Category Archives: Canada

Foreign Certificate of Registrations of Copyright may not suffice to prove ownership of copyright in Canada

Proving chain of title to a work is essential for any party wishing to assert copyright infringement. However, this is not always easy, given that the author of the work is not required to register its copyright to acquire the protection by copyright law, provided that the author is Canadian or a citizen of any of the signatory countries to the Berne Convention for the Protection of Literary and Artistic Works of September 9, 1886.[1] Further, in any civil proceeding in which a defendant puts in issue either the existence of copyright or the title of the plaintiff to it, the author shall be presumed to be the owner of the copyright unless the contrary is proven.[2] Given that copyright exists from the moment the original work is created and that the title of ownership may easily be passed around since its existence, it is important to keep a robust documentation of the chain of title of a work.

In the recent decision Lickerish, Ltd v Airg Inc,[3] a copyright infringement action regarding the unauthorized use of two photographs of a celebrity on the defendant’s website, the Federal Court found that the would-be plaintiff did not have standing to bring the copyright infringement action, given that it was unable to prove its ownership to the asserted copyright to the photographs. This is an interesting case because it speaks to (1) the insufficiency of uncertified foreign certificates of registration of copyright as evidence of ownership, and (2) the use of screen captures as evidence of copyright infringement.

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The Case of the ‘Missing S’

At What Point Can Trademark Owners Claim Damages When a Registered Mark Infringes?

Under section 19 of the Canadian Trademarks Act, “… the registration of a trademark in respect of any goods or services, unless shown to be invalid, gives to the owner of the trademark the exclusive right to the use throughout Canada of the trademark in respect of those goods or services.” (our emphasis) That exclusive right is said to be infringed if another person, among other things, sells goods in association with a confusingly similar trademark or trade name. (s. 20(1)(a)) The owner can then institute legal proceedings against the allegedly infringing party (s. 52 ff) and, if they are successful, obtain monetary compensation or other remedies.

But what happens if a registered trademark is later expunged and the use of that mark is held to be infringing another trademark owner’s trademark rights? When does the protection of section 19 cease? In other words,  when can another registered trademark owner obtain damages for that infringing use?

In its recent decision in Group III International Ltd. v. Travelway Group International Ltd., the Canadian Federal Court of Appeal has provided some guidance. According to this decision, in the absence of misrepresentation or bad faith, there can be no damages for the period prior to expungement.

The first decision in the case was issued in 2013, and involved the registered trademarks of GROUP III INTERNATIONAL LTD., HOLIDAY GROUP INC. and WENGER S.A. (collectively “GROUP III”), namely the “Wenger Cross Logo” as well as related marks with the words “WENGER” or “SWISSGEAR”  registered in association with luggage and bags.

GROUP III alleged trademark infringement and passing off by TRAVELWAY GROUP INTERNATIONAL LTD. (“Travelway”) with respect to the use of Travelway’s registered trademarks  on its luggage related products:

In this first judgement, the Federal Court ruled that Travelway’s registered marks were not confusingly similar to GROUP III’s, and therefore, that there was no infringement. Similarly, GROUP III’s claim that  Travelway had attempted to pass of their goods as those of the GROUP IIIs failed.

On appeal, however, the Federal Court of Appeal ruled that the trial judge had misapplied the test for confusion, overemphasizing the resemblance of the logos, and ruled that there was indeed confusion and passing off. The issues of whether  Travelway’s registered marks ought to be expunged, and the applicable quantum of damages were referred back to the Federal Court.

In 2019, the Federal Court ordered Travelway’s trademarks expunged, but refused to grant  GROUP III compensation as there could only be damages after the expungement of Travelway’s marks. At this stage GROUP III attempted to rely on the judge’s discretionary power with respect to remedies, alleging that  Travelways had blatantly infringed  GROUP III’s marks. Under the circumstances, they claimed, there was “no basis to deny compensation altogether.” According to GROUP III, the expungement should have rendered Travelway’s marks invalid from the beginning (e.g. void ab initio) and as such, the shield of Section 19 should never had existed.  However, the judge agreed with Travelway, and followed the precedent established in Remo Imports Ltd v Jaguar Cars Limited, which held that absent a finding of bad faith, a registration would not be deemed void ab initio. The judge noted that in the present case, the Travelway had “ceased all sales on the date of the Judgement of the Federal Court of Appeal,” and that there had in fact been no finding of bad faith.  Damages were only available after the expungement of the mark, not prior thereto.

GROUP III appealed on the basis that the Federal Court erred and should have found that the infringing marks have always been invalid and never registrable, therefore disentitling Travelway from relying on section 19 and entitling GROUP III to financial compensation from the moment Travelway started using its infringing trademarks. The Federal Court of Appeal ruled that Travelway “could rely on its registrations as protection until such time as the Federal Court expunged its trademarks from the Register.” In reaching this conclusion, it noted that trademark registration is subject to a complex, specialized administrative scheme, which militates against trademarks being deemed invalid from the outset. Furthermore, it distinguished between the time at which a trademark becomes invalid and the time at which it is expunged from the register. The latter, it concluded, must be the starting point for any liability arising from the use of a registered trademark that has been invalidated.

The case underlines the importance of obtaining registered trademarks. They continue to serve the dual purposes of protecting members of the public by allowing them to identify the source of goods and protecting owners’ business interests by preventing others from using their marks. However, they may also serve a defensive purpose: they can protect the owner, in certain circumstances, in infringement claims by third parties. That being said, this protection could, however, be lost where the trademark is obtained fraudulently or in bad faith.

Ontario Court Affirms the Enforceability of Patent No-Challenge Clauses

In a recent decision[1], the Ontario Superior Court of Justice, Divisional Court (the “Court”), affirmed the enforceability of patent restrictive covenants (so-called “no-challenge clauses”) in settlement agreements.

In 2014, Loops L.L.C. and Loops Flexbrush L.L.C. (“Loops”) and Maxill Inc. (“Maxill”) entered into a settlement agreement to resolve a patent infringement action by Loops against Maxill. The agreement, governed by the laws of Canada and Ontario, contained a no-challenge clause in which Maxill agreed “not to directly or indirectly assist any person in attacking the validity” of certain Loops patents.[2] Loops subsequently commenced actions in Ontario and Utah claiming Maxill breached the agreement and infringed a U.S. patent covered by the agreement.[3] Loops filed a motion for an interlocutory injunction in the Ontario action. The motion judge dismissed the injunction request.[4] The motion judge found that a strong prima facie case was lacking because Loops’ evidence was rebutted by the fact that the no-challenge clause was not reasonable in the public interest, based on U.S. caselaw principles.[5]

The main issue on appeal was whether the motion judge erred in finding that Loops did not have a strong prima facie case when applying the three-part test for an interlocutory injunction.[6] The Court rejected the motion judge’s reasoning, acknowledging that while there may be limits on contractual restrictions that harm the general public, imposing such a limitation would require evidence allowing the Court to weigh the implications of enforcing the contract. The Court found that no such evidence had been adduced. On this basis, the Court reasoned that an agreement precluding the subsequent use of a defence by a party to the benefit of another party was not able to be limited to prevent public harm.[7]

The Court rejected a line of U.S. caselaw holding that no-challenge clauses may be void under U.S. law due to concerns that they restrict the free use of ideas in the public domain by inhibiting challenges to patent validity.[8] The Court clarified that, contrary to U.S. decisions setting aside the principle that patent licensees may be estopped from attacking patent validity, the estoppel principle continues to apply in Canada.[9] In view of this, and the fact that the no-challenge clause at issue was part of a settlement of a case in which the validity of Loops’ patents was challenged, the Court held that the no-challenge clause was enforceable and, accordingly, Loops had a strong prima facie case.[10]

Upon finding that Loops also satisfied the second and third parts of the test (irreparable harm and balance of convenience), the Court granted the appeal and ordered an interlocutory injunction against Maxill.[11]

This decision will be of interest to patent owners, licensees, and others who may be bound by no-challenge clauses. Notably, the Court left open the possibility that it could be persuaded to hold a no-challenge clause unenforceable with evidence of public harm. The Court’s reasoning is broad enough that it may be applied to other intellectual property rights as well (e.g., copyright). Fasken’s team of experienced intellectual property lawyers are available to consult on all manner of IP matters including litigation, dispute settlement, and licensing.


[1] Loops L.L.C. v. Maxill Inc., 2020 ONSC 5438.

[2] Ibid at paras 3-4.

[3] Ibid at paras 7-9.

[4] Ibid at para 1.

[5] Ibid at paras 47-49.

[6] Ibid at paras 14-15.

[7] Ibid at para 50.

[8] Ibid at paras 52-71.

[9] Ibid at para 72.

[10] Ibid at para 73.

[11] Ibid at paras 74-80 and 83.

IAM Global Leaders

Jean-Nicolas Delage Recognized as IAM Global Leader for 2021
Fasken partner, Jean-Nicolas Delage, has been recognized in the 2021 edition of IAM Global Leaders Guide.

Now into its second year, the IAM Global Leaders Guide brings together the world’s foremost private practice patent experts. Congratulations Jean-Nicolas! Read the full guide here.

Jean-Nicolas is the co-leader of the Technology, Media and Telecommunications group and specializes in intellectual property strategy for rapidly growing technological clients.

“Zombie” Privacy & IP Rights: Protecting the Rights to an Individual’s Image after Death: Part 2 of 2

Part 2: Intellectual Property

In Part One of our series on protecting individuals’ images after their death, we examined the privacy rights that govern the use of these ‘zombie’ celebrities, just in time for Halloween. We considered what privacy rights attach to dead celebrities, and whether these rights can be exercised by their estates/heirs. In this Part Two, we will consider what intellectual property rights could govern this so-called resurrection of dead celebrities!

As you will recall from Part One, it is not surprising that movies and concerts are reaching back to long dead stars to “perform” for audiences. What intellectual property rights govern the resurrection of a dead celebrity? If property rights are the best way for a deceased’s heirs to protect the image of the deceased, how can the “property” regime of intellectual property rights assist?

There are a number of statutory IP regimes as well as common law causes of action which can allow online influencers and the estates of deceased celebrities to control and monetize these valuable assets and continue to monetize as technology allows them to do so.

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