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Policing Trademark Rights during a Pandemic

In our last blogpost, we discussed some specific steps that trademark owners can take during the COVID-19 pandemic to maintain their trademark rights. Here, we look at the implications of COVID-19 on trademark rights…


Maintaining Trademark Rights in a Pandemic

The ongoing COVID-19 pandemic has forced many businesses in Canada and abroad to shut down temporarily or to transition into new product offerings. In circumstances such as these, it is important for trademark owners to understand how business interruptions or closures can affect their trademarks…


Divisional Trademark Applications

On June 17, 2019, changes to Canada’s Trademarks Act came into effect, including the introduction of so-called divisional trademark applications. Seven months later on January 17, 2020, the Canadian Intellectual Property Office (CIPO) amended its practice…


Business break-ups and trademark rights

In the absence of a written agreement, who owns and who gets to use the trademarks of a joint venture after the parties to the joint venture break up? That was the central issue before the Federal Court in Corey Bessner…


Latest New Policies from CIPO in Trademark Registration Process

From start to finish, the process of registering a trademark in Canada typically takes approximately 18 to 24 months. However, factors such as increased volume due in part to the legalization of recreational cannabis in Canada and changes to Canada’s Trademarks Act (the “Act”)…


Section 45 and use of a trademark with software

A recent decision in a proceeding under section 45 of the Trademarks Act (the “Act”) shows the difficulties inherent in proving use of trademark in association with computer software. The proceeding, Ridout…


Organic Kids Catering & design trademark rejected for (mis)descriptiveness

The Trademarks Opposition Board (the “TMOB”) has rejected an application to register a logo including the words “Organic Kids Catering” and images of children and vegetables, finding that it clearly describes (or deceptively misdescribes) that the applicant provides organic food for kids. Shift Law…


Distributor's bankruptcy does not excuse non-use of trademark

On May 29, 2019, the Trademarks Opposition Board (TMOB) released its decision in McDougall Gauley LLP v 2001237 Ontario Limited, a section 45 proceeding regarding the trademark TRAX Design (TMA651,790) (the…


100 Day Countdown to Canada's New Trademarks Regime: A Brand-owners' Guide

We are nearly 100 days away from the June 17, 2019 coming-into-force (or “CIF”) date for the significant amendments to Canada’s Trademarks Act. The amendments are primarily designed to ratify and implement three major international treaties regarding trademarks, specifically,…

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New amendments to Trademarks Act will help prevent trademark trolls

Bill C-86, the omnibus legislation introduced by the federal government on October 29, 2018, includes some notable amendments to the Trademarks Act, including amendments that will help prevent trademark “trolls”. The…

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Trademarks and the Federal Government's IP Strategy

Back in April, the federal government committed $85.3 million over five years “to help Canadian businesses, creators, entrepreneurs and innovators understand, protect and access intellectual property (IP) through a comprehensive IP Strategy.” The thinking is that Canadian businesses, particularly…

Working on Protecting Trademark Rights

Protecting Your Trade-Mark Rights: Police Them or Lose Them

Our friends at Ink Tank posted a great blog the other day about how other businesses can “tread” on your brand – knowingly or not - from “borrowing” distinctive elements of your brand, to unwelcome parodying to blatantly infringing your trade-mark. All of these things can do harm to your brand…

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Facebook's forum selection clause ruled unenforceable

The Supreme Court of Canada has released two landmark decisions in recent days relating to territorial commercial interests on the borderless Internet. This post concerns Douez v Facebook, Inc., 2017 SCC 33, a decision that marks an important development for the law of consumer contracts…


Supreme Court 'Equusteks' it to online trademark infringers

This post concerns one of the two recent landmark decisions from the Supreme Court of Canada concerning territorial commercial interests on the borderless Internet. In Google Inc. v. Equustek Solutions Inc. 2017 SCC 34, the Court confirmed that Canadian courts can grant orders prohibiting…


GOOGLE: Still a trademark

Looking for the city’s most popular restaurant? Google it! Need to confirm a historical fact? Google it! Doubt as to directions? Google it! The act of “googling” has become common place and common parlance when we refer to conducting an online search. The pervasive use of “google” as a verb, rather…


Trademark provisions under the new Cannabis Act

The federal government’s recently tabled Cannabis Act (Bill C-45) – which will legalize the recreational use of cannabis in Canada –will affect, in one way or another, a wide variety of existing regulatory regimes, including those relating to criminal law, health law, employment law, municipal…


Interlocutory injunctions in trademark cases - two recent decisions with different results

February saw two notable decisions from Canadian courts on motions for interlocutory injunctions in trademark infringement cases. The Federal Court’s decision in Sleep Country Canada Inc. v. Sears Canada Inc., 2017 FC 148 (granting the motion) and the Quebec Superior Court’s decision in…


Online Trademark Infringement - The Return of “Initial Interest Confusion”

The doctrine of “initial interest confusion” has again surfaced in Canada, and once again in the context of online advertising, confusing domain names and passing off (common-law trademark infringement). We’ve been tracking the development of this subject over…


“Fashion Santa” - A Very Seasonal Intellectual Property Dispute

For two Christmas seasons in a row the chic white-bearded 50-something-year-old model, Paul Mason, has donned designer garb and paraded around Yorkdale mall calling himself “Fashion Santa”. Just as we enter into the festive holiday season, a legal debate is brewing over this dapper Saint Nick that…

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New Guidelines for Paid Endorsements and Incentivized Marketing

In a world where businesses are aggressively competing for the attention of consumers, paid online reviews and endorsements are now popular and even commonplace forms of advertisement and promotion. However, this form of paid advertising is, now more than ever, raising questions around bias and lack…

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Hand over that domain!

As the e-commerce space becomes ever more crowded, disputes over confusingly similar domain names are becoming ever more common. One issue that has been particularly vexing is whether a court can order the registrant of a domain name who uses it to infringe someone’s trademark to deliver up that domain…


The importance of policing your trademarks: The need to "Strike Back"

I was recently asked by the Toronto Star to comment on Lucasfilm’s decision to serve a charitable organization called Newmindspace with a cease and desist letter demanding that they stop all use of the term “Light Saber” in association with their charitable events. You can see the article and get…


The ABC’s of Section 6(5)(a)-(e): Back to basics on trademark confusion

In its recent decision in Home Hardware Stores Limited v Benjamin Moore & Co Limited, 2015 FC 1344, the Federal Court has taken us back to the basics of assessing the likelihood of confusion between trademarks and how to apply the relevant factors to consider, as set out under section 6(5)…

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IP response to Online Brand and Reputation Attacks

Online threats to commercial reputations are on the rise. These include “attack sites”, “gripe sites” (e.g. RipOff Report), cyber-libel via social media, domain name high-jacking, meta tag high-jacking and defamatory email campaigns. Online brand and reputation attacks are easy and inexpensive to…

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Initial interest confusion in Canada: recent developments

Back in April, we wrote about the history in Canada of a U.S. trademark infringement doctrine called “initial interest confusion” – see “

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Combating Online Infringement and Disparagement of Your Trademark

You've spent years building goodwill in your business and translating it into your brand name. You've registered your brand name as a trademark which you use as the domain name for your company's website. You've invested many thousands of dollars optimizing your website and using it to promote your…


A brief history of passing off, websites and "initial interest confusion" in Canada

The Federal Court’s recent decision in Red Label Vacations Inc. ( v. 411 Travel Buys Limited (, 2015 FC 19 is…


Use it or lose it: clearing dead wood from the Trademarks Register

What can you do when you want to use or register a trademark that someone else has already registered but who, you suspect, is no longer using it? This was the issue recently facing one of Shift Law’s clients. They had been using the trademark, BROADVIEW, in association with their financial services…


Register your trademarks – There’s never been a better time to do so

There’s never been a better time than now to register your trademarks, like the name of your business, your logo or the brand names for your products or services. In Canada, registering a trademark means getting it listed on the Register of Trade-marks in the Canadian Intellectual Property…

Confidential Information

Protecting Confidential Information with the Doctrine of “Inevitable Disclosure”

A recent case from Texas demonstrates how the doctrine of “inevitable disclosure” can prevent departing employees from misappropriating an employer’s trade secrets and other valuable confidential information. In Brink’s Inc. v. Patrick, Case No. 3:14-cv-775-B (N.D. Tex., 6/24/14), the Court…

Confidential Information

Employers, Employees and Confidential Business Information

Recent years have seen an increase in trade secret theft and misappropriation of confidential business information throughout North America. This is probably due to a number of factors, including increased employee mobility, corporate downsizing and the growing recognition of the value and portability…


Major changes coming to Canadian trademark law

Canada’s Trade-marks Act is about to undergo its most significant amendments since it was first enacted in 1953. Even the spelling of “trade-mark” will change (to “trademark”). Trademark practitioners and their clients should take note of the proposed changes (outlined below) as some…

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Property in Domain Names: Registration Doesn’t Always Mean Ownership

I recently argued a summary judgment motion on an interesting and somewhat novel issue relating to domain names: can someone other than the registrant of a domain name be its lawful owner - own title in it – where there is no evidence that the domain name was registered in bad faith or that it infringes…

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Between thought and expression

The Ontario Superior Court’s recent decision in Rains v. Molea about allegations of copyright infringement in a series of paintings of crumpled paper, is a fun read for an…

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Domain Name Registration, Passing Off and Trademark Infringement

Registering and using a domain name that is similar to a competitor’s for the sole purpose of redirecting traffic to one’s website is a dirty practice. But like many other internet offenses, it does not always fit within traditional causes of action, including trademark…

Confidential Information

Don’t Overlook the Importance of Confidential Business Information

When it is thought of at all in the context of IP, confidential information is often thought of as things like secret recipes, codes or algorithms – less often as internal business processes, marketing strategies, supplier and customer lists and all that other critical information that a company and…


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