Copyright Quarterly Blog
If copyright subsists in the trademark or logo which has been assigned to the trademark owner by the author of the work subsection 14(1) of the Copyright Act will apply. The assignment does not operate to vest in the assignee any rights in the copyright for more than 25 years after the author’s death, and the reversionary interest, notwithstanding any agreement to the contrary, devolves on the author’s legal representatives as part of the author’s estate. Presumably, this provision has no effect on the trademark rights under the Trademarks Act.
Honest Concurrent Use
The plaintiff (“Bentley Clothing”) is the owner and exclusive licensee of three trademarks consisting of the word BENTLEY registered for use with clothing and headgear (“the Trademarks”), the earliest of which was registered in 1982.
The Defendant (“Bentley Motors”) is the well-known car manufacturer. The plaintiff contends that Bentley Motors infringed the Trademarks by selling clothing and headgear in association with the marks shown below since November 2011.
Trademark Use by an Affiliate
A recent decision of the Federal Court of Appeal clarifies when the use of a trademark by an affiliate of the trademark owner accrues to the benefit of the owner. Under subsection 50(1) of the Act, use by a licensee is deemed use by the owner if the owner has “under the licence, direct or indirect control of the character or quality of the goods or services”. The Court also discusses the use by another entity with the authority of the owner of a trademark.
Problems When Expunging a Trademark Registration!
A recent decision of the Federal Court, affirmed by the Federal Court of Appeal, scrutinized the applicant’s evidence relating to an application to expunge a trademark registration, and relied on the presumption of validity to dismiss the application. For all those interested in bringing such a proceeding these decisions serve as a warning to devote time and effort to gather the necessary evidence.
Notable Trademark Decisions in 2019 – Outlook for 2020
2019 has been a momentous year for trademark owners and their advisors. We have experienced the culmination of the trademark reform process and the introduction of the amendments to the Trademarks Act in June. Many changes have been implemented.
What Is Bad Faith in a Trademark Context?
There have been several recent developments concerning “bad faith’” and it seems just a matter of time before we face this issue in Canada.
How to Prove that a Mark is Distinctive!
A recent decision of the Federal Court considers a ground of opposition based on lack of distinctiveness and reviews what evidence is necessary to support such a ground.
Official Marks – What are they and how are they obtained?
Official Marks Last month we discussed prohibited marks. One type of prohibited mark is called an “official mark”. These marks can be a problem for brand owners because of their nature. What are They? The term “official mark” refers to a mark adopted and used by a public authority for goods or services, in Canada, and […]
