Dentons recently released its summary of what it considers to be the major Canadian intellectual property (IP) decisions in 2023. Among the highlighted cases are the following:
- Energizer Brands LLC. v. Gillette Company, 2023 FC 804, which concerned s. 22 of the Trademarks Act and the use of a competitors’ trademark in a comparative advertising champaign. A permanent injunction on using the competitor’s trademark in comparative advertising was issued, although the court found that “the next leading competitive brand” was not sufficient to evoke the competitor’s trademark to a hurried consumer of batteries. It was also held that without a consumer of data to gauge consumer reactions to this, “the bunny brand” was not sufficient to support a s. 22 claim.
- French v. Royal Canadian Legion, 2023 FC 749, dealt with the relationship between the the “useful article” exemption to s. 64(2) of Copyright Act and a dog stuffed animal covered in poppies. This exemption in the Copyright Act is designed to be used to for useful articles that cease to be protected by copyright law and rather should be protected by industrial design laws, with the threshold being the production of fifty copies. The case then delves into two exceptions to this exception and how they related to toys. Important findings from the case include that toys are “useful articles” and that this toy did not fall under one of the exceptions to the s. 64(2) exception as it was not “a representation of a fictitious being applied to an article”.
- Travel Leaders Group, LLC v. 2042923 Ontario Inc., 2023 FC 319, is about two competing trademarks filled. The first corporation filed an application in 2008, which was abandoned in 2010 upon opposition from the other. The second, whose business has been declining since 2004 filed an application for the trademark in 2010 claiming use since 2005, and was granted the trademark. The second corporation later took steps to derail the first’s attempts to expand into Canada by among other things, purposefully offering the trademark for sale to the competitors of the first corporation. It was held that the second corporation’s “actions and knowledge at its date of application could not be found to constitute bad faith” but that some of its later actions could be (although these actions were not material to establishing bad faith at the relevant date of application).
You can read more details about these cases and more in the full report, which is available for download here.
Communications Law