Several decisions involving the impact of online commerce on
trademark use were issued during 2013. In Canada, use is
fundamental to trademark acquisition, enforcement and maintenance.
However, for online businesses that are accessible to Canadians,
but have no bricks-and-mortar presence, the law remains unclear
about what level of Canadian interaction is sufficient. While
merely being online does not permit a business located out of
Canada to claim use, the courts are still grappling with how
businesses must meet a use-in-Canada threshold (eg, by setting
prices in Canadian dollars, offering delivery to Canada or having
Canadian contact details). This will remain a topic of interest as
internet commerce continues to grow.
The Canadian government also introduced the Combating
Counterfeit Products Act (Bill C-8) which, when passed, will set up
a procedure whereby copyright and registered trademark owners may
ask for assistance in detaining counterfeit goods. In addition, it
sets out new criminal remedies for trademark infringement. The bill
also provides for the registration of additional non-traditional
marks (eg, colour, taste, texture and smell) with proof of acquired
reputation. Finally, as part of the Canada Europe Trade Agreement,
the government has committed to better protection against
counterfeiting and to recognising new geographic indications in
In addition, the government will likely move forward with other
steps designed to harmonise Canada's trademark system with that
of other countries. Some of the most likely changes include
accession to international treaties such as the Madrid Protocol and
the Singapore Treaty. Consideration has already been given to the
changes that will be required to accommodate those statutes (eg,
new filing procedures and classification of wares and services).
More interesting is how these treaties may change the current focus
on use as a requirement for registration and maintenance of
trademarks in Canada, and whether access to these systems will
result in more Canadian businesses seeking trademark registrations
in Canada and abroad.
Another issue that has caught the attention of trademark lawyers
is the impact of the Quebec government's insistence upon French
language on signage displayed in Quebec. Many rights holders feel
that their trademark registrations permit them to use the brand
name alone on signs, whereas the Quebec government has asked for
additional generic names in French (eg, café,
magasin or bistro) to be displayed. A challenge
to this requirement has been launched and is being keenly watched
by many international brand owners.
This article first appeared in World Trademark Review
magazine issue 47, published by The IP Media Group.
The content of this article is intended to provide a general
guide to the subject matter. Specialist advice should be sought
about your specific circumstances.
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A recent Saskatchewan Court of Queen's Bench decision allowed a court-appointed receiver to sell and transfer intellectual property rights free and clear of encumbrances, finding that a license to use improvements of an invention was a contractual interest and not a property interest.
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