Header: IP Update; Image: a magnifying glass over a calculator. The word "FEES" is on the calculator screen

Important Update on Patent Maintenance Fees

The Canadian Intellectual Property Office (CIPO) has recently addressed a significant error. This error concerns the second, third and fourth year maintenance fees paid by small entity patent holders. Initially, the fees listed for the second to fourth anniversaries for small entities were listed as $50 and were not in accordance with inflation and the recent fee increase for January 2024.  The current small entity fee is now $56.21. This discrepancy was due to an oversight on behalf of CIPO. Prompt...

IP Decisions: Arc'teryx vs Adidas

Battle of the Brands: A Trademark Showdown in the Sports Industry

In the world of trademarks, a recent case has caught the attention of many. This case involves two major players in the sports industry, Amer Sports Canada Inc. and Adidas Canada Limited. As a Canadian trademark agent, I find this case particularly interesting due to its implications for trademark owners in Canada. The Case Overview Amer Sports Canada Inc., the holder of the “ARC’TERYX” trademark, filed a lawsuit against Adidas Canada Limited. The bone of contention was Adidas’ use of the name...

IP Decisions | Image of the letter AB in bronze

Federal Court Upholds Expungement of AVIREX Trademark for Non-Use

If you are a fan of the classic movie Top Gun, you may be familiar with the AVIREX brand of leather jackets worn by Tom Cruise and other actors. But did you know that the AVIREX trademark was recently expunged in Canada for non-use? Background of the Expungement Case In a recent decision, the Federal Court dismissed an appeal by Centric Brands Holding LLC (Centric), the current owner of the AVIREX trademark, from a decision of the Registrar of Trademarks to expunge...

Ip Update: Patent Box

Enhancing Canadian Innovation: Introducing the Patent Box Regime

In an exciting development for the Canadian innovation landscape, the federal government has announced its intention to explore the implementation of a patent box regime. This strategic move is designed to foster the creation, commercialization, and retention of intellectual property (IP) within Canada. Understanding the Patent Box Regime A patent box regime is a fiscal policy that offers preferential tax treatment for income generated from patented innovations. The aim is to incentivize companies to develop and commercialize their IP domestically, rather than...

Trademark Law Update

Upcoming Changes to Extension Periods in Trademark Opposition and Section 45 Proceedings in Canada

Effective December 1, 2023, significant changes are coming to the Canadian Trademark Opposition Board's handling of opposition and Section 45 non-use cancellation proceedings. These changes aim to streamline the process and reduce the overall time taken for resolutions. Here’s what you need to know: Reduced Extension Times From December 1, 2023, extension periods will be cut by up to 50%. To benefit from the current longer extension periods, requests must be filed before this date. The reduction in extension times means...

IP Decisions: Canada (Attorney General) v. Benjamin Moore & Co. (2023 CAF 168)

Federal Court of Appeal Overturns Federal Court’s Test for Patentable Subject Matter of Computer-Implemented Inventions

In a recent Canadian decision, the Federal Court of Appeal (FCA) rejected the Federal Court’s (FC) attempt to provide a general test for determining the patentable subject matter of computer-implemented inventions. Specifically, the FCA found that the FC erred in imposing a test that was not based on any binding authority.  The FCA remitted the patent applications at issue to the Commissioner of Patents (CP) for redetermination of patentability to be carried out on an expedited basis, in light of...

IP Decisions: 2023 FC 804: Energizer Brands, LLC v. Gillette Company

2023 FC 804: Energizer Brands, LLC v. Gillette Company

On July 6, 2023, the Federal Court of Canada announced its decision in a trademark dispute between Energizer Brands and the Gillette Company in a case about comparative advertising.  In particular, this dispute involved Energizer and Duracell, the two leading battery brands in Canada. Moreover, Energizer asserted that Duracell's use of Energizer's trademarks in their advertising depreciated the value of these trademarks. The Heart of the Matter Specifically, Duracell's battery packages had affixed labels that bore phrases that caught Energizer's attention. Duracell...

CWC logo | Patent Law Updates | Image of scrabble tiles spelling "fees" with coins lying on and around them

Important Updates on Canadian Intellectual Property Regulations

This is to advise of some significant changes to the Canadian Intellectual Property regulations. These regulations pertain to the Patent Rules, Trademark Regulations, Industrial Design Regulations, and Copyright Regulations. Amendments to these Rules were registered on June 1st.  They incorporate government fee increases of approximately 25%, as well as an expansion of the definition of 'small entity'. Most of the amendments will come into force on January 1, 2024. CIPO's Fee Schedule The major change is that the Canadian Intellectual Property Office (CIPO)...

CWC logo | Patent Law Updates | Image of the word "MORE" with a white alarm clock as the "O"

Canadian Patent Term Extension: A First Overview

The patent landscape in Canada is expected to undergo significant changes in the near future with the introduction of a new patent term extension provision. The new provision, which is set to come into effect on January 1, 2025 or by order in council, will grant additional term for a patent if certain criteria are met. As per the provisions of the new patent term extension, the Commissioner of Patents will grant an additional term for a patent if the patent...

CWC Logo | IP Decisions | Image of a magnifying glass surrounded by file folders

Pros and Cons for Making a Trademark Search Prior to Filing a Trademark Application 

Conducting a trademark search prior to filing a trademark application can be beneficial but it is important to weight out the pros and the cons.  You can read about the pros & con for making a trademark search prior to filing a trademark application by clicking here to go to our knowledge center.