The decision of Justice Near in BBM Canada v. Research In Motion Limited was released yesterday. The proceeding against RIM for trademark infringement and depreciation of BBM Canada’s registered marks was brought by way of application rather than by way of action. The Court dismissed the proceeding and awarded costs in favour of RIM. Continue reading Trademark Infringement Application
Trademark filings for 2011 were up about 7% from 2010. The percentage of trademark applications filed directly by the applicant increased from about 17% in 2010 to about 20% in 2011. My list of the top trademark firms by volume is now available for 2011. Continue reading Canadian Trademark firms in 2011
Canadian lawyers disputed the ownership of the domain name <fertilitylawcanada.com> under the UDRP and in an arbitration decision released yesterday, the panel held that common names for areas of legal practice are generally non-distinctive and there was no secondary meaning in this case.
The Ontario Court has released a decision this week in The Commissioner of Competition v. Yellow Page Marketing, 2012 ONSC 927 which found that, contrary to the Competition Act, the respondents had made material false or misleading representations intending to deceive Canadians into believing they were dealing with the Yellow Pages Group, owner of the Yellow Pages trademark and walking fingers design.
From the Ontario Court, in Paradigm Shift Technologies Inc. v. Alexander Oudovikine, 2012 ONSC 148, the court rejected a motion for an interlocutory injunction on alleged trade secrets held by an ex-employee. In Boulangerie St-Méthode v. Boulangerie Canada Bread, 2012 QCCS 83, the Quebec Court considered distinctiveness and descriptiveness of the mark « sans gras sans sucre » for bread.
This morning, the Supreme Court of Canada denied leave in Osmose-Penotox Inc. v. Société Laurentide Inc. (SCC #34175), where an appeal was sought from the Federal Court of Appeal’s decision in 2011 FCA 31. The issues in the appeal appear to have been related to the scope of discovery in a bifurcated proceeding. The Federal Court of Appeal had written:
 With respect, I think the appellant fails to understand that the respondent’s missing letter to Rona, even if its content was assumed to be most favorable from the perspective of the appellant, is not relevant at the first stage of the proceedings. The determination of the validity of the registration of the appellant’s trade-mark entails a legal determination over which the beliefs of the respondent, whatever the self-serving or even incriminating terms in which they have been expressed in the response letter, carry no influence. The same holds true for the determination of the respondent’s liability should the trade-mark be found to be valid and to have been infringed.
 Before concluding, I think it is fair to say that the debate between the parties, which so far has been going on for at least eight years, has been acrimonious. … The parties should understand that the time has now come to move this case to trial without further interruption.
More information about these and other intellectual property proceedings at the Supreme Court are available on my Supreme Court litigation page.
CIRA has announced that they are implementing a new set of policies and rules for domain name disputes. The new CDRP includes changes to the meaning of “use”, “confusingly similar” and “bad faith” along with a host of other changes and will come into force August 22, 2011.