July 2, 2019
Canada’s Trademark Applications for Marijuana Products and Services Causes an International Stir at the Nice Committee of Experts
I had the honour to represent the Intellectual Property Institute of Canada (IPIC) at the 29th session of the Nice Committee of Experts in Geneva from April 29 to May 3, 2019, where the Committee dealt with hundreds of remaining proposals from the 28th session, as well as the hundreds of proposals and 4 related projects presented this year. Not surprisingly, the Committee will be carrying over a few hundred proposals and a few projects into 2020.
June 26, 2019
In 108 Media Corporation v. BGOI Films Inc., 2019 ONSC 880, the Ontario Superior Court of Justice re-affirmed the predominant line of case law in Ontario holding that when parties insert the words “final and binding” into an arbitration agreement, they intend to preclude an appeal under section 45 of the Arbitration Act, 1991, S.O. 1991, c. 17, either as of right or with leave.
June 4, 2019
The United States Patent and Trademark Office (USPTO) has launched a pilot program to explore the effectiveness of instituting expedited cancellation proceedings at the Trademark Trial and Appeal Board (TTAB) for challenges to registrations based on abandonment or non-use
April 18, 2019
The world around us is becoming more reliant on technology, and the practice of IP law is no exception. There are already numerous resources offered by national IP offices and agencies around the world. For instance, Google Patents, a search engine for prior art, indexes more than 87 million patents and patent applications with full text from 17 patent offices. Similarly the World Intellectual Property Organization offers numerous resources and databases to conduct international trademark, patent, and industrial design searches. Here at home, CIPO's website has a large collection of resources on Canadian IP law and how to register, enforce, and find IP.
March 22, 2019
Like any proprietor wishing to protect its trademark rights, those adopting marks having “shock value” may also create valuable rights and wish to pursue stronger, enforceable trademark rights through registration. These parties have faced obstacles as IP offices in various countries enforce the provisions of their trademark laws that relate to immoral or scandalous marks. Arguments related to “free speech” have often been used as a defense.
March 22, 2019
On December 20, 2017, the Court of Appeal in Stockholm, Sweden, convicted 20 people for fraud in relation to sending fake invoices to applicants who had previously applied to register Community trademarks with the Office for Harmonization in the Internal Market (“OHIM”, now the European Union Intellectual Property Office (EUIPO)). From 2011 to 2014, the fraudsters sent hundreds of fake invoices under the misleading name “OMIH” that appeared to have been sent by the OHIM to recipients in various countries.
November 5, 2018
Like Canada, Mexico is introducing some significant substantive and procedural changes to its trademark law. The changes are to align its practice with that of its foreign commercial partners and are expected to come into force 60 working days from the May 18, 2018 publication in the Mexican Federal Gazette.
June 15, 2018
The Venezuelan Patent and Trademark Office has temporarily suspended payment of official fees by foreign applicants, pending the publication of new official fees. As a result, some services including renewals, final granting taxes, patent annuities, and changes of ownership have been halted. Other services, including trademark filings, remain unaffected, as do proceedings involving domestic applicants, or those paid in local currency.
June 15, 2018
I recently had the pleasure of representing IPIC at the 28th Session of the Committee of Experts of the Nice Union (the Committee) held in Geneva, Switzerland, from April 30 to May 4, 2018.
May 11, 2018
In January 2015, the Canadian Border Services Agency (CBSA) introduced the Request for Assistance (RFA) Program as part of an effort to crack-down on counterfeits crossing Canadian borders, to allow Intellectual Property Rights Holders the opportunity to institute legal action against any importer found through the program, and the ability to arrange for destruction of counterfeit products in a timely manner.
May 11, 2018
It is now a requirement in Iraq to make a request for examination, which appears to involve a search, prior to filing a trademark application. If the examination results are clear, an application can be filed together with the examination results, and the application will be accepted and proceed to publication immediately. If the results are not clear, an application can still be filed, however, it appears that an appeal will be necessary to try to overcome the negative aspects of the examination report.
February 8, 2018
There has been lots of activity on disparaging marks in the United States and Canada. Most notable is the US Supreme Court decision in the Slants case dealing with the “disparagement” provisions of Section 2(a) of the Lanham Act. Other cases dealing with the "immoral, deceptive, or scandalous matter” provisions of Section 2(a) are also making their way through the courts in the US. In Canada, there have been several cases before the courts and Human Rights Tribunals dealing with names and logos of sports teams. This article briefly looks at the outcome of these specific cases, as well as provisions of the Canadian Trademarks Act relevant to disparaging marks.