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020 bcca 323 39550 the lower courts in the province of british columbia both at the trial level and on appeal had held that the appellant s use of certain licensed trademarks owned by the respondent outside of the precise terms of the parties sales representative agreement constituted infringement and passing off as a result of the scc s dismissal the bc court of appeal decision now stands this case serves as a good reminder for licensees to carefully review trademark license provisions in sales representative product distribution and similar agreements for their specific terms relating to permitted use of relevant trademarks and to consider the risks of using such trademarks outside the activities specifically permitted in such agreements the respondent in this case is a well known vancouver based real estate company royal pacific group consisting of royal pacific real estate group ltd and royal pacific realty kingsway ltd owner of the registered trademark royal pacific logo and the unregistered trademarks royal pacific and royal pacific realty collectively the trademarks in 2012 royal pacific group entered into a sales representative agreement the sra with the appellant mr steven dong the mr dong pursuant to which mr dong was licensed to act as a real estate representative for royal pacific group however in 2013 royal pacific group discovered that mr dong had without the knowledge or consent of royal pacific group launched a separate referral platform for real estate professionals under the name bliip box the website for this service used the domain name royalpacific co and displayed the trademarks mr dong was also sending emails to third parties containing the trademarks and the following language royal pacific realty is one of bc s largest brokerages and now we are looking to endorse local businesses on our bliip box shortly after this discovery royal pacific group sent a cease and desist letter to mr dong demanding that he take down the website and cease using the domain name royalpacific co when there was no immediate compliance royal pacific group also sent notice of termination of the sra however mr dong continued to operate the website at royalpacific co as well as a related facebook page royalreferrals that also displayed the trademarks the bc supreme court 2018 bcsc 1272 held that mr dong was liable for infringement and passing off as the sra did not grant mr dong rights to use the trademarks in connection with his bliip box business which was outside the scope of his activities as a sales representative moreover the judge rejected mr dong s arguments that royal pacific group had provided consent or acquiesced to such use according to the trial judge at para 100 mr dong has failed to appreciate the difference between his using the trade mark in connection with his duties as a sales representative of royal pacific group and using it in a manner that represents that there is an association between the royal pacific group and the bliip box technology or other businesses that mr dong was pursuing the trial judge further noted at para 120 120 that in the context of the vancouver real estate industry in which royal pacific group has a well recognized name and reputation u se of the domain name royalpacific co for the website together with numerous references to aspects of royal pacific group s business and the fact that the webpage was offering real estate related products would have caused confusion in the mind of an ordinary hurried consumer who could have confused the owner of the website with the royal pacific group the bc court of appeal upheld the lower court s decision further dismissing a counterclaim brought by mr dong that royal pacific group had wrongfully denied him the right to use the trademarks and had terminated the sra for an unlawful purpose by dismissing mr dong s appeal the scc has tacitly agreed with the decision of the bc court of appeal the lesson arising out of this decision is that parties to agreements such as sales representative agreements which contain provisions relating to and restricting use of trademarks need to carefully consider whether any proposed activities will be offside the license provisions relating to such trademarks cipo targets canadian trademark prosecution backlog may 6 2021 may 6 2021 by neil melliship in cipo foreign protection legislation registration trademark practice the canadian intellectual property office cipo published two new practice notices on may 3 2021 aimed at tackling the impact of its significant and growing backlog of canadian trademark applications filed under the national as opposed to the madrid system following canada s june 2019 accession to the madrid protocol system for filing trademark applications in multiple jurisdictions at the same time applicants who file applications in canada using the national non madrid system have experienced increasingly lengthy delays in the initial and subsequent prosecution of their applications the average time from the date of filing an application under the non madrid system to first examination is currently in the 28 30 month range and there are fears that delay may increase over the next few years this stands in stark contrast to applications designating canada pursuant to the madrid system which under the terms of canada s accession to madrid must be examined within 18 months of filing the reasons behind this significant difference are varied and complex while it certainly wasn t cipo s intention or desire a two tiered system has arisen with applicants who make direct national filings in canada being significantly disadvantaged in contrast to those applicants who are able to utilize the madrid system to its credit cipo has recognized the untenable situation that has arisen the publication of these two practice notices is an attempt by cipo to correct course expedited examination requests the first practice notice provides that cipo will begin accepting requests for expedited examination of trademark applications the reasons justifying the grant of such a request include the applicant requiring registration of its trademark in order to protect its intellectual property rights from being severely disadvantaged on online marketplaces a pending or anticipated court action in canada with respect to the trademark and the applicant being in the midst of combatting counterfeit products bearing the trademark at the canadian border it remains to be seen how much of cipo s already limited examination resources will be diverted away from prosecution of applications to responding to requests for expedited examination it should be noted that this new provision for expedited examination requests is in addition to the ability to request expedited examination of applications for marks that include goods or services related to covid 19 measures to speed up examination the second practice notice sets out three specific measures that cipo has adopted to speed up processing of applications first examiners will now provide fewer examples of goods and services descriptions that would be considered acceptable when issuing an objection to such descriptions the second is that priority will be given to applications that include statements of goods services that are selected from a pre approved list the third measure will see examiners being required to maintain a particular submission or argument only once if an applicant s response to an initial examiner s report doesn t adequately address all of the examiner s objections a final refusal will be issued rather than another examiner s report maintaining the initial objection the impetus is now on applicants and their counsel to advance all arguments in response to an examiner s report rather than piecemeal the efficacy of the above measures will take time to play out and the proof will be in the proverbial pudding watch this space for updates on cipo s progress in reducing its trademark prosecution backlogs wheat kings and alleged wrongdoings the tragically hip sues mill street over 100th meridian beer february 16 2021 february 17 2021 by david bowden in famous marks litigation protection enforcement on february 9 2021 the incorporated better known as the tragically hip or the hip filed a statement of claim the claim in canada s federal court alleging trademark infringement copyright infringement passing off and other causes of action against mill street brewing the claim has been previously reported in canadian media read more bricks and mortar or online order federal court of appeal decides what constitutes trademark use in association with hotel services september 11 2020 february 17 2021 by david bowden in case law cipo trademark practice over the last few decades courts in canada have grappled with whether hotel services and motel services can be performed in canada in the absence of physical hotel premises in the country in its decision in hilton worldwide holding llp v miller thomson llp 2018 fc 89 hilton worldwide fc the federal court of canada the court found that in some circumstances such services can indeed be performed in canada even in the absence of a physical hotel in canada on appeal to the federal court of appeal the court of appeal in miller thomson v hilton worldwide holding llp 2020 fca 134 hilton worldwide fca the court of appeal agreed and affirmed most of the earlier findings of the court read more cipo issues blanket extension to trademark deadlines again until august 31 2020 august 21 2020 august 21 2020 by athar k malik in cipo legislation trademark practice after previously announcing what was supposed to have been the final for now blanket extension of time the canadian intellectual property office has made yet one further automatic extension effectively until august 31 2020 this is to account both for continuing covid 19 disruptions and certain critical maintenance to cipo s systems which was to occur at the end of the previous final automatic extension and would have meant cipo s online and fax services would have been unavailable for a period these extensions now effectively cover deadlines falling between march 16 2020 and august 30 2020 no further automatic extensions are anticipated in the short term though should the evolving situation with the pandemic warrant we may see these again as we noted when cipo made its last announcement further extensions of time may still be available on a case by case basis due to exceptional circumstances that are beyond the control of the person concerned in addition to any standard extensions of time that may be available as a best practice we recommend still meeting the original deadlines for all canadian trademark matters where possible clark wilson llp s trademark group remains accessible and available to assist and is working to meet such deadlines where we have timely instructions cipo s latest announcement on these automatic extensions first made march 17 2020 and last updated august 19 2020 can be found here cipo issues notice of final blanket extension for now august 6 2020 august 6 2020 by jeffrey vicq in cipo legislation trademark practice the canadian intellectual property office has just published notice of its decision to further extend the designated days period on account of continuing covid 19 disruptions since the onset of the pandemic in canada in early march cipo has issued nine such notices effectively creating a blanket extension of all cipo deadlines arising since then this latest extension will expire on august 21 2020 which means all deadlines falling between march 16 and august 23 will now come due on august 24 assuming of course they haven t already been addressed in a departure from its prior notices cipo has indicated that this is the last blanket extension it intends to grant for the time being however cipo s standard extension practice notice does provide for extensions of time in exceptional circumstances that are beyond the control of the person concerned so it may be possible for applicants to obtain further extensions on individual matters some explanation of unique hardship however will likely be necessary to justify the extension request pointing merely to the existence of the pandemic will likely not suffice careful case by case consideration should be given to the deadline faced to ensure the appropriate response cipo again extends trademark deadlines due to covid 19 until august 10 2020 july 17 2020 july 17 2020 by athar k malik in cipo legislation trademark practice now for the eight time the canadian intellectual property office has again extended its earlier automatic extensions on account of continuing covid 19 disruptions until at least august 10 2020 the previous and seventh extension discussed here these extensions now effectively cover deadlines falling between march 16 2020 and august 9 2020 yet again cipo has not indicated this is the last automatic extension and therefore further extensions are likely though not certain as a best practice we recommend still meeting the original deadlines for all canadian trademark matters where possible clark wilson llp s trademark group remains accessible and available to assist and is working to meet such deadlines where we have timely instructions cipo s latest announcement on these automatic extensions first made march 17 2020 and last updated july 15 2020 can be found here posts pagination 1 2 3 4 5 6 7 45 next categories categories select category branding case law cipo counterfeit goods domain name disputes domain names famous marks foreign protection legislation litigation protection enforcement registration trademark oppositions trademark practice uncategorized archives archives select month may 2021 february 2021 september 2020 august 2020 july 2020 june 2020 may 2020 april 2020 march 2020 january 2020 december 2019 october 2019 september 2019 august 2019 june 2019 march 2019 december 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