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Intellectual
Property

CBA Intellectual Property Section

Articles are published by the Intellectual Property Section. Members interested in posting articles are encouraged to send them to the Section by email: CBAI_P@cba.org.

Today
Today

Case Summary: Appeal of section 45 decision allowed because of new material evidence

  • November 24, 2022
  • Hung Nguyen

Randy River owns a trademark registration for “R2” for shirts and shorts, among others. Osler initiated a section 45 proceeding against this registration. Randy River did not file any evidence of use. As a result, the Registrar expunged the registration. Randy River appealed the Registrar’s decision to the Federal Court of Canada.

Intellectual Property

Case Summary: Unreliable evidence resulted in invalidation of trademark registration

  • May 03, 2022
  • Hung Nguyen

iSpring filed an application to register APEC WATER for water treatment devices on April 23, 2015. It claimed a date of first use in Canada since August 4, 2012. Its application was advertised on September 21, 2016 and registered on April 26, 2017. On November 21, 2019, Advanced applied to register its trademark APEC WATER and learned of iSpring’s registration.

Intellectual Property

Case Summary: Leave to amend statement of opposition permitted during opposition hearing

  • February 15, 2022
  • Hung Nguyen

ZNSI applied to register ZARA, based on use in Canada. Industria opposed based on its earlier filed application for ZARA HOME. Industria erroneously relied on section 16(3) of the old Trademarks Act, which applies to proposed use applications, instead of section 16(1), which applies to use based applications, as applicable in this case.

Intellectual Property

Case summary: Federal Court partially grants request for default judgment

  • May 13, 2021
  • Hung Nguyen

On August 4, 2020, in TFI Foods Ltd v Every Green International Inc., 2020 FC 808, the Federal Court (the “Court”) issued an order enjoining Every Green International Inc. (“Every Green”) from offering for sale, selling, and/or labelling products bearing the trademark I-MEI Design with labels identifying Every Green as the exclusive distributor of I-MEI Foods Co, Ltd. Every Green did not comply with this order and took no further steps in its defense of the action.

Intellectual Property

Case Summary: Federal Court of Appeal reviews motion for extension of time

  • May 12, 2021
  • Hung Nguyen

Spectrum opposed Schneider’s application to register WISER. The Registrar allowed, in part, Spectrum’s opposition. Under the Trademarks Act, Spectrum and Schneider each had two months from the date of the Registrar’s decision to file an appeal.

Intellectual Property

Case summary: Costs awarded to plaintiff following defendant’s discontinuance of counterclaim

  • February 25, 2021
  • Hung Nguyen

The Plaintiff seeks costs, following the Defendant’s filing of a Notice of Discontinuance to discontinue their counterclaim. The Defendant argues that the Plaintiff is not entitled to costs because those costs were already addressed in a previous court Order, and also because the items in the Plaintiff’s Bill of Costs do not exist in the list of items provided in Tariff B of the Federal Courts Rules, SOR/98-106 (FCR).

Intellectual Property