Ecolab USA Inc. (the “Plaintiff”) was partially successful in establishing infringement, depreciation of goodwill, and passing off of its registered trademark ECOLAB by 2431717 Ontario Inc., which carried on business under the name 3D Eco Chemical Labs Canada (the “Defendant”). The Defendant had used a series of trade names and trademarks that included 3D ECO LAB, 3D ECO LABS, 3D ECO CHEMICAL LABS CANADA, 3D ECO CHEMICALS LABS CANADA, and a design mark comprising 3D ECO CHEMICAL LABS CANADA. Both the Plaintiff and the Defendant sold cleaning and disinfecting products.

The Defendant failed to file a Statement of Defence or any other documents in the proceeding.

The Court held that the Plaintiff had provided sufficient evidence to establish infringement, passing off, and depreciation of goodwill of its registered trademark in relation to the Defendant’s use of the marks 3D ECO LAB and 3D ECO LABS, but not with respect to the other trademarks and trade names used by the Defendant. The Court granted injunctive relief and delivery up or destruction of material with respect to those marks, as well as transfer of the domain name www.3decolabs.com to the Plaintiff.

The Court also reviewed past decisions on ordering compensatory damages in default judgment cases, where the plaintiffs were deprived of discovery and the ability to determine the scope of a defendant’s infringement and profits. Based on this review and having regard to the duration of the infringing activities and the Plaintiff’s sales during that period, the Court awarded $15,000 in compensatory damages.

The full decision is reported here.

In Poseidon, LLC v. Canada (Commissioner of Patents), 2025 FC 225, Poseidon, LLC (“Poseidon”) sought an order under section 22 of the Industrial Design Act (the “Act”) to reinstate two of its industrial design registrations that expired due to failure to pay maintenance fees. Poseidon contended that the registrations expired because of errors on the part of the Canadian Intellectual Property Office (CIPO).

Since Poseidon’s registrations were registered in 2015, the previous version of the Act applied in this case. The current version of the Act came into force in 2018. However, section 22 was not amended as between the previous and current versions of the Act. Section 22 of the Act provides:

22(1) The Federal Court may… at the suit of any person aggrieved by any omission without sufficient cause to make any entry in the Register of Industrial Designs, or by any entry made without sufficient cause in the Register, make such order for making, expunging or varying any entry in the Register as the Court thinks fit, or the Court may refuse the application.

The Court noted that “there is little jurisprudence on a proceeding under section 22 in the circumstances of this case – namely a party seeking to reinstate registrations that expired due to the non-payment of maintenance fees”. In this regard, the Court applied an earlier decision in deciding to treat the proceedings under section 22 of the Act like an appeal under section 56 of the Trademarks Act, thus allowing the Court to consider new evidence. Notably, the Court concluded that:

Based upon the direction in Rothbury, Hilton and Clorox and the wording of section 22, I accept that the Court has jurisdiction to rectify an entry in the Register of Industrial Designs that is made “without sufficient cause” if there is material new evidence that is “sufficiently substantial and significant” and “of probative value” (Clorox at para 21; Hilton at para 53). Meaning that if the “expired” notation was made “without sufficient cause” and there is material new evidence to support a “without sufficient cause” finding, then section 22 gives the Court jurisdiction to rectify the Register.

In reviewing the evidence in this case, the Court stated that it did not find evidence that the maintenance fees were paid and that the evidence showed that the failure to pay the fees was due to human error on the part of Poseidon’s agents and not due to any failure of the CIPO’s processes or systems. Accordingly, the Court concluded that there was no material new evidence to support a finding that it should exercise its jurisdiction under section 22 to rectify the Register, and dismissed the action.

This decision provides guidance in the scope and operation of section 22 of the Act and how an expired industrial design registration may, in certain circumstances, be potentially reinstated under this provision.

The decision can be found here.

In a decision issued on 16 December 2024 in Limbic Media Corporation v. Lutron Electronics Co., Inc. 2024 FC 2041, the Federal Court held that use of a trademark in advertisements was not sufficient to show use of a trademark for goods.

Limbic Media Corporation owned a registration for the trademark AURORA for use in relation to “electric lighting fixtures”. At the request of Lutron Electronics Co., Inc., the Registrar of Trademarks issued a notice under section 45 of the Trademarks Act requiring that Limbic show use of the trademark in Canada within the preceding 3 years. In response to the notice, Limbic provided a statutory declaration depicting screenshots from its website.  In a decision issued 26 February 2024, the Registrar of Trademarks ordered the registration expunged, noting that displaying the trademark on Limbic’s website was not enough to demonstrate trademark use, as the Registrar could not infer that customers were able to purchase the goods from the website.

In an appeal before the Federal Court, Limbic argued that the combination of Internet evidence, invoices, and sales reports demonstrated sales in Canada and that the trademark was associated with the goods.

The Federal Court dismissed the appeal and noted that although the evidence showed that sales occurred in Canada, Limbic did not demonstrate that the trademark was associated with the goods at the time of transfer of the property or possession of its products. Displays of the trademark on the website may be used as evidence of use only if customers are able to purchase goods on the website. Otherwise, website displays may be considered mere advertisements for the goods. It was also noted that an invoice may establish use of the mark in association with the goods, but only if the evidence shows that the invoice accompanied the goods at the time of transfer.

The Trademarks Opposition Board (the “TMOB”) has refused trademark applications for the marks AGX and AGX COIN because they were considered to be confusing with previously registered trademarks for the mark AGF.

The Applicant, LODE Global Corporation, had filed applications for the marks AGX and AGX COIN in association with goods and services relating to digital and virtual currency. The Opponent, AGF Management Limited, owned registrations for various AGF marks in association with financial services, including the management of investment and mutual funds. The statements of opposition filed by the Opponent alleged that the Applicant’s trademarks were confusing with the Opponent’s AGF trademark registrations.

In its decision, the TMOB reviewed the factors for confusion set out in s. 6(5) of the Trademarks Act. The TMOB concluded that the AGX marks and the AGF marks were confusing given the high degree of resemblance between the marks, the longstanding and extensive use of the Opponent’s AGF marks, and the overlap in the nature of the parties’ goods and services.

Regarding the degree of resemblance between the marks, the TMOB was of the view that none of the marks possess a particularly striking or unique aspect to them and that the marks’ similarities outweighed their differences.

In terms of the nature of the parties’ goods and services, the TMOB noted that it was ultimately the statement of goods and services in the Applicant’s applications and the Opponent’s registrations that govern the assessment of the likelihood of confusion. The TMOB concluded that there were no restrictions in the statement of goods and services in the Opponent’s registrations that would rule out the Opponent’s ability to incorporate technologies similar to those of the Applicant in the Opponent’s provision of its financial services.

A copy of the decision is available here.

The Trademarks Opposition Board (the “TMOB”) has refused a trademark application for DOGKIND because it was considered confusing with a previously registered trademark for PETKIND.

The Applicant, Dogkind Services Inc., applied for the DOGKIND mark in association with pet-related services. PetKind Pet Products Inc., the Opponent, owned a registration for the trademark PETKIND, which was registered in association with pet-related goods and services.

Upon the DOGKIND application being advertised, a statement of opposition was filed by the Opponent alleging, inter alia, that the Applicant’s trademark was confusing with the Opponent’s PETKIND trademark registration.

In its decision, the TMOB reviewed the factors for confusion laid out in s. 6(5) of the Trademarks Act. Although the TMOB acknowledged that the case was “at best, borderline”, particularly given the lack of inherent distinctiveness of the marks at issue and the limited evidence of use provided by the Opponent, the TMOB nonetheless concluded that PETKIND and DOGKIND were confusing with each other. The TMOB concluded that there was confusion due to the degree of similarity between the two marks (given the similarity in ideas suggested by the prefixes DOG- and PET- in the two marks), as well as the similarity between the goods and services at issue.

The decision is a reminder of the fact-specific nature of determining whether two trademarks are confusing with each other. It is also an important reminder of the drawbacks of selecting a trademark with a low degree of inherent distinctiveness.

A copy of the decision is available here.

The federal government has announced that recent amendments to the Trademarks Act and the Trademarks Regulations (discussed previously here) will come into force on 1 April 2025.

Significant changes include:

• a requirement to show use in order to enforce a trademark registration within the first three years after registration, unless special circumstances exist to excuse the absence of use;
• a mechanism to remove official marks that are owned by entities that no longer exist or are not public authorities;
• the ability of the Registrar to award costs in opposition, section 45 and objection proceedings;
• the ability of parties to request confidentiality orders in opposition, section 45 and objection proceedings;
• the ability of the Registrar to order case management in opposition, section 45 and objection proceedings; and
• the removal of the automatic right to file additional evidence in appeals of the Registrar’s decisions at the Federal Court.

The full list of amendments to the Trademarks Regulations may be found here.

The Alberta Court of Appeal has clarified the applicable limitation period for patent infringement claims commenced in Alberta courts in its recent decision of JL Energy Transportation Inc. v. Alliance Pipeline Limited Partnership, 2025 ABCA 26.

In this case, the Court of King’s Bench had applied a two-year provincial limitation period to the action and dismissed the case on a summary basis. However, the Court of Appeal held that the six-year limitation period under Section 55.01 of the Patent Act applied to patent infringement claims, regardless of whether the case is brought in provincial or federal court. This decision overturned an earlier 2024 Alberta Court of Appeal decision that had applied a two-year provincial statutory limitation period in such cases.

The Court of Appeal held that the Alberta Limitations Act did not apply to causes of action created under federal legislation and which had their own limitation period. Also, the Court of Appeal found that applying different limitation periods based on where an action was brought would be contrary to legislative intent.

As a result, the Court of Appeal allowed the appeal and permitted the action to proceed.

The full case can be found here.

In Bell Media Inc. v. John Doe 1 (Soap2day), 2025 FC 133, the Federal Court provided its reasons for a site-blocking order it granted on December 16, 2024, which requires various Internet service providers (ISPs) to prevent access to websites associated with online piracy platforms operated under the brand Soap2Day.

The Order allows the Plaintiffs (a group of movie and television studio companies) to amend the Order with a simplified motion to add further domain names, subdomains, and/or IP addresses to a list of blocked websites. The Order is intended to address a growing trend observed by the Plaintiffs of new copycat infringement platforms immediately replacing platforms that have been successfully shut down. Such activity circumvents so-called “static” orders previously issued by the Court, which had to specify particular domains associated with a platform.

The Court stated that any sites added to the Order must “make infringing content available to the public, [be] unresponsive to notices of infringement, and operate in substantially the same way as the existing sites” (see paragraph 10 of the Reasons).

The Reasons for the Order and the Order are reported here.

Following Canada’s accession to the Madrid Protocol, the Canadian Intellectual Property Office (CIPO) experienced a higher than anticipated number of trademark applications, resulting in significant delays for examination of new applications.

Over the years, the CIPO implemented a number of measures to reduce the wait times, including hiring new examiners and using artificial intelligence tools.

Recently, the CIPO published updated information on their website regarding the forecasted processing times for new trademark applications. For trademark applications filed in February 2025, the forecasted wait times for examination are approximately:

• 13 months for applications filed using the pre-approved list of goods and services and for Madrid Protocol applications (based on the date of WIPO’s notification of designation); and
• 14 months for applications filed not using the pre-approved list of goods and services.

These forecasted wait times for examination of trademark applications not using the pre-approved list of goods and services would mark a significant improvement in wait times, as the CIPO is currently only examining such applications filed in February 2022 (i.e. around 36 months ago).