Category Archives: Canada

Canada, Trademark

The Federal Court of Appeal Upholds Finding that Trademark Use Can Be Established Without a Physical Presence in Canada.

With the rise of e-commerce, many non-Canadian businesses can now advertise their services to Canadians online without having any physical presence in Canada. If these businesses have Canadian registered trademarks associated with these services, there are however important considerations for businesses wanting to properly maintain their trademarks in Canada. Unlike other forms of intellectual property, an owner of a Canadian trademark must “use” their registered mark in Canadian commerce or it may lose the protections provided by the Trademarks Act. It goes without saying that without a physical presence in Canada, it could be challenging for foreign trademark owners to prove that they are meeting the “use” requirement. The WALDORF ASTORIA case provides helpful guidance for foreign trademark owners to mitigate the risk of compromising their intellectual property.  

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Canada, Intellectual property

Mark D. Penner Recognized as IAM Global Leader for 2021

Mark Penner

Fasken partner, Mark D. Penner, has been recognized in the first ever edition of the IAM Strategy 300 Global Leaders Guide. You can visit the website here to view this year’s edition.

The IAM Strategy 300 Global Leaders guide draws from the worlds of private practice, consulting and other service providers, with specialists from the major IP markets in the America’s, Europe and Asia. Together they boast a wide range of expertise in IP-intensive sectors such as high-tech and life sciences. Given the myriad strategic challenges that patent owners face throughout the world, this guide will quickly become a valuable resource for stakeholders across the IP community!

Mark’s practice focuses on all aspects of the acquisition, protection, enforcement and strategic use of a wide range of intellectual property assets in Canada and around the world.

Learn more about our IP practice.

Canada, Copyrights

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

Copyright sign cut-out on an urban background.

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.

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Canada, Trademark

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?

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Canada, Patents

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]

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