Trademark

A trademark is a word or logo used by one person to distinguish goods or services provided by that person from those provided by another. The interest protected by a trademark is the “goodwill” of the trademark owner and the consumer’s ability to rely on the mark to distinguish the source of goods or services.

April 11, 2022
Photograph of a beer tap in a bar showing the brewer's trademark on the label.

Cowbells Brewing Taps Out: Ontario Brewer Denied Rights to Bell Trademark

New trademark registrations can be opposed by business owners who are concerned that the mark would cause confusion with their own registered trademark.
December 29, 2021
Photograph of the "ZARA" trademark in a sign above a Zara storefront.

Trademark Opposition by Fashion Giant ZARA Remitted to Federal Court

The Federal Court of Appeal held that the trial judge cannot intervene in a trademark opposition decision in the absence of any errors by the Board.
November 3, 2021
A woman sits on a pink suitcase in an airport.

Supreme Court Refuses to Hear Appeal in Luggage Trademark Dispute

SCC #39576: Earlier this year, Travelway filed for leave to appeal with the Supreme Court of Canada over a trademark dispute with Wenger, the makers of Swiss Gear.
October 18, 2021
Photo of a yellow Caterpillar-brand bulldozer against a snowy backdrop.

Caterpillar Scratches Back: Puma Loses Bid to Register ‘procat’ Mark

2021 FC 974: The Federal Court concluded that Puma’s use of procat would likely cause confusion with heavy equipment manufacturer Caterpillar Inc.’s ‘CAT’ trademark.
December 18, 2020
Photograph of a man holding a passport with leather luggage on the ground at his feet.

Less Baggage: Trademark Registration Later Expunged Will Not Be Liable for Prior Damages

2020 FCA 210: Court held that parties are not entitled to damages or an accounting of profits following the expungement of an infringing trademark.
November 9, 2020
Electricity powering a lightbulb on a black background.

Official Marks Not Immune to Infringement Claims

SCC 39144 : Supreme Court of Canada confirms an appellate ruling which found that, while official marks cannot eliminate rights under prior registrations.
September 3, 2020
Photo of a glass, maple-leaf-shaped bottle containing maple syrup.

Learning From Aunt Jemima: Abandoning Offensive Trademarks in Canada

With problematic brands like Aunt Jemima and Uncle Ben being dropped, how can brand owners prevent third parties from hijacking the discontinued marks?
June 4, 2020
Hand in rubber glove holding a spray bottle of bleach

Federal Court of Appeal Confirms New Standard of Review in Trademark Appeals

The Federal Court of Appeal (“FCA”) has clarified how Vavilov's standard of review will apply to decisions made by the Trademarks Opposition Board (“TMOB”).
April 3, 2020
An empty boardroom.

COVID-19: Time Extensions for Patents & Trademarks in North America

In this article, we explain how the intellectual property offices in Canada and the United States are responding to the COVID-19 pandemic.
January 23, 2020
Photo of a judge's golden gavel in court.

How the Supreme Court’s New Standard of Review Will Impact IP

2019 SCC 65, 2019 SCC 66 - The new standard of review will be applied to decisions by the Patent Office, Trademark Office, PAB, and TTAB.
January 17, 2020
Photo of two jars of weed for sale in a cannabis store.

Beat the Weeds: File Your Cannabis Trademarks in Canada

Because of the status of cannabis and trademark laws in the US, brand owners are looking to Canada to register their cannabis trademarks.
January 2, 2020
A set of symbols or abuse on a cardboard plate in the hands of a young woman. Disagreement on the online forum or on the Internet.

How FUCT Overturned the US Ban on Immoral, Scandalous Trademarks

Nearly 30 years after founding the streetwear brand FUCT, Erik Brunetti finally convinced SCOTUS to end a ban on "immoral" or "scandalous" trademarks.
December 16, 2019
Photo of the Raptors NBA logo on the court of Scotiabank arena

Clawing Deeper into the Monster v. Raptors Trademark Battle

The Raptors are tipping off against Monster, who allege the Raptors trademark featuring a clawed-up basketball is confusingly similar to the Monster "M".
August 16, 2019
A statue of Lady Justice.

US Supreme Court Lifts Ban on Profane Trademarks

SCOTUS, No. 18-302 (Iancu v Brunetti): In a recent decision, the US Supreme Court abolished the longstanding ban on registering vulgar and offensive words as trademarks.
July 19, 2019
Online shopping, keyboard

Ontario Court Backs American Decision to Penalize Online Counterfeiter

Dead End Survival, LLC v  Marhasin (2019 ONSC 3453) In the era of online shopping, it is easier than ever for counterfeiters to distribute fake consumer […]
June 28, 2019

The Rainbow Flag, Trademarks and Commitment to Diversity

June has been international pride month where rainbow flags are raised in unity, including at PCK Intellectual Property.
June 18, 2019

Raptors Win but Trademark still under Claw

The Raptors may have won the NBA championship but they still have a court battle ahead, this time against popular energy drink Monster Energy.
May 1, 2019
Iscada

Trademarks and New Evidence on Appeal

2019 FC 406 - FC confirms that registered owner is not precluded to submit new evidence on appeal if no evidence is submitted after receiving s.45 notice from the Registrar.
April 10, 2019

Trademark Expungement: Insufficient Evidence of Use and Lack of Dominant Feature

2018 FC 1261 - Trademarks expunged for lack of evidence establishing use, and for using deviants without the dominant features of the trademark design.
April 9, 2019

FCA Confirms Test To Admit New Evidence on Appeal From TMOB

2019 FCA 63 - FCA confirms long standing test for admission of new evidence in judicial review of TMOB decision.