Elizabeth S. Dipchand and Dan Pollack participate in the IR Global Jurisdictional Guide to Trademark & Copyright

Elizabeth DipchandPartner, Dipchand LLP


Intellectual property and the challenges of globalisation 

When the US Supreme Court recently ruled that Booking.com could trademark its domain name, the decision was a game changer for online businesses the world over.

The court decided by an 8-1 ruling that adding a “.com” combination to a generic word is no longer restricted under US trademark law. The US Patent and Trademark Office had initially denied the registration by Booking.com, arguing generic names were ineligible for trademark protection. However, this was overturned by the court which stressed consumers did not view booking.com as a generic term but as a brand offering online hotel reservations. Following the ruling, Booking.com said the decision was a good example of how the legal system can evolve to reflect the complexities of the digital age, heralding the successful conclusion of the case as a victory for any brand owner who has invested to build a global, digital brand.

Although the ruling will have a huge impact on trademarks far beyond the borders of the US, global intellectual property legislation remains a patchwork of interlinked bilateral and multilateral agreements that work in tandem with national laws in different jurisdictions.

Do you see any emerging trends or potential upcoming developments in your country’s trademark law?

Sweeping amendments to Canada’s Trademarks Act came into force in June 2019, effectively harmonizing our national laws with the international landscape. There are a number of important changes to the Canadian trademarks system that we ably navigate our clients through every day

For the first time, Canada has become a contracting state of the Madrid Protocol, making available to Canadian applicants a path through a single filing to registration in over 92 contracting states. Through the Madrid Protocol, Canadian applicants will be able to file for an international Madrid application with the World Intellectual Property Organization which may subsequently be the basis for trademark registration in contracting states. Concurrently, the Canadian Intellectual Property Office will accept and examine international Madrid applications seeking Canadian trademark registration.

As well, Canada has adopted the Nice Classification. Canadian applicants are now required to classify their claimed goods and services in their trademarks applications in accordance with the Nice Classification system. Upon renewal, owners are now required to amend their registrations to add the Nice Classification to their claimed goods and/or services. At this time, it is permissible for goods and/or services to be deleted from the registrations.

One final significant change was made to the scope of the definition of “trademark” which has been significantly broadened to encompass marks that function as an indicator of source including colour per se, holograms, moving images, sounds, scents, tastes, textures, and potentially more. It is important to note that these marks will be subject to a distinctiveness assessment during prosecution; challenges to registration may be mitigated by the applicant through the submission of evidence of extensive use and promotion.

In your jurisdiction, what options are available to a trademark holder when applying rights or enforcement rights? What protection is there for unregistered names and/or brands?

The Federal Court of Canada has exclusive jurisdiction to hear cases pursuant to the Canadian Trademarks Act involving the statutory grant of rights, registration and expungement. However, traditional trademark litigation involving infringement can concurrently be heard before the Federal Court as well as Canada’s provincial courts.

Additionally, claims alleging passing-off may also be brought before both the Federal Court and Canadian provincial courts, a cause of action initially founded in common law, then subsequently statutorily enshrined. Passing-off may be established where the owner of an unregistered trademark, having garnered reputation and goodwill through its use, may assert against a third party the unauthorized use of an identical or confusingly similar mark.

Copyright infringement claims can be asserted in both Canadian court systems (federal and provincial). Unlike the United States, copyright registration is not required to assert a claim for copyright infringement or to be entitled to certain remedies. Another important difference between Canada and the United States (along with the EU) is that the standard term of copyright in Canada for most works is the life of the author plus 50 years (it is life + 70 years in most jurisdictions), but the term will be extended to life + 70 years with the implementation of the USMCA (the new NAFTA trade agreement), which is expected to occur later this year. Canada has up to 2.5 years from the date of entry into force of USMCA to implement the copyright extension provisions.

How is global innovation and digitalization shaping the advice you give your clients and what should they be aware of?

Over the last decade, innovation and digitalization have been the drivers for our clients’ increasingly global perspective. With this shift, the importance of coordinating strategic legal advice with the execution of a venture’s business plan cannot be overstated; this coordination must take into account the practical global realities arising from our interconnectivity through technology.

In terms of trademarks and copyrights, our advice focuses on mitigating the real risks of improperly coordinating these rights in important jurisdictions. It is critical to manage and enforce these rights by supporting proactive monitoring efforts. Two factors have increased in prominence over the last few years, namely (1) an increase in the number of incidences of counterfeit, grey-goods coupled with online infringement; and (2) the sweeping changes made to the Canadian trademarks regime.

The integration of global digital marketing coupled with the diversification of manufacturing and distribution channels in different countries have led to new counterfeiting vulnerabilities. Due to this, our recommendations will always focus on the coordination of our clients’ business operations – manufacturing, distribution, marketing relationships – with a legal strategy to maintain control over their intellectual assets for years to come.

The harmonization of the Canadian trademarks system has created an opportunity for trolls and rogues; with the removal of the obligation to provide information about use and use abroad, speculative applications are on the rise. Trademark owners must be vigilant against the unappropriated filing of conflicting or even identically usurped trademarks. By taking a proactive approach, clients will be able to enforce their rights more cost effectively, through contentious proceedings before the Canadian Intellectual Property Office, rather than the more expensive and time consuming litigation proceedings involving infringement and expungement, all of which are on the rise.

With the rise of increasingly integrated operations, production, distribution and marketing of our clients’ products and services in different jurisdictions, our firm’s international capacity and network has remained critical to supporting their efforts over the years.

Contributing Advisors

Dan PollackPartner, Dipchand LLP