Tag Archives: Trademark

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, Copyrights, Trademark

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

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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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Canada, Patents, Trademark

CIPO Fees to Increase After January 1, 2021

Close up of engineering drawing with electric motor

The Canadian Intellectual Property Office (“CIPO”) has announced that many of its fees for Canadian trademarks, patents, industrial designs, and integrated circuit topographies will increase on January 1, 2021. Among the fees being increased by 2% are those for an application to register a trademark as well as examination of patent and industrial design applications. A full list of the adjusted fees can be found in the links above or on the CIPO website.

The CIPO website should be consulted for an up-to-date listing of the adjusted fees because the applicable Tariff of Fees in the Patent Rules may not yet be updated. Whether the current fee or the adjusted fee must be paid for a given service will depend on the date on which the fee is received by CIPO, not the date on which the service is requested.

Fasken’s team of experienced intellectual property lawyers, patent agents, and trademark agents would be pleased to assist you with any and all CIPO matters.

Click here to learn more about our patent and industrial design practice.

Analysis, COVID, Trademark

THIS time it’s final … The Canadian Intellectual Property Office Extends IP Deadlines Until AUGUST 31st

The Canadian Intellectual Property Office (“CIPO”) has extended its final extension of the deadlines under the Patent Act, Trademarks Act and/or Industrial Design Act as a result of the COVID-19 outbreak. As we reported previously, March 16th to August 21st were considered “designated days” under the applicable Canadian intellectual property legislation; the time to respond to certain CIPO actions therefore had been previously extended to August 24th.

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Analysis

The Canadian Intellectual Property Office Issues Final Extension Until AUGUST 24th for IP Deadlines

The Canadian Intellectual Property Office (“CIPO”) has announced its final extension of the deadlines under the Patent Act, Trademarks Act and/or Industrial Design Act as a result of the COVID-19 outbreak. As we reported previously, March 16th to August 10th were considered “designated days” under the applicable Canadian intellectual property legislation; the time to respond to certain CIPO actions therefore had been extended to August 10th.

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