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Intellectual
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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: “Do not worry in Canada” Chinese registration invalidated

  • November 18, 2024
  • Hung Nguyen

Huang owned a 2008 trademark registration for Chinese characters, which translated to “do not worry in Canada.” In 2017, Huang filed an extension application to add book publishing and website hosting services to its 2008 registration. The extension application registered in 2018. In 2020, Huang’s original 2008 registration was expunged for non-use; the extension registration however remained.

Intellectual Property

Federal Court grants default judgment to Burberry and Chanel

  • November 01, 2023
  • Hung Nguyen

Burberry Limited and Chanel Limited (“Plaintiffs”) brought an action in Federal Court against Juvilyn Ward and Kevin Ward (“Defendants”), for importing, offering for sale and selling counterfeit BURBERRY and CHANEL clothing and fashion accessories.

Intellectual Property

Case Summary: Legal test for assessing use of a mark for services in Section 45 proceedings clarified

  • February 24, 2023
  • Hung Nguyen

7299362 Canada owns a trademark registration for ALEXA TRANSLATIONS for consulting services in the field of corporate finance (“Corporate Finance Services”), web development services (“Web Development Services”), and software as a service (SAAS) provider in the field of language translation” (“SAAS Translation Services”), among others.

Intellectual Property

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