Amazon Expands its Brand Registry Program

E-commerce leader is expanding its brand registry program to include measures aimed at combating the sale of counterfeit goods on its website.  The expanded anti-counterfeiting program will allow rights holders to register their logos and intellectual property with Amazon, with the aim of expediting the removal of any listings and seller accounts that are flagged as counterfeit.

Registrants enrolled in the program (who must have a registered trademark in order to participate) have the ability to manage their intellectual property on Amazon’s marketplace via access to the ‘Report a Violation’ tool and the ‘Brand Support’ tool.  An Amazon user account is required.

The ‘Report a Violation’ tool allows registrants to search the site using a range of identifiers (such as ASIN, key search words, brand name, jpeg image, and brand logo) to search for copyright or trademark infringement listings and report a particular listing, up to a maximum of 300 listings.  With the ‘Brand Support’ tool, registrants are able to report any inauthentic product concerns, including actual inauthentic product being sold, misleading product descriptions, and the like.  This tool also gives registrants access to a case log to track submissions and the status of open cases.

Amazon’s program is currently undergoing a beta registration process with top selling brands and is expected to launch worldwide in the coming weeks on a self-service registration basis through Amazon’s website.

For further information, please contact Paula Clancy at

Features of Colour! Now part of a Combination of Features Protectable as a Canadian Industrial Design

We are excited to report that the Industrial Design Office now takes the position that colour may form part of a combination of features that constitute a design as defined in section 2 of the Industrial Design Act.  However, colour as the sole design feature is not considered to fall within the definition of a design.

The Canadian Intellectual Property Office (CIPO) also announced changes to five (5) other industrial design office practices.

The six (6) practice changes are related to:

  1. applications for protection of computer-generated animated designs
  2. colour as a registerable feature of an industrial design
  3. time limits to respond to office actions 
  4. the search to assess the originality of an application where there is a priority claim
  5. the issuance of notices of possible refusal
  6. delaying the registration of an application

A fact sheet providing an overview of the changes is also available.

Supreme Court to Consider BC Court Order Vs. Google

This week the Supreme Court of Canada heard an appeal by Google against a 2015 decision of the Supreme Court of British Columbia requiring Google to remove hundreds of links and to modify search results in order to block traffic to websites carrying infringing products.  Click here to see a webcast of the SCC hearing.  Google was not a party to the original dispute between B.C.-based Equustek Solutions Inc., and its former distributor, yet the BC court found that it had territorial competence over Google, as well as an inherent jurisdiction to issue an injunction against it in order to preserve the “rule of law”.   At issue before the Supreme Court of Canada is whether local or national courts may compel non-party technology companies located outside of Canada, to take positive action.   Some argue that the court order effectively shifts to Google responsibility that should arguably fall on the shoulders of law enforcement agencies.  Google argues that it has done nothing wrong, and yet it is being forced to bear the costs and responsibility for searching and taking down the defendant’s websites.  Moreover, Google may now need to alter its worldwide search results in order to comply with the BC court order.  The implications are significant:  will this open the door to other, more authoritarian jurisdictions, effectively imposing restrictions on technology companies?  Could foreign courts impose limitations on Internet content?  How will companies be able to quantify and/or limit this potentially unlimited risk?  We will continue to track this case for further updates.

NHL Expansion Team in Trademark Trouble – USPTO Issues Preliminary Refusal Against “VEGAS GOLDEN KNIGHTS” Application

Not even a major franchise system like the NHL is immune from trademark troubles: the USPTO has issued a preliminary refusal against the NHL expansion team’s trademark application for VEGAS GOLDEN KNIGHTS (Ser. No. 87/147,239).

The NHL had announced the name of its newest expansion team a mere two weeks prior to the USPTO refusal.   The USPTO’s objection is based on potential confusion with a prior registration in the name of the College of Saint Rose in New York, which also has a team called the GOLDEN KNIGHTS.  According to the USPTO: “The evidence suggests the services of both the applicant and registrant are similar in nature; consumers of sports entertainment services enjoy both professional and collegiate-level sports, and sometimes even prefer the latter over the former. The registrant’s services are presumed to include all sports played at the collegiate level, including hockey. Therefore, the services of the applicant and registrant are considered related for the purposes of the likelihood of confusion analysis.”

The NHL has indicated that it intends to argue against the citation and that it is not presently considering re-branding for its new franchise team.  The NHL team has until June 2017 to respond to the USPTO’s objections.

Interestingly, Clarkson University (which is also located in New York State), has a Division I hockey team nicknamed the GOLDEN KNIGHTS.  According to news reports, Clarkson entered into a peaceful co-existence agreement with the Las Vegas NHL team earlier this year.

We will continue to monitor this story.

Canada and the EU sign CETA

After stumbling near the finish line, Canada and the EU were finally able to sign the Comprehensive Economic and Trade Agreement (CETA) on October 30, 2016.  Bill C-30 (the CETA Implementation Act) was tabled the following day, on October 31, 2016.

CETA brings significant changes to Canada’s trademark and patent laws.  On the trademark front, the most significant change is the recognition of geographic indications that extend beyond wines and spirits, to cover agricultural products and foods.

Once these changes are in effect, the use and registration of words that are protected as a geographic indicator (GI) will be prohibited.  A common example would be Parmigiano Reggiano.  There are certain exceptions that will permit the continued use of words like “Feta” and “Asiago”, if they were used for an extended 10 year period.

For further information, please contact Paula Clancy

Can I Register a Geographic Name as a Trademark?

The simple and prudent answer is ‘no’.  A trademark is not registrable if it is clearly descriptive, or deceptively misdescriptive of the place of origin of the goods associated with the mark.

The Canadian Trademarks Office recently issued a new practice notice clarifying its practice with respect to marks that describe a place of origin.  This practice notice was issued in response to the Federal Court of Appeal decision in MC Imports Inc. v. AFOD Ltd. [2016 FCA 60].


  1. A trademark will be found to be “clearly descriptive of the place of origin” if the trademark is a geographic name and the associated goods originate from that geographic location.
  2. A trademark may be misdescriptive if it consists of a geographic name and the associated goods do not emanate from that geographic location.  Whether the mark is deceptively misdescriptive, contrary to s.12(1)(b) of the Trademarks Act, will depend on whether Canadian consumers could be misled into thinking that the associated goods actually originated from that geographic location.
  3. If Canadian consumers would view the primary or predominant meaning of the trademark as the geographic name, then a trademark will be deemed to consist of a geographic name, notwithstanding that it could have other meanings.

For further information, please contact Paula Clancy

Attention Quebec Retailers! New French Language Regulations Coming Soon

The Quebec government introduced amendments to the Charter of the French Language that will come into force on November 24, 2016.  As a result, all Quebec businesses will now be required to add French words to their non-French trademarks on all outdoor signage.  This means that retailers like WALMART or BEST BUY will now need to include on their signage a French descriptor outlining the nature of the business, or a slogan.

Businesses will have 3 years to comply with respect to existing signage, but the changes apply immediately to all new signage. 

For additional information, please contact Paula Clancy.

CIPO Issues Scam Warning

The Canadian Intellectual Property Office (CIPO) has issued a warning regarding various scam emails and letters that are being sent to registered patent and trademark owners. These notices are designed to closely resemble CIPO notices.

Please do not extend payment to any entity, regardless of how formal the invoice or notice looks.  Any charges related to your intellectual property portfolio, including registration fees, will always be billed directly through Clancy P.C. or Brion Raffoul.

CIPO has noted the following facts about scam notices:

  • They often say that your patent or trademark protection is about to expire and ask you to renew registrations or pay fees.
  • To sound legitimate, they incorporate information from public records available in CIPO databases.
  • They can include cautionary language such as “patent cancellation notice” or “important notification regarding your federal trademark.”
  • Some notices even include “Canada” or “Canadian” in the company name and letterhead, making them appear official.
  • They can offer to add you to directories which appear official, or offer services similar to those already provided by CIPO.

If in doubt, please contact us directly to verify the legitimacy of any notice/invoice received.


Quebec and Saskatchewan to legislate Patent Box Incentives

Quebec and Saskatchewan are the first provinces in Canada to announce fiscal incentives for companies commercializing intellectual property. On March 17, 2016, Quebec’s Minister of Finance announced a “patent box” that would lower tax rates on revenue attributable to patents for inventions developed in Quebec as part of the provincial budget coming into effect on January 1, 2017. Earlier in the month, on March 11, Saskatchewan’s Premier announced that, if re-elected, a similar patent box incentive will be implemented in this province.

Prepared By Leah Labib, Associate

The European Community Trademark Reform and What It Means For Canadian Brand Owners

On December 24, 2015, a new Regulation (EU No. 2015/2424) was published which will bring several significant changes to the Community Trademark system.  The Regulation will come into force on March 23, 2016.  The aim of the Community Trademark Reform is to harmonize the existing national EU trade mark system.

What are some of the most relevant changes for Canadian brand owners?

  • New Fee System: The EU will implement a “one fee per  class” (as opposed to having a lump sum fee for up to 3 classes).  Canadian brand owners that are thinking of filing multi-class trademark applications in Europe should do so before March 23, 2016 in order to take advantage of the lower filing fees.
  • Opportunity to re-specify goods in existing CTM registrations: Following the CJEU’s ruling on the IP Translator case, trademark protection will now only extend to the specific products and services designated in the application. This is problematic for many brand owners who registered trademarks using  the “class heading” hoping to cover all of the products or services within that class.  The IP Translator case held that trademark protection can only extend to the literal description  in the class heading, and not to the totality of products or services included in that class.  Canadian owners of CTM registrations filed before June 20, 2012 that only include class headings will have the opportunity, until September 24, 2016, to provide a more precise description of the goods and services associated with the mark.  The  specific description must nonetheless fall within the relevant class.  All Canadian brand owners who own CTM registrations should review their portfolios with their agent to ensure that they did not use the class headings as the descriptor of the goods or services associated with the mark.  In the event that class headings were used, an amendment should be filed before September 24, 2016 so that the goods or services can be specifically identified.
  • Change of Name: The Community Trade Mark Office will be changing its name to The European Union Intellectual Property Office (EUIPO).  Community Trademarks will now be known as European Union Trade Mark (EUTM).  Canadian brand owners who own CTM registrations should amend their records to reflect the change of name to EUTM.
  • Renewal Date and Fees:  Renewals must now be made prior to the expiry of the registration period.  Previously, applicants had until the end of the month in which the mark was registered to proceed with a renewal payment. Renewal fees will be charged per class.  Canadian brand owners should ensure that they renew their EUTM registrations well in advance of the deadline date.
  • Priority Claims:  Previously priority claims could be made up to two-month following the CTM application date.  Under the new Regulation, priority claims must be made at the time of filing.

For further information, please contact Paula Clancy at