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Here you will find the latest MBM news and articles about recent developments in the Canadian intellectual property field.

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October 13, 2020 NEWSFLASH

High Stakes: Protecting Your Cannabis Intellectual Property

September 29, 2020 NEWSFLASH

Federal Court Finds CIPO Examination Practice Out of Line with Supreme Court Precedents

September 15, 2020 NEWSFLASH

Common Patent Misconceptions - Myth #4 - Disclosures

September 1, 2020 NEWSFLASH

Grey Market Goods – Coty and Costco Battle it Out in Quebec

August 18, 2020 NEWSFLASH

New Federal Court Decision Provides for Greater Protection of Combination Drugs Under CETA

August 4, 2020 NEWSFLASH

Almost 2 Years Post-Cannabis Legalization – A Comparative View of the Budding Industry Across Canada

July 21, 2020 NEWSFLASH

Green Tech Patents - How Canadian Government is Helping the Process

July 7, 2020 NEWSFLASH

Tips For Startups: How To Make Sure Your IP Is Working For You

June 23, 2020 NEWSFLASH

Don’t Let Your Trademark Go Up In Smoke: “smoking is cool” Type of Branding Is Prohibited Under Canada’s Cannabis Act

June 9, 2020 NEWSFLASH

Unauthorized Photographs: The Rights Of The People We Capture

May 26, 2020 NEWSFLASH

Common Patent Misconceptions – Myth #3

May 12, 2020 NEWSFLASH

Importance of Determining Inventorship Prior to Patent Issuance

April 28, 2020 NEWSFLASH

Digital books and ownership rights in the information age

April 14, 2020 NEWSFLASH

Common Patent Misconceptions – Myth #2

March 26, 2020 NEWSFLASH

The aftermath of the new Canadian Trademark Legislation

March 9, 2020 NEWSFLASH

No success for Questor in its quest for an injunction

February 4, 2020 NEWSFLASH

Absence of a Canadian patent leaves the PMPRB powerless to control the price of Cystadrops

January 21, 2020 NEWSFLASH

Update to Trademark Practice in Canada

January 20, 2020 NEWSFLASH

Common Patent Misconceptions – Myth #1

January 13, 2020 NEWSFLASH

Are you utilizing your IP to obtain financing and grow your business?

January 7, 2020 NEWSFLASH

Class action lawsuits may be available for copyright infringement cases in some instances

November 4, 2019 NEWSFLASH

Press Release - MBM Intellectual Property Law Celebrates Its 25th Anniversary

November 4, 2019 NEWSFLASH

Review of the Last 100 Decisions of the Commissioner of Patents

October 1, 2019 NEWSFLASH

Amendments to the Canadian Patent Rules: Key Changes & Their Impact on the Patent Practice in Canada

September 23, 2019 NEWSFLASH

Planning ahead: how to protect your business when you’ve licensed-in critical IP and the licensor is going under?

july 10, 2019 NEWSFLASH

Congratulations Kimberly!

December 6, 2018 NEWSFLASH

CBC Radio - All in a Day interview, discussing Kenya's national dissatisfaction with Disney's trademark, HAKUNA MATATA. Kenyans don't believe a company should be allowed to trademark a national phrase.

November 26, 2018 NEWSFLASH

Canada’s Trademark laws will see major changes in June 2019

October 26, 2018 NEWSFLASH

The Price of Privacy: Canada’s Top Court Rules, ISPs must disclose the identity of illegal downloaders at a “reasonable” cost

March 26, 2018 NEWSFLASH

Another Win for MBM - Increased Cost Awards by the Federal Court - The New Normal?

February 13, 2018 NEWSFLASH

Intellectual Property Considerations in the New CPTPP & NAFTA Negotiations

January 29, 2018 NEWSFLASH

The Impact of Changes to Canada’s Trademarks Act on the Pharmaceutical Industry

January 8, 2018 NEWSFLASH

The Impact of Expanded Regulations under CETA on Geographical Indications and Your Brand

October 16, 2017 NEWSFLASH

CETA agreement and the Canadian patent landscape

september 13, 2017 NEWSFLASH

New LCBO Subsidiary to Control Cannabis Sales in Ontario

september 6, 2017 NEWSFLASH

Intellectual Property Licensing: A Win-Win Agreement

August 22, 2017 NEWSFLASH

Are you trying to decide whether to register your Industrial Design in Canada?

August 3, 2017 NEWSFLASH

Regaining Trademarks that Were Lost in Translation in China

July 25  2017 NEWSFLASH

Contractors and the Legal Ownership of your Intellectual Property

July 11  2017 NEWSFLASH

Supreme Court of Canada Upholds Order for Google to Block Search Results Globally

June 30  2017 NEWSFLASH

The Supreme Court of Canada Knocked Down the "Promise Doctrine” for Determining Utility

June 26  2017 NEWSFLASH

Update: CASL Private Right of Action Suspended, But Be Careful, Other CASL Provisions are still Alive

June 15  2017 NEWSFLASH

Upcoming Amendments to the Patent Rules, Industrial Design Regulations, and the Trademarks Regulations

May 30  2017 NEWSFLASH

Lifting the Cloak of Anonymity of Copyright Infringers Online

May 23  2017 NEWSFLASH

A balance between confidentiality orders and the open court principle in patent litigation

May 9  2017 NEWSFLASH

A Ticket to Success: Ontario Launches its Scale-Up Vouchers Program for Innovative Technology Companies

May 2  2017 NEWSFLASH

Innovative Medicines in Canada: important Patent questions to ask

April 18  2017 NEWSFLASH

In for a penny, in for a pound…

April 3  2017 NEWSFLASH

Government Funds to Good Use: Helping Small Businesses with First-Time Patent Costs

March 27  2017 NEWSFLASH

CASL Warning! Private right of action is coming  

March 7  2017 NEWSFLASH

Learning the Game – A Patent Process and Timeline

February 22  2017 NEWSFLASH

The Benefits of Registering a Patent in Canada

February 8  2017 NEWSFLASH

Buyers of Keywords Beware! Content of Ads May Spell Confusion

February 6  2017 NEWSFLASH

A Word of Caution: File Wrapper Contents Can Come Back to Haunt You

January 24  2017 NEWSFLASH

A Lesson in Costs: Know your Patent Claims before Asserting Infringement

January 10  2017 NEWSFLASH

How Does CETA Affect IP Rights in Canada?

November 22  2016 NEWSFLASH

In the Province of Québec Foreign-Language Outdoor Signage to Have "Sufficient Presence" of French

November 15  2016 NEWSFLASH

From Filing to Registration: the Canadian Trademark Application Process

October 17  2016 NEWSFLASH

Benefits of Registering a Trademark in Canada


Humanized Antibodies: CIPO Picks Up the Pace

august 18  2016 NEWSFLASH

Voltage Pictures Strikes Again: The Privacy Battle Between ISPs and Copyright Holders.

July 12  2016 NEWSFLASH

Important Milestone in the Canadian IP Law - We Finally Have Privilege!

February 9  2016 NEWSFLASH

Leonardo Da Vinci Is Still Alive!

June 29  2015 NEWSFLASH

Canada Just Became a More Attractive Jurisdiction to Litigate.

March 30 2015 NEWSFLASH

Trademarks in Canada and the Madrid Protocol.

January 23 2015 NEWSFLASH

Federal Court of Appeal Confirms Use of Pop Culture to Demonstrate Fame of a Mark.

October 8 2014 NEWSFLASH

Protecting the Extraction Industry Through Protection of Intellectual Property.

July 10 2014 NEWSFLASH

Exercise Caution When Choosing a Trademark – MBM Successfully Expunges The Athletic Club & Design Trademark and Prohibits its Use in Canada.

June 18 2014 NEWSFLASH

Redskins - Disparaging & Racist vs. Political Correctness - You Choose.

May 28 2014 NEWSFLASH

PMPRB's Interpretation of "Patentee" Overly Broad

April 30 2014 NEWSFLASH

Media Advisory: Crude Solutions Launches Patent Lawsuit Against MEG Energy

April 10 2014 NEWSFLASH

Language Politics and French Sign Wars in Quebec - Revisited

MArch 31 2014 nEWSFLASH

Canada's Trademark Law Soon to be Changed - Including Harmonization with International Treaties

February 24 2014 nEWSFLASH

Illegal Downloaders Beware – You Can Run but You Can’t Hide Behind Your ISP: Balancing Privacy Rights against the Rights of Copyright Holders

February 18 2014 nEWSFLASH

When is an Engineer not Engineering in a Trade-mark?

February 5 2014 nEWSFLASH

MBM Intellectual Property Law Has Moved!

January 17 2014 nEWSFLASH

The Intellectual Property Process: Some Historical and Practical Considerations

OCTOBER 31 2013 newsflash

New Powers to Combat Counterfeit Products in Canada Likely Around the Corner

OCTOBER 4 2013 newsflash

Another Win for MBM – Federal Court of Canada Overturns Trademark Opposition Board and Recognizes the Overlap Between Alcohol and Tobacco (Cigars)

June 6 2013 newsflash

Supreme Court Asked to Reconsider Decision to Invalidate Viagra Patent


Newsflash (Homepage)


Leonardo Da Vinci Is Still Alive!

By Scott Miller, February 9th, 2016


Federal Court File Nos. T-1104-15 and T-2125-15

Scott Miller and the litigation team at MBM Intellectual Property Law have successfully joined its Italian wine making client, Dallevigne S.p.A. (Dallevigne), to an appeal of a decision of the Canadian Trademark Office expunging the trademark DA VINCI (TMA303667) for non-use pursuant to s.45 of the Trademarks Act. The party who originally requested the s.45 confirmed it will not participate in the appeal of the trademark office decision to the Federal Court. However, the maintenance of the s.45 decision is relevant to Dallevigne because it had filed a trademark application, CANTINE LEONARDO DA VINCI & Design No. 1561950 (CANTINE) which was refused by the Trademark Opposition Board (TMOB) solely because, at the time of the TMOB decision, the DA VINCI mark was still on the register. Dallevigne has appealed the TMOB decision refusing the registration of the CANTINE trademark.   

The Federal Court correctly found that Dallevigne (1) will be directly affected by the s.45 appeal decision and (2) will suffer prejudice if it was not allowed to be joined to the s.45 appeal because Constellation Brands Quebec Inc., the owner of the DA VINCI registration is continuing to assert the impugned trademark against the CANTINE trademark, without the opportunity for Dallevigne, or any other party,  to challenge the registration being asserted against Dallevigne.  

The Federal Court also correctly stayed the appeal of the CANTINE trademark pending the outcome of the s.45 appeal recognizing that proving irreparable harm is not a pre-condition to the granting of a stay where the Federal Court is effectually enjoining itself as opposed to exercising power over an administrative body. In such situations, a stay will be granted if the Court believes a party will not be unfairly prejudiced and it’s in the interest of justice to treat the request for a stay analogous to a scheduling or an adjournment request.  

In all, it is possible to have a party joined in one proceeding and at the same time stay another proceeding when fairness, common sense and the interest of justice are considered.

For more information about this topic please contact:

Scott Miller, Partner, Head of the Litigation Department 
T: 613.801.1099
E: This e-mail address is being protected from spambots. You need JavaScript enabled to view it.

Trademarks in Canada and the Madrid Protocol

By Randy Marusyk, April 30th, 2015

The Madrid Protocol is a trademark treaty that has established a system for the international registration of trademarks, having 92 member countries including the United States and the European Union. It makes it possible to file national trademark applications in one language, and also to simultaneously renew and record assignments or address changes for registrations in multiple jurisdictions. This filing procedure may potentially provide significant cost savings for an applicant who would like to file a global trademark.

Canada has begun implementation of the Madrid Protocol when Bill C-31, the Economic Action Plan 2014, No. 1, which recently received Royal Assent. Although this legislation has been passed, the Trade-mark Regulations will need to be revised and proclaimed into force before the Madrid Protocol becomes law in Canada; it is expected this will happen in late 2015 or early 2016. Other practical implementations such as staff training, IT system updates, and clarification of the Canadian Intellectual Property Office’s (CIPO) role as an ‘Office of Origin’ may affect this timing.

There have been some concerns expressed as to the implementation of the Madrid Protocol in Canada. Practically, it will further burden an over-burdened system which may result in an increase of the prosecution timeline for domestic applications, in order to meet the strict time limits imposed by the protocol. The Courts may also need to adjust to higher volumes of litigation while looking for legal guidance in other jurisdictions. There are also concerns about the overly broad legislative amendments including the removal of trademark ‘use’ requirements at the time of registration. Such a change in the Canadian legislation may result in trademark squatting, that is, the registering of trademarks solely for the purpose of selling them.

For more information about this topic please contact:

Randy Marusyk, Partner 
T: 613.801.1088
E: This e-mail address is being protected from spambots. You need JavaScript enabled to view it.


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