In this blog we discuss a number of internet-based “dirty tricks” that competitors or others may deploy and which may have serious adverse consequences for you or your business. I also briefly mention the types of remedies which may be available to those victimized in this way. Confusingly Similar Domain Names In today’s modern web-based commercial world, it is more important than ever to ensure that potential customers and returning customers are properly connected with your website domain name, and to use domain names that are well-branded and associated with your business. It is not uncommon for competitors, cyber-squatters, or other persons to obtain control of domain names that are confusingly similar to your trademarks, business names, or your domain name. Then there is a real risk that users seeking your website are instead directed elsewhere by that confusingly similar domain name. Recovering a Domain Name In order to recover … Read More
Service Abroad in Civil and Commercial Litigation
The Hague Service Convention Since 1989 Canada has been a member of Hague Convention of 15 November 1965 on the Service Abroad of Judicial and Extrajudicial Documents in Civil or Commercial Matters, (the Hague Service Convention). Incoming Service of Foreign Process We have blogged before about the requirement of the Hague Service Convention that its member States designate a “Central Authority” to accept incoming requests for service. There are alternatives to the Hague Service Convention service of foreign process in Ontario. Service of Ontario Process Abroad As other jurisdictions become, or will become, members of the Hague Service Convention, the Status Table is updated. For instance, see the status of Azerbaijan (November 1, 2023), Singapore (December 1, 2023) and Paraguay (January 1, 2024) on the Status Table. Why Chose Gilbertson Davis LLP? One of the senior commercial litigation lawyers at Gilbertson Davis LLP, though now only practicing in Ontario, has also practiced … Read More
Are my Trademark Rights being Breached? Trademark Infringement and Passing Off Lawyers
In Subway IP LLC v. Budway, Cannabis & Wellness Store, 2021 FC 583, the Federal Court of Canada (“FC”) found that the respondents infringed on the applicant’s registered trademark contrary to section 20 of the Trademarks Act. The FC found that the use of the “BUDWAY” trademark amounted to the tort of passing off and depreciation of goodwill in the appellant’s trademark. As a result, the court granted the applicant, Subway, damages in the amount of $15,000 and an injunction against the respondents prohibiting them, among other things, from dealing in goods or services in association with the trademark or trade name “BUDWAY”. What is Considered a Breach of Trademark Rights? In the FC’s reasons for its decision, it advised generally that: A trademark registration grants the owner the exclusive right to use the mark throughout Canada in respect of the goods and services in the registration; The right to … Read More
Domain Name Disputes, Counterfeit Websites, Fake Bad Reviews and Remedies
I discuss here a number of internet-based “dirty tricks” that competitors or others may deploy and which may have serious adverse consequences for you or your business. I also briefly mention the types of remedies which may be available to those victimized in this way. Confusingly Similar Domain Names In today’s modern web-based commercial world, it is more important than ever to ensure that potential customers and returning customers are properly connected with your website domain name, and to use domain names that are well-branded and associated with your business. It is not uncommon for competitors, cyber-squatters, or other persons to obtain control of domain names that are confusingly similar to your trademarks, business names, or your domain name. Then there is a real risk that users seeking your website are instead directed elsewhere by that confusingly similar domain name. Recovering a Domain Name In order to recover (transfer to … Read More
Profit Not Required to Find Use of Trademark in Normal Course of Trade
The Federal Court of Appeal in Cosmetic Warriors Limited v. Riches, McKenzie & Herbert LLP, 2019 FCA 48, set aside the decision and allowed the appeal of the Federal Court judgment allowing an appeal from a decision of the Registrar of Trade-marks, made through her delegate, a hearing officer of the Trade-marks Opposition Board, that found that the trademark had been used in the “normal course of trade” within the meaning of subsection 4(1) of the Trademarks Act, RSC 1985, c T-13 ( the “Act”) and thus maintained the registration of a trade-mark in a proceeding challenging the registration for non-use under section 45 of the Act. In issue was the trade-mark “LUSH,” as registered for use in association with “[c]lothing, namely, t-shirts.” In its decision, the Federal Court of Appeal described that: “The T-shirts and tank tops bearing the LUSH trade-mark are sold by Lush Canada in limited quantities … Read More
Protecting Your Internet Domain Name
In the age of the internet and e-commerce, the domain name of a business holds tremendous value and is often an integral part of the identity of a business. Since a website can only have one domain name on the internet, there is no shortage of disputes which arise over ownership rights of domain names, particularly those closely affiliated with a registered or unregistered trademark. What is Cyber-Squatting? Cyber-Squatting occurs when someone has registered a domain name in which they have no legitimate business interest, and can sometimes involve setting up a fake website for a business. The reason could be that the registrant will then seek to sell the domain name to the legitimate owner of the business or trademark, or their competitor for a profit. Alternatively, it may be to syphon away business leads online to competitors for a fee, or for advertising revenues. Typo-Squatting is similar to … Read More
Manufacturers and Distributors – Toronto Litigation Lawyers
Our lawyers can provide sound advice and effective representation to manufacturers and distributors involved in actual or potential disputes or litigation. We focus on a wide variety of manufacturing industries in a broad array of legal disputes, including sale of goods, branding and brand protection, transportation and logistics, supply and outsourcing contracts, unpaid accounts, internal business disputes, construction and urgent remedies. The automotive industry, the food and beverage industry and technology industries in the Toronto – Waterloo Innovation Corridor comprise the most substantial sectors of the Ontario manufacturing landscape. We also can provide advice and representation to the many other manufacturing industries in Toronto and elsewhere in Ontario, including these: Automated Machinery and Robotics, Automotive Industry, Auto Parts Manufacturing, Building Materials, Canning and Bottling, Chemical Manufacturing and Supply, Clean Tech, Computer Equipment and Electronic Equipment, Concrete, Brick, Glass, Drywall, Lumber and Stone, Confectionery, Food and Beverage, Financial Technology, Furniture Manufactures and Importers, , Bottling, Packaging and Containers, Heating, Ventilation and Air Conditioning – HVAC, Insulation and Environmental Solutions, … Read More
Removing Deadwood from the Register – Challenging Registration for Non-Use of a Trade-Mark In Canada
In Barrette Legal Inc. v. Lawee Enterprises, L.L.C., the requesting party, (“Barette”), sought to remove the owner’s (“Lawee”) Mark, from the trade-mark register for non-use, pursuant to section 45 of the Trade-marks Act (“Act”). Lawee was the registered owner of the trade-mark “Smart For Life Cookie Thin”, which it used to describe and advertise cookies it sold (“goods”). Barrette challenged this registration for alleged non-use in Canada in between May 18, 2013 – May 18, 2016, at para 3. What Constitute “Use” of a Trade-Mark Section 4(1) of the Act states that a trade-mark is deemed to be used in association with goods, if at the time of the transfer of the property in, or possession of the goods, in the normal course of trade, it is marked on the goods or its packaging, or in any manner in which notice of the association is provided to the person whom … Read More
Mattresses and Slogans and Interlocutory Injunctions, Oh My! (Sleep Country Canada Inc. v. Sears Canada Inc.)
In Sleep Country Canada Inc. v. Sears Canada Inc., Sleep Country Canada Inc. (“Sleep Country”) was granted an interlocutory injunction against Sears Canada Inc. (“Sears”) to prevent Sears from using their slogan “THERE IS NO REASON TO BUY A MATTRESS ANYWHERE ELSE” while the trade-mark infringement litigation (in which Sleep Country claims Sears’ slogan infringes on Sleep Country’s trade-marked slogan of, “WHY BUY A MATTRESS ANYWHERE ELSE”) is ongoing. The three-part test set out in RJR-MacDonald v. Canada (Attorney General) was ultimately satisfied. The heart of the case was not on whether this was a serious issue or on the balance of convenience, but rather, on whether irreparable harm was established. The Court found in favour of Sleep Country’s arguments that confusion, depreciation of goodwill, and loss of distinctiveness would result, as well as, a loss of sales in the minimum 18-24-month period between the time of this hearing and the determination of the … Read More
Lowering the Threshold of Trademark Infringement? (United Airlines, Inc. v. Cooperstock)
Since December 17, 1998, United Airlines has been using the website www.united.com, it’s brand name and logo has been used since August 2010, and the design and artwork of the website has stayed relatively the same since 2006 (para 4). United Airlines has a variety of trademarks associated with these services. Cooperstock operated www.untied.com and in 2011 he redesigned the graphics, in a manner similar to the design of the United Website, which was adjusted in 2012 to match changes made by United on their website in 2012 (though with a sad-face added on the United logo for example) (para 10). In United Airlines, Inc. v. Cooperstock, the Court found that Cooperstock infringed United’s trademarks. Trademark infringement occurs when “a trademark or a confusingly similar mark [is used], without the consent of the trademark rights holder, in association with wares or services” (para 29). This case provides an interesting decision regarding the specific element of infringement under … Read More
Shifting The Status of Interlocutory Injunctions: Google v. Equustek Solutions
The very interconnectedness of the Internet that drives business forward through marketing and access to broader consumer bases may result in loses that currently are not easily remedied. However, jurisprudential shifts are occurring to bridge gaps in the common law that are prevalent in the new age of technology. Google v. Equustek Solutions is a recent decision that potentially expands the scope of interlocutory injunctions in order to ensure that trademark passing-off does not continue to be facilitated, even if unintentionally, by a non-party. Equustek was entitled to an interlocutory injunction to enjoin Google from displaying Datalink’s websites on any of its search results worldwide, and despite Google’s appeal, the decision was upheld by the Supreme Court of Canada in a 7-2 decision. Justice Abella, writing for the majority, emphasized the importance of deference and discretion with regards to interlocutory injunctions, which is highly context-driven to ensure just and equitable outcomes (para 22). The Court found the three-part test in RJR – MacDonald … Read More
The Importance of Brand Protection
In many cases, a business’s brand, reputation, and goodwill, can be its most important assets. Customers will visit, re-visit, and refer others to a business because of the reputation created through its successful branding initiatives and quality products and services. Therefore, it is important for any business to be aware of the tools available to protect their brand from being devalued or misused by others. Some of these tools are preventative, such as by registering a trademark with CIPO. the USPTO, or other national trademark offices, and by ensuring the proper assignments or licences are set out in any contracts with any designers or users of your trademarks. The copyrights for creative works can be registered, while fashion designers can seek protection of their creations as an industrial design. Unfortunately, the more successful a trademark or brand, the more likely it is to be used by copycats, counterfeiters, and competitors to drive business … Read More
Business Dirty Tricks: Unfair Competition: Intentional Interference, Inducing Breach of Contract, Conspiracy and Defamation
Sometimes businesses and their stakeholders act wrongfully in seeking to advance their interests and / or harm competitors. There are often reports of the “dirty tricks” used by those in business to seek to destroy, defeat or diminish the effectiveness of a competitor. These are often unethical tactics, but sometimes such conduct is also wrongful and has been recognized by the common law as actionable in the courts for damages or injunctive or other urgent equitable relief, or prohibited by a statute which provides for a civil monetary remedy or grounds for an injunction. These causes of action have been recognized and provide the basis of lawsuits for harm, loss and damage, and in suitable circumstances, grounds for an immediate injunction or mandatory order prohibiting the further commission of the wrongful acts. In short, wrongful intentional acts causing harm, loss or damage to businesses or their stakeholders may give rise to a cause of action in common law business torts (the so-called … Read More