The crux of one’s rights in a trademark lies in use of the mark. Upon issuance of a trademark registration, we advise owners that it is important to use the trademark on an ongoing basis, as marks not used in Canada during a three-year period following registration may be vulnerable to expungement.

Often, trademark owners use their trademarks through related companies or subsidiaries. For such use to benefit the trademark owner, the use should be under license and the trademark owner must have control over the character and quality of the associated goods and services.

In a recent decision in Wheel Pros, LLC v. KTM Components GmbH, the Trademark Opposition Board held that use of a trademark by a licensed subsidiary enured to the benefit of the owner of the registration. In the affidavit evidence filed by the owner of the registration, the affiant swore that the owner exercised control over the character and quality of the associated goods. The party challenging the registration argued that the evidence did not sufficiently establish that the owner exercised control over the character and quality of the goods. The Board dismissed that argument, citing the Federal Court’s decision in Empresa Cubana Del Tabaco Trading v. Shapiro Cohen, which held that owners “can clearly swear to the fact that they exert the requisite control”. The Board concluded that the use by the licensed subsidiary enured to the benefit of the owner and the registration was maintained.

Those who have applied for, or are looking to apply for, industrial design protection in Canada should be aware that the Canadian Intellectual Property Office (CIPO) has updated its Industrial Design Office Practice Manual (IDOP) for clarity and to better reflect current office practice. The IDOP is the main source of information on how to prosecute an industrial design application and therefore these updates should serve to make the prosecution process clearer and smoother for applicants and their agents.

In particular, the IDOP has been updated to re-organize the section about “Communications with the Industrial Design Office” and to clarify or revise sections related to the appointment of agents, third-party correspondence, designs applied to sets, withdrawal requests for Hague applications, and corrections of Hague registrations.

The updated IDOP was published on 19 June 2025 and can be found here. A detailed summary of the updates can be found here.

Patentees and licensors should enforce their patent rights as quickly as they can to avoid possible issues of conflicting limitation periods. This is an update to our post of 28 February 2025.

In 2016, JL Energy Transportation Inc. (“JL”) commenced an action in Alberta against Alliance Pipeline and Aux Sable alleging that the Defendants had breached the licenses they entered into with JL and had infringed patents held by JL.

The Defendants succeeded in obtaining  summary dismissal of the claim in 2024 on the basis that the general two-year limitation period under the Alberta Limitations Act had expired. In 2025, JL was successful in overturning the summary judgment decision by arguing that the applicable limitation period should instead be the six-year limitation period set out in section 55.01 of the Patent Act, and not the two-year limitation period in the provincial Limitations Act. The Defendants have now sought leave to appeal to the Supreme Court of Canada.

Given the potentially uncertain and evolving legal landscape around applicable limitation periods for patent infringement actions, litigants should strive to commence legal action quickly to avoid complications with conflicting limitation periods, which may be costly and time-consuming to deal with.

Inventors, patent applicants, and patent assignees should carefully consider who the actual inventors of their patents are, or they may risk losing their patent rights altogether.

In 2023, the Federal Court found that the inventor listed on Canadian Patent No. 2,624,834 (the ‘834 Patent) had likely learned the ideas behind the inventive concept of the patent from one of his subordinates while working at Genesis International Oilfield Services Inc. After learning of the inventive concept, that “inventor”, John Ewanek, moved to a new company, which filed the ‘834 Patent with Ewanek listed as the sole inventor. The ‘834 Patent was later purchased by Canadian Energy Services L.P.

The Federal Court declared that Ewanek’s subordinate at Genesis was the actual inventor of the ‘834 Patent and that the successor company to Genesis was therefore the actual owner of the ‘834 patent.

Key evidence at the trial were the logbooks and records kept by the subordinate, which substantiated the fact that he was the actual inventor.

Canadian Energy Services unsuccessfully appealed the Federal Court decision to the Federal Court of Appeal, and has now sought leave to appeal to the Supreme Court of Canada. Litigating inventorship questions before the courts can be costly, which could have been avoided by carefully considering inventorship from the outset of filing or by conducting due diligence reviews of inventorship when purchasing a patent.

In Hello Nori Inc. v. Sushi Nozawa, LLC, 2025 TMOB 95, the Trademarks Opposition Board (the “TMOB”) refused an application to register a design mark featuring the words THE ORIGINAL HAND ROLL BAR in association with restaurant services.

Notably, a registration owned by the Applicant for the word mark THE ORIGINAL HAND ROLL BAR had been expunged for non-use just before this opposition decision (in Miller Thomson LLP v Sushi Nozawa, LLC, 2024 TMOB 179).

The Opponent opposed the application on the basis that, inter alia, the applied-for trademark was clearly descriptive or deceptively misdescriptive, and that the Applicant had not used and did not propose to use the mark in Canada.

Regarding the descriptiveness ground, the TMOB found that “the words of the Mark are its dominant portion, due to the relatively simple, basic nature of its design elements… I accept that one could reasonably conclude that the words of the Mark plainly, self-evidently describe … an “original hand roll bar” founded in 2014 in Los Angeles, either in a laudatory sense or in the sense that it is the first of its kind”.

Regarding the non-use ground, the TMOB concluded that “considering the fact that over five years have passed since the application was filed … and the fact that the Applicant’s word mark has been expunged for non-use, the evidence also calls into question whether the Applicant ever genuinely proposed to use the Mark in Canada”.

As a consequence of both the descriptiveness and non-use grounds being successful, the TMOB refused the application.

This decision from the TMOB is a reminder of the clearly descriptive/deceptively misdescriptive analysis in the context of composite trademarks, as well as the vulnerability of trademark applications to being opposed on non-use grounds.

A copy of the TMOB’s decision is available here: https://canlii.ca/t/kbvnn

On 4 June 2025, the Canadian Intellectual Property Office (“CIPO”) released a practice notice regarding the use of AI in proceedings before the Trademarks Opposition Board (“TMOB”).

In brief, the practice notice requires any party to a proceeding before the TMOB to provide a declaration if AI has been used to create any content in a document prepared for the proceeding and filed with the Registrar of Trademarks.  The declaration must be in the first paragraph of such document and state that the filing party has reviewed and verified all AI-generated content and cited authorities.  Failure to provide a declaration when required or providing a false declaration may lead to an award of costs against the filing party.   CIPO has noted that the TMOB currently does not use AI to render decisions or analyze evidence in any of its proceedings.

CIPO provided examples of content that the TMOB considers to be AI-generated. For instance, written representations drafted using AI or legal authorities selected subjectively by AI qualify as such. Similarly, the state of the register evidence generated subjectively by AI, such as by asking AI to “find other registered trademarks that resemble [X]”, falls into this category.  By contrast, the state of the register evidence produced by search queries with objective criteria, such as “find all currently registered trademarks containing the word [Y]”, is not considered AI-generated content.  Additionally, exhibits created by AI that were attached to an affidavit and documents dictated using voice recognition or speech-to-text software are exempt from the declaration requirement.

The practice notice is available here.

We previously reported on the significant changes to the Charter of the French Language introduced through Bill 96, which was enacted in June 2022.  Those changes are now set to come into force on June 1, 2025.

In an open letter published on May 28, 2025, the Retail Council of Canada (RCC) and the Canadian Federation of Independent Business (CFIB) appealed with the Quebec government to extend the deadline for businesses to conform to the new language laws.  Although Bill 96 was enacted in 2022, some of the specific rules, regulations and clarifications regarding the changes were only published in the summer of 2024.  Michel Rochette, President of the RCC for Quebec, noted that businesses were left with “barely a few months to adjust to significant requirements, particularly in terms of signage, municipal authorizations, validation by the (Office québécois de la langue française), and the management of cultural, specialized, and short-lived products”.  The Quebec government turned down the request for an extension.

We remind trademark owners that the most significant changes to the Charter of the French Language relate to trademarks appearing on products, product packaging and displays.  Registered trademarks or trademarks that are subject to pending trademark applications can appear on products or product packaging in a language other than French (except where there is a French version).  However, any generic or descriptive terms that are part of the trademark need to be translated. Unlike product packaging, displays are considered commercial advertising and French must have a much greater visual impact than any other language.

In Gold Line Telemanagement Inc. v. Ereele GmbH, 2025 FC 904, the Federal Court granted declaratory relief to the Plaintiffs on the basis that the Defendants had not established that certain works met the conditions for subsistence of copyright and that copyright was thus not enforceable against the Plaintiffs. The Plaintiffs operated a worldwide video streaming platform offering multicultural programming. The Defendants included an Austrian digital marketing company and an Iranian movie producer.

Beginning in 2020, the Defendants alleged that content on the Plaintiffs’ streaming platform infringed the Defendants’ copyright in a number of movies and television programs, all of which were produced in Iran. The Defendants also filed complaints with third party app stores alleging that the Plaintiffs’ streaming platform infringed copyright. As a result of these complaints, the Plaintiffs initiated these proceedings.

The Court held that, since the works at issue were produced in Iran, and Iran is not a treaty country for the purposes of the Copyright Act, copyright in the works was not enforceable in Canada as against the Plaintiffs.

The Plaintiffs also advanced a claim under section 7(a) of the Trademarks Act in respect of the complaints made by the Defendants to the app stores. That section prohibits the making of false and misleading statements tending to discredit the business, goods or services of a competitor. However, the Court held that the Plaintiffs failed to establish a causal link between the complaints and any damage suffered by the Plaintiffs.

Costs and disbursements of $76,600 were awarded to the Plaintiffs due to the Defendants’ failure to participate in the proceedings.

The decision can be found here.