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Newsletters

About Brands Under Attack – Newsletter May 2021

While much as been said about the “right to be forgotten”, when it comes to branding, it is the contrary. You want to be remembered. But it comes at a price. And for brand owners, the price is that Canadian trademark Examiners can now use even mention of your brand by a third party on the internet to support the distinctiveness refusal of a Protocol Application.
OLLIP
May 14, 2021
Newsletters

About Brands Under Attack – Newsletter March 2021

The Beverage Industry Magazine recently reported 264% growth of online alcohol sales during the pandemic, giving the expression “hitting the bottle” a whole new dimension. In this and the next edition, we look at distinctiveness, how it is the Achilles heel of registrations and obstacle to Protocol Applications.
OLLIP
March 10, 2021
Newsletters

About Brands Under Attack – Newsletter February 2021

“There is more than one way to skin a cat” (so the proverb goes). Like the proverb, there is more than one way to secure a geographical descriptive mark. In this edition, we look at the obstacles faced by brands for wine, spirit, food, or other agricultural products that use the Madrid Protocol.
OLLIP
February 25, 2021
Newsletters

About Brands Under Attack – Newsletter August 2020

The famous Canadian children’s author Robert Munsch wrote “This is kindergarten! In kindergarten, we share! We share everything!” Families, like children in kindergarten, proudly share, share their names. However, sharing the family name as a brand with family members is the antithesis of branding. In last month’s issue as part of Brand Family Feuds series, we discussed the importance of ensuring that a family name adopted as a business brand be used in a way which makes it a brand. This month we look the case of CIBC v Stenner which illustrates another key issue family businesses must keep in mind when claiming a family name as a brand.
OLLIP
November 12, 2020
Newsletters

About Brands Under Attack – Newsletter July 2020

“A person’s name is to him or her the sweetest and most important sound in any language” So said Dale Carnegie. However, when used as a brand name, it can be bittersweet. Over the next three issues, we will be looking at steps businesses with family names should take or avoid with the family brand. As these businesses mature and involve other family members, there are changes and inevitably disagreements. The case of Miranda v. Miranda before the Federal Court of Appeal illustrates a key principle to bear in mind when establishing a family name as the brand for a business.
OLLIP
August 6, 2020
Newsletters

About Brands Under Attack – Newsletter June 2020

During the current public health crisis, the Canadian Intellectual Property Office (“CIPO”) remains open for business as usual. Canada acceded to the Madrid Protocol on June 17, 2019. As of May 4, 2020 CIPO began sending to the World Intellectual Property Office (“WIPO’) notification of possible opposition (“NPO”) against the first extensions of International Registrations into Canada (“Protocol Applications”). This means that the granting of protection for these Protocol Applications may be subject to opposition beyond the 18-month time limit for notifying WIPO of refusal of protection in Canada under the Madrid Protocol.
OLLIP
August 6, 2020
Newsletters

About Brands Under Attack – Newsletter May 2020

During the current public health crisis, the Canadian Intellectual Property Office (“CIPO”) remains open for business as usual. When CIPO receives a designation, it issues a courtesy letter to the World Intellectual Property Office (“WIPO”) representative that further correspondence regarding the Protocol application will be directly with the applicant or the appointed Canadian agent. Unlike in other jurisdictions, a Protocol Applicant without Canadian agent, will receive and CIPO will send to WIPO only a limited set of correspondence.
OLLIP
August 6, 2020
Newsletters

About Brands Under Attack – Newsletter Winter 2019

Every brand owner wants a uniform approach to protecting its marks around the world. The Madrid Protocol helps make that happen. But in Canada, unlike in many other jurisdictions, consent from the owner of a confusing mark will not overcome a confusion objection to registering a mark. That is the lesson from the Federal Court in Holding Benjamin et Edmond de Rothschild v. Canada (Attorney General). In Edmond de Rothschild, the Court found the consent to be incomplete and therefore too vague and unspecific.
OLLIP
November 12, 2019
Newsletters

About Brands Under Attack – Newsletter Spring 2018

Every brand owner wants a uniform approach to describing its goods and services around the world. The Madrid Protocol helps make that happen. But under Canadian trademark practice, uniformity can cost you a registration. The case of Supershuttle International, Inc. warns of this risk.
OLLIP
May 1, 2018