Publications

December 17, 2020

The Court of Appeal Adds a Few More Shades to Canada’s Grey Market

In Canada, as elsewhere in the world, intellectual property owners have made numerous attempts to control their distribution channels through trademark law, copyright law, or exclusive contracts, without much success. However, in a recent decision (Costco Wholesale Canada Ltd. c. Simms Sigal & (…)

May 21, 2020

E-commerce: Protecting Your Work

As distribution channels with a global reach, websites are a powerful tool for doing business, and during the pandemic, they even play a critical role. A website consists of a set of webpages accessible from an address hosted on a server through the internet or an intranet. A website is a (…)

July 31, 2019

New notification process at the Trademarks Office

The new provisions of the Trademarks Act allow for earlier intervention with the Registrar in an attempt to prevent the registration of trademarks that create confusion with registered or applied-for trademarks through a notification system. As the owner of pending or registered trademarks in (…)

June 3, 2019

Heffel Gallery Limited : The National Importance of Foreign Art in Canada

On April 16, 2019, the Federal Court of Appeal issued a judgment resolving a deadlock that had been plaguing the Canadian art community since June 12, 2018. Since June 2018, the Canadian Cultural Property Export Review Board (the “Board”) has had to take into consideration the Federal Court’s (…)

May 23, 2019

The countdown is on to protect your trademarks in Canada

A few weeks before the coming into force of the amendments to the Trade-marks Act, the following is a reminder of the actions you should consider taking before June 17, 2019 to protect your rights and save costs. Actions To Take Benefits Renew your registrations and classify your (…)

July 5, 2018

Why register your brands with the Amazon Brand Registry

If you sell your products on Amazon, you can benefit from enrolling your trademarks with the Amazon Brand Registry. The Amazon Registry is a free program accessible to monitor brands on Amazon’s website. This program includes proprietary search tools designed specifically to help online merchants (…)

September 21, 2017

The Canada-European Union Comprehensive Economic and Trade Agreement (CETA) is coming into force today!

It is today, September 21st 2017, that Bill C-30 1 comes into force. As a result of its provisions, several Canadian laws are amended in order to allow for implementation of the Canada–European Union Comprehensive Economic and Trade Agreement “CETA” 2. Chapter 20 of the CETA deals with the (…)

September 14, 2017

What every agri-food company must know about the new geographical indications which will come into force on September 21st

While negotiating the Comprehensive Economic and Trade Agreement between the EU and Canada (CETA) with the European Union, Canada has agreed to modify its legislative scheme governing Geographical Indications («GIs»). In this context, Canada has recognized protection for 179 new GIs. The new (…)

June 30, 2017

A picture is worth a thousand woes!

A recent Federal Court decision 1 reiterates the importance of protecting the main design elements featured on products and packaging. This decision also recalls the dangers of too closely mimicking the appearance of a competitor’s products. Goudreau Gage Dubuc, one of the leading (…)

December 20, 2016

New regulations for the owners of non-French trade-marks

On November 24th, 2016, the Quebec government has adopted new regulations regarding the public display of non-French trade-marks in Quebec. The new regulations may be summarized as follows: trade-marks do not have to be translated into French but French language must be sufficiently present in all (…)

April 26, 2016

Update: Metatags at the Federal Court of Appeal

In December 2015, the Federal Court of Appeal rendered its judgment in the case of Red Label Vacations Inc. (redtag.ca) v. 411 Travel Buys Limited (411travelbuys.ca) 1. The Court dismissed all grounds of appeal and upheld the decision of the Federal Court. Background and Federal Court decision Red (…)

April 14, 2016

Trade-marks in Quebec and the Charter of the French Language: the end of a debate?

According to information presently available, it appears that the Quebec government will forgo implementing legislative amendments that would have forced companies conducting business in Quebec to add a French descriptor to signs displaying their non-French trade-marks. Instead, after some (…)

September 29, 2015

Nice Classification: A first step in Canada’s upcoming trademark reform

It is now possible to adopt the Nice classification for trademark applications in Canada. This new measure, which is currently voluntary but will become mandatory once the new provisions of the Trade-Marks Act come into force, allows a trademark owner to classify goods and services among the 45 (…)