In this article, we review a number of notable Canadian trademark cases from 2024 and highlight key developments in Canadian trademarks practice.
Table of contents
Notable Canadian trademark cases
- Promotion in Motion, Inc v Hershey Chocolate and Confectionery LLC, 2024 FC 556
- Novartis AG v Biogen Inc, 2024 FC 52
- Little Brown Box Pizza, LLC v DJB, 2024 FC 1592
- 51.ca Inc v Chun Huang, 2024 FC 1202
- Amer Sports Canada Inc v Adidas Canada Limited, 2024 BCSC 3
Key developments in Canadian trademarks practice
- Substantial reduction in examination delays
- CIPO’s new Specificity Guidelines for goods and services
- CIPO’s pilot project on Registrar-initiated non-use cancellation proceedings
- CIPO’s pre-assessment letters regarding unclassified registrations
Notable Canadian trademark cases
1. Promotion in Motion, Inc v Hershey Chocolate and Confectionery LLC, 2024 FC 556
This decision provides valuable guidance on the design and execution of online surveys intended to assess trademark confusion.
Promotion in Motion (PIM) sought to register the trademarks SWISSKISS and SWISSKISS & Design, reproduced below, in association with “chocolates of Swiss origin:”
At the Trademarks Opposition Board, the opponent, Hershey, successfully opposed PIM’s applications based on several KISS and KISSES trademarks, registered in association with chocolate candy.
On appeal to the Federal Court, both parties filed new evidence, including the results of surveys conducted via the Internet. In dismissing the appeal, the Federal Court decided that these surveys were not designed correctly and thus inadmissible. The Court noted that expert evidence, such as surveys, must meet certain criteria, including being “relevant” and not prohibited by an “exclusionary rule.”
With respect to “relevance,” the Court noted that surveys are relevant where they are “reliable” and “valid.” In assessing validity of the survey evidence, the Court noted that there were serious design flaws that rendered the surveys invalid:
- Both parties’ surveys did not provide sufficient assurances that the screened participants were actually the ones who answered the questions. The Court noted that, for in-person surveys, the interviewer can confirm that the screened participants are answering the questions themselves, free from external influences (such as mobile phones). The online survey, without a person-in-the-loop or video of the participants answering the questions, did not provide similar assurances.
- The questions in PIM’s surveys were drafted with reference to “Swiss chocolate,” which “primed” participants to consider Swiss chocolate brands, likely lowering the likelihood that participants would consider non-Swiss chocolate brands, such as Hershey.
- PIM’s online surveys allowed participants to click the “back” button, and the experts who designed the surveys were unable to explain whether participants could simply click “back” and further review the two trademarks. Because the test for confusion between two trademarks is that of an “imperfect recollection of a trademark of a casual consumer in a hurry,” a survey that allows participants to further review the trademarks at issue “is no longer testing their imperfect recollection of the mark shown, nor are the consumers somewhat in a hurry as the legal test requires.”
In assessing reliability, the Court found that these design flaws also limited the reliability of the parties’ surveys, as the Court was not confident that similar results would occur if the surveys were conducted in person. It was also unclear whether the results accurately reflected the entire relevant population.
When discussing whether the surveys were prohibited by an “exclusionary rule,” the Court found that the surveys were inadmissible hearsay evidence. The design flaws were a fundamental issue because the surveys did not provide assurances that the screened participants personally provided the responses attributed to them in a controlled environment, free from external influence.
Ultimately, the Court deemed the surveys inadmissible. Upon review of the remaining issues, the Court found that the Trademarks Opposition Board had not committed any errors and dismissed the appeal.
This decision is under appeal to the Federal Court of Appeal.
2. Novartis AG v Biogen Inc, 2024 FC 52
This decision is a good example of the application of the tests for trademark infringement, passing off, and depreciation of goodwill in the pharmaceutical context.
Novartis owns a registration for the trademark BEOVU (No. TMA1072372), which it uses in association with an anti-vascular endothelial growth factor (anti-VEGF) biologic drug approved in Canada for treating neovascular age-related macular degeneration (commonly referred to as wet AMD). Samsung and Biogen (the respondents) marketed an anti-VEGF drug for treating wet AMD under the brand name BYOOVIZ. Novartis commenced an application in the Federal Court alleging infringement, passing off, and depreciation of goodwill.
After considering the factors in subsection 6(5) of the Trademarks Act, Justice Pallotta found that BYOOVIZ was confusing with BEOVU, holding the respondents liable for infringement contrary to section 20.
An assessment of the inherent distinctiveness of the marks favoured Novartis because BEOVU is a coined term. Justice Pallotta did not accept the respondent’s position that “distinctiveness… should be a neutral factor in this case because BYOOVIZ is also a coined word,” noting that “[t]o do so would undermine the principle that coined words are typically afforded a wider ambit of protection.”
In assessing the resemblance between the marks, the uncertainty and variability regarding how the marks would be pronounced further increased the likelihood of confusion since “[s]ound is a particularly important factor in this case because it is a key way that consumers, and especially patients, encounter the trademarks.”
Justice Pallotta also found the respondents liable for passing off under paragraph 7(b) of the Trademarks Act. With respect to the first element of the test, the existence of goodwill in the asserted mark, the Court found that Health Canada’s safety warnings about the BEOVU anti-VEGF drug, and the ensuing negative publicity, was insufficient to “extinguish” the goodwill in the mark.
Novartis was unsuccessful in its claim of depreciation of goodwill. Since it did not establish a link between the BYOOVIZ and BEOVU trademarks, Novartis failed the first element of the test under section 22.
The Court granted Novartis a permanent injunction and awarded nominal damages in the amount of $20,000.
The respondents have appealed. A hearing was held on May 28, 2024, and the Court of Appeal has reserved its decision.
For more information on this decision, please see our article, “BYOOVIZ is confusing with BEOVU: Federal Court finds violation of Novartis’ trademark rights.”
3. Little Brown Box Pizza, LLC v DJB, 2024 FC 1592
This decision provides further guidance on how to establish “use” in relation to certain services without a “brick-and-mortar” location in Canada.
The Little Brown Box Pizza, LLC (Little Brown Box) owns a registration for the trademark PIEOLOGY (No. TMA929431), registered in association with several restaurant and pizza parlour services. The Registrar expunged this registration based on non-use (2023 TMOB 5). Little Brown Box appealed.
At the Federal Court, Little Brown Box filed new evidence and argued that it had used its trademark in association with “restaurant services” in Canada by providing “ancillary services” to Canadians, despite not having any physical restaurants in Canada. Specifically, it offered a website and mobile app that displayed the trademark PIEOLOGY, which Canadians accessed, and which allowed users to review the menu, look up restaurant locations in the United States, pre-plan customized pizzas, save favourite pizzas for future ordering, and receive news about latest offerings.
In partially allowing the appeal, the Court affirmed that “services” must be interpreted liberally and that “restaurant services” do not necessarily require the operation of a physical restaurant in Canada. The Court cited existing jurisprudence that states that “brick-and-mortar” locations in Canada are not required for a trademark to be used in association with services in Canada. The Court found that the owner provided restaurant services in Canada, despite not operating a restaurant in Canada, because, during the relevant period:
- The website and mobile app displayed the trademark;
- Customizing pizzas is integral to the owner’s restaurant services, and the website and mobile app allowed users in Canada to customize pizzas, which provided a level of interaction and a service which was akin to visiting a brick-and-mortar PIEOLOGY restaurant; and
- The online advertising was intended to target Canadian consumers.
Thus, the appeal was allowed, and the registration was maintained in association with “restaurant services”.
However, the Court dismissed the argument that providing brochures and a web-portal to potential franchisees constituted use in association with restaurant services, and further dismissed the appeal for the remaining services listed in the registration, finding that the owner had not established special circumstances excusing non-use.
4. 51.ca Inc v Chun Huang, 2024 FC 1202
This decision clarifies how to treat extension applications, explores section 17(2) of the Trademarks Act, provides interesting insight into the treatment of arguments before the Trademarks Office, and confirms the high bar to meet for injunctions in the Federal Court.
In this case, the respondent, Mr. Huang, obtained a registration for the Chinese characters depicted below (the Characters) in 2008 (No. TMA722538):
Mr. Huang applied to extend the registered services in 2017 and the registration for the Characters was amended on November 8, 2018. On September 23, 2022, the applicant, 51.ca, brought an application before the Federal Court for an order:
- striking the registration for the Characters from the trademarks register, and
- enjoining Mr. Huang from using the registered trademark in the future, on the basis of its having previously used the Characters as an unregistered trademark.
According to subsection 17(2) of the Trademarks Act, no trademark registration older than five years shall be expunged, amended, or held invalid on the ground of any previous use or making known of a confusing trademark by another person, unless it is established that the owner of the registered trademark adopted it with knowledge of the previous use or making known. In other words, an applicant cannot assert common law rights against a registrant that owns a trademark registration older than five years unless such common law rights were known to the registrant at the material date.
The Federal Court was therefore tasked with determining whether the five-year rule applied. Because Mr. Huang’s application to extend the registered services also removed all of the original services, the Federal Court found the material date to be the filing date of the extension application, despite the fact that the mark had been registered for more than five years.
The Federal Court further considered the applicant’s arguments before the Trademarks Office. During the examination of a trademark application owned by 51.ca, the Trademarks Office raised a confusion objection based on Mr. Huang’s registration for the Characters. 51.ca rebutted the objection by asserting the trademarks were not confusing.
Before the Federal Court, Mr. Huang asserted that such argument before the Trademarks Office was an admission of non-confusion. The Federal Court was not persuaded that 51.ca made any admission and found that the response to the Examiner was not material to the confusion analysis in the case before it.
Applying the statutory factors in subsection 6(5) of the Trademarks Act, the Federal Court found a likelihood of confusion between the marks and expunged Mr. Huang’s registration for the Characters.
51.ca also asked the Court to enjoin Mr. Huang’s future use of the Characters, arguing that he was uncooperative throughout the proceedings (by not filing evidence) and did not appear to intend to stop using the Characters. The applicant argued that, without permanent injunctive relief, it would suffer a loss of control over the use and commercial impact of its trademark rights, reputation, and goodwill.
The Federal Court did not agree that Mr. Huang's failure to file evidence was tantamount to his being uncooperative. Furthermore, there was no actual evidence of Mr. Huang’s using the Characters. Therefore, the Court refused to order an injunction.
5. Amer Sports Canada Inc v Adidas Canada Limited, 2024 BCSC 3
Provincial courts continue to be a favourable forum for interlocutory injunctions, as evidenced by this decision.
Vancouver-based outdoor apparel and equipment retailer Arc’teryx Equipment (Arc’teryx) has a store on West 4th Avenue in Vancouver that prominently displays its registered trademark ARC’TERYX (the Registered Trademark). In 2023, adidas opened a store down the street, on West 4th Avenue, prominently displaying the following design mark:
This case has two parts: in February 2023, Arc’Teryx brought a civil claim in the BC Supreme Court against adidas for trademark infringement, passing off, depreciation of goodwill, and false and misleading representations related to its Registered Trademark (that case is ongoing). Arc’Teryx then filed an application for an interlocutory injunction in March 2023 to prevent adidas from using the trademark TERREX in association with retail store services, including online store services, pending the outcome of its civil claim.
While we await the Court’s decision on Arc’Teryx’s civil claim, it concluded that Arc’Teryx would suffer irreparable harm if adidas continued to display the TERREX trademark on its storefront, noting that the concurrent use of the marks could lead to a loss of distinctiveness that is “virtually impossible to regain” and that “the impact on loss of emotional brand equity would be extremely difficult to quantify”.
The Court issued the interlocutory injunction requested by Arc’Teryx, but saw “no sensible reason for issuing any injunction directed to anything other than the retail store on W. 4th Ave. in Vancouver”. The geographical “reach” of the injunction was therefore restricted accordingly.
Key developments in Canadian trademarks practice
1. Substantial reduction in examination delays
In June 2024, the Canadian Intellectual Property Office (CIPO) revealed plans to substantially reduce the wait times for first examination of Canadian trademark applications.
Specifically, CIPO looks to reduce the delay from 54 months to 24 months by March 2025. Currently, CIPO is examining national applications containing only pre-approved goods and services within 15 months of filing, national applications not containing only pre-approved goods and services within 39 months of filing, and Canadian designations under the Madrid protocol within 15 months of filing.
For more information, please see our article, “Confirmed: delays in first examination of Canadian trademark applications to be reduced substantially.”
Most recently, CIPO published forecasted processing times for trademark applications. As of January 16, 2025, the public can view CIPO’s forecasted wait times for first examination on its website.
CIPO is currently predicting that an application filed during the month of January 2025 will be examined within 13 months if it is either a Madrid designation or a national application containing only pre-approved goods and services, or within 15 months if it is a national application not containing only pre-approved goods and services. The latter prediction is a lofty goal, and marks a significant decrease (from 39 months currently) in wait times.
After years of delays, trademark owners and practitioners alike welcome a reduction in wait times. In the meantime, CIPO’s new tool should provide some transparency and predictability with respect to the trademark examination process.
2. New Specificity Guidelines for goods and services
CIPO has one of the world’s most stringent standards for assessing the specificity of goods and services described in trademark applications filed in Canada.
Previously, guidance was available in CIPO’s Trademarks Examination Manual as well as the Goods and Services Manual, a searchable database of terms that are pre-approved by CIPO.
On September 18, 2024, CIPO released new guidance, the Specificity Guidelines for the Goods and Services Manual (Specificity Guidelines), to assist trademark counsel and brand owners by providing an indication of the level of specificity that CIPO requires for certain types of goods and services.
The information is listed according to Nice class and presented in a “fill-in-the-blank” format, with explanations of what needs to be specified; for example:
Class 9 - batteries [indicate the specific area of use, namely, batteries for automobiles, batteries for cameras, batteries for cellular phones, batteries for hearing aids, batteries for watches, etc. OR indicate the specific type, namely, 9V batteries, alkaline batteries, lithium-ion batteries, etc.]
The Specificity Guidelines also include a section titled “Unclassifiable without further specification,” which lists entries that cannot be classified in an appropriate Nice class without further specification; for example:
robots [an appropriate Nice class cannot be assigned without further specification: indicate the specific type, namely, industrial robots for cleaning floors (class 7), industrial robots for welding (class 7), robots for milling (class 7), sewing robots (class 7), telepresence robots (class 9), laboratory robots (class 9), surgical robots (class 10), etc.]
For more information on CIPO’s Specificity Guidelines, please see our article, “CIPO’s new Specificity Guidelines for goods and services: what you need to know.”
3. Pilot project on Registrar-initiated non-use cancellation proceedings
Late last year, CIPO announced that it would start proactively sending notices to registered trademark owners requiring them to prove that they recently used their trademarks in Canada, or risk losing their registrations.
In general, in non-use cancellation proceedings, CIPO issues a notice (a Section 45 Notice) to the owner of a registration, requiring the registrant to file evidence proving that it used its trademark in Canada with each of the goods and services listed in its registration at some point within the three-year period preceding the date of the notice.
Previously, only third parties could request CIPO issue a Section 45 Notice. However, the 2019 amendments to the Canadian Trademarks Act granted CIPO the power to issue Section 45 Notices unilaterally.
Late last year, CIPO announced a pilot project in which the Registrar of Trademarks will start proactively issuing Section 45 Notices. The goal is to ensure that the trademarks register accurately reflects the trademarks used in Canada in association with the listed goods and services; that is, to remove “deadwood” from the register.
In the first phase of the pilot project, CIPO will issue 50-100 Section 45 Notices each month to owners of randomly selected trademark registrations. The first batch was issued earlier this month.
In the second phase, CIPO will organize public consultations to gather feedback on whether these types of proceedings should continue and, if so, in what manner.
These Registrar-initiated cancellation proceedings will follow a special procedure to ensure a more efficient and cost-effective process. For example, trademark owners must correlate their evidence with each of the goods and services listed in their registrations to facilitate efficient processing by CIPO. A guide to preparing evidence of trademark use, including a sample affidavit, is available on CIPO’s website.
CIPO’s pilot project places a new and potentially costly burden on trademark owners, who should endeavour to keep comprehensive records of use. Nevertheless, there is value in clearing “deadwood” from the register.
For more information on CIPO’s pilot project, please see our article, “Is your trademark in use? CIPO targets “deadwood” in 2025 and what you should expect.”
4. Pre-assessment letters regarding unclassified registrations
Registrations that were issued before Canada adopted the Nice Classification system on June 17, 2019 must be classified prior to renewal.
As previously reported, the Canadian Trademarks Office is now issuing “pre-assessment letters” that suggest acceptable Nice classifications for unclassified trademark registrations in the following cases:
- The goods and services have not been grouped according to the Nice Classification system;
- There is approximately one year until the renewal date; and
- CIPO considers the classification to be easy and non-challenging.
Currently, if a registrant files a request to classify its registration, there is a delay while CIPO reviews the proposed classification to determine whether it is acceptable. However, if the registrant adopts the classification suggested in CIPO’s pre-assessment letter, CIPO will accept the classification without delay. Accordingly, the pre-assessment letters offer registrants a faster way to classify and renew their registrations.
CIPO plans to issue pre-assessment letters for all trademark registrations in the future.
Stay tuned
Stay up to date on developments in Canadian intellectual property law in 2025 with our IP Updates and Rx IP Updates. Subscribe now to receive these timely updates throughout the year.
The preceding is intended as a timely update on Canadian intellectual property and technology law. The content is informational only and does not constitute legal or professional advice. To obtain such advice, please communicate with our offices directly.