Canada's TM to get overhaul in new omnibus bill

The Conservative government tabled Bill C-31, the Economic Action Plan 2014, No. 1, the most important changes to the Trade-marks Act since 1953. Included in the omnibus bull will be significant changes to Canada's TM laws. Without amendments, the legislation changes include registrations granted in the absence of use anywhere, this would permit enforcement of trademark rights anywhere in Canada regardless of whether the TM has previously been used in Canada or abroad.

Although the proposed changes are intended to anticipate Canada's accession to the Madrid Protocol, the Nice Agreement, and the Singapore Treaty, key elements of the trademark section of Bill C-31 have little or nothing to do with these treaties. Last year, the Canadian government introduced Bill C-8, the Combating Counterfeit Products Act, which dealt with the creation of a "request for assistance" to deal with counterfeits, and also proposed updating certain aspects of the Trade-marks Act. Bill C-31 repeats many of the non-counterfeit-related changes proposed in Bill C-8, but adds a number of important changes to trademark laws and practice.

The Bill C-31 in full.

TM Duchess Kate

At the beginning of the month, James’s Palace confirmed that Kate Middleton’s charity, The Royal Foundation of the Duke and Duchess of Cambridge, has applied to the UK Patent and Trademark Office to trademark a wide range of goods and services in her name. Goods with the foundation’s name, changed to use the Duchess’s title after the royal wedding, has been registered in different territories around the world. The move offers some protection over the royal name, but also protects millions of revenue dollars for the charity.

Interesting Swiss SC Ruling on TM

​In a September 30 2013 decision (4A_128/2013) the Federal Supreme Court ruled on the extent to which a trademark in use may differ from its registration in order to preserve the rights attached to it. The decision shows that the respective scope is very limited.

For more visit: http://www.internationallawoffice.com/newsletters/detail.aspx?g=56278914-df66-4b6c-a2a2-751869d055a3

Comedy Central Starbucks Parody

Many of us may have said it, especially coffee aficionados, labelling coffee juggernaut Starbucks as 'Dumb Starbucks'. Well a comedian took the idea even further and opened up a parody shop with the same Starbucks logo but with the 'Dumb' attached to the name. It was subsequently shut down (over health violations). The comedian in charge contends that the name is legal falling under parody use. Does that work in this case? More here. http://www.ibtimes.com/dumb-starbucks-coffee-trademark-law-brilliant-parody-or-blatant-infringement-1554483