Mr Mark Evans

Mark Evans

Updates

Intellectual Property

Anti-dilution remedy not limited to registered trademarks
Canada | 03 December 2018

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.

Federal Court affirms that trademark use for services does not require bricks-and-mortar business in Canada
Canada | 05 November 2018

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.

USMCA versus NAFTA: what's changed and what it means for intellectual property in Canada
Canada | 22 October 2018

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.

No store, no problem: broad interpretation of 'use' advantageous for foreign retail trademark owners
Canada | 17 September 2018

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.

CCPE fails to prevent registration of 'engineering' mark
Canada | 10 March 2014

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.

Supreme Court denies leave to appeal no-name cigarette decision
Canada | 07 May 2013

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.

Supreme Court Clarifies Protection for Famous Trademarks
Canada | 10 July 2006

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.

Use of Mark by Single Infringer Causes Loss of Distinctiveness
Canada | 15 May 2006

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.

Famous (and Not Quite Famous) Trademarks
Canada | 10 April 2006

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.

Barbie to Have Her Day in Supreme Court
Canada | 15 August 2005

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.

Trademark Examination Practice Burned in Effigi
Canada | 08 August 2005

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).

Supreme Court to Consider Issue of Famous Marks
Canada | 29 March 2005

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.

Prior Use of a Trademark
Canada | 29 April 2002

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.