Use

    Friday, April 30th, 2010

    In an update to an earlier post, the Supreme Court of Canada has recently granted leave to appeal in the case of Masterpiece Inc. v. Alavida Lifestyles Inc.    Both the Federal Court Trial Division and the Federal Court of Appeal held that, in a proceeding to expunge a Registration, the relevant date for determining whether there was confusion with a mark previously used in Canada is the date that the application was filed, and that likelihood of confusion at a point in the future is not a relevant consideration. 

    In addition, both of the earlier decisions stated that in order for prior use of a mark in Canada to be grounds for successfully expunging a registration, such prior use must have occurred in the same geographic area where the applicant used its mark; otherwise there could have been no likelihood of confusion at the time the application was filed.   In coming to the latter conclusion, both Courts appear, at least with respect to an action for expungement of a registration, to have imported into the test for likelihood of confusion, the test for common law passing off.   Given this, the decision of the Supreme Court of Canada on this issue will be eagerly awaited by practitioners.

    • Share/Bookmark

    Posted in Case Law, Legislation, Registration | No Comments »

    Books Titles Unregistrable as Trademarks in Canada

    Friday, January 15th, 2010

    In a decision that could significantly impact rights-holders in the media and entertainment industries, the Federal Court has suggested that book titles are, prima facie, not properly registrable as trademarks in Canada.

    In Drolet v. Stiftung Gralsbotchaft (2009 FC 17) the court was tasked with considering a range of copyright and trademark issues.  The litigants were all involved in the Grail Message movement—a religious movement centred around a series of writings prepared in Germany in the 1920s and 1930s. The plaintiff sought to expunge the defendant’s Canadian trademark registrations pertaining to the title of a book central to the movement for reasons relating to descriptiveness.

    First applying the conventional analysis proscribed under s. 12(1)(b) of the Trade-marks Act (the “Act”) to determine if the mark was “clearly descriptive”, the court concluded the mark did not meet this test, as the title did not convey to a consumer a clear indication of the book’s contents or subject matter.  However, writing for the court Mr. Justice de Montigny went on to assert:

    • Share/Bookmark

    Posted in Case Law, Legislation, Protection & Enforcement | No Comments »

    Consultation by CIPO on Madrid and Singapore Treaties

    Wednesday, January 13th, 2010

    The Canadian Intellectual Property Office (CIPO) recently launched a new consultation on possible Canadian accession to the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks (the Madrid Protocol) and the Singapore Treaty on the Law of Trademarks (the Singapore Treaty).

    This is not the first time CIPO has looked at the issue of Canada acceding to the Madrid Protocol.  Five years ago a similar consultation took place.   In response to a request for input, CIPO received feedback  from the Intellectual Property Institute of Canada and from the International Trademark Association, though no further action was taken by CIPO at that time.

    According to CIPO’s backgrounder to the current consultation, the intervening five years have seen important trading partners such as the United States join both the Madrid Protocol and the Singapore Treaty.  As a result, according to CIPO, Canada is increasingly seen as isolated in its trademark laws and practices.

    • Share/Bookmark

    Posted in Foreign Protection, Legislation, Registration | No Comments »

    « Older Entries |