Blog Archives

Insurers with a “Direct Interest” may Join the Party

By Daniel Paperny

1. Introduction

The BC Supreme Court’s recent decision in MacPherson v White, 2016 BCSC 1151 establishes that an insurer can successfully apply to be added as a party to a lawsuit which it has a direct interest in, even if the insurer has no contractual right or legislative standing to be added.

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Trader Joe’s trying to make Pirate Joe’s “walk the plank” in U.S. trade-mark case

pirates-1440445_1920In the ongoing dispute between Michael Hallatt, a Vancouver businessman, and U.S. based retailer Trader Joe’s, the United States Court of Appeals for the Ninth Circuit (the “Ninth Circuit”) has overruled the 2013 decision of the U.S. District Court for the Western District of Washington (the “District Court”) not to hear Trader Joe’s claim against Hallatt for, among other things, trade-mark infringement, dilution, unfair competition and false advertising.

The dispute arose out of Hallatt’s purchase of products from Trader Joe’s stores in the U.S., particularly in the state of Washington, for resale in Canada (there are no Trader Joe’s stores in Canada).  Hallatt has and continues to mark up and re-sell Trader Joe’s products at his store in Vancouver, named Pirate Joe’s.

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Trader Joe’s trying to make Pirate Joe’s “walk the plank” in U.S. trade-mark case

In the ongoing dispute between Michael Hallatt, a Vancouver businessman, and U.S. based retailer Trader Joe’s, the United States Court of Appeals for the Ninth Circuit (the “Ninth Circuit”) has overruled the 2013 decision of the U.S. District Court for the Western District of Washington (the “District Court”) not to hear Trader Joe’s claim against Hallatt for, among other things, trade-mark infringement, dilution, unfair competition and false advertising.

The dispute arose out of Hallatt’s purchase of products from Trader Joe’s stores in the U.S., particularly in the state of Washington, for resale in Canada (there are no Trader Joe’s stores in Canada).  Hallatt has and continues to mark up and re-sell Trader Joe’s products at his store in Vancouver, named Pirate Joe’s.

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Combatting Counterfeiting

While implementation of the significant reforms to the Trade-marks Act in Canada that were passed in 2014 has been very slow, one area that has been implemented is the amendments to combat counterfeiting. The amendments are an attempt to change the international reputation of Canada as a laggard in battling counterfeiting.

The amendments brought into force on January 1, 2015 assist both trade-mark and copyright owners in their efforts to stop the distribution and importation into Canada of counterfeit goods.

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Recent Additions to the Technology and Intellectual Property Group

We are pleased to welcome two recent additions to our Technology and Intellectual Property Group: Scott Lamb and Stephanie Mui

Scott is a partner of the firm and is a member of the Technology, Intellectual Property and Infrastructure, Construction & Procurement Groups. Prior to joining us, Scott practiced with Richards Buell Sutton LLP in Vancouver as well as with a national law firm in Toronto. His legal expertise in intellectual property, construction and privacy law has led him to become a prolific author, editor, lecturer and media interviewee in these areas of law. Scott is a registered Trade-mark Agent. He is also accredited by the Canadian Intellectual Property Office (CIPO) and the Intellectual Property Institute of Canada (IPIC) as authorized to speak on their behalf as part of the Bank of Speakers initiative to heighten awareness of intellectual property in the business community.

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Be a Winner: Complying with Canadian Contest Laws

By Monica Sharma

Promotional contests can be a great way to obtain brand exposure and generate consumer loyalty for the products and services of a business. With the rise of social media, business owners now have an additional platform to run contests and reach even more consumers than ever before. Canadian contest law regulates contests, both online and offline, through a variety of statutes and regulations. Operators of contests should be aware of the legislative framework for running contests in Canada and ensure that their Canadian contests and contest rules are compliant with the legislation. Non-compliant contests could result in heavy penalties.

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Labour Market Impact Assessments – Employers Should Expect Delays In Receiving Decisions

Recent correspondence with Employment and Social Development Canada (ESDC)/Service Canada Atlantic Region, suggests that the LMIA program has received an unexpectedly high number of applications and that its existing resources are unable to process LMIA applications in a timely manner.

Whether these delays are replicated at other ESDC offices throughout Canada remains to be seen but it would be prudent for employers and their representatives to anticipate delays and plan accordingly.

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Temporary Foreign Worker Inspections on the Increase

Whilst the Federal Government is contemplating changes to the Temporary Foreign Worker Program (TFWP) to alleviate skill shortages employers are experiencing across Canada, it is also focusing on compliance through a significant increase in the number TFWP inspections it is carrying out.

An inspection can be triggered at random, by a whistleblower or, as is more often the case when an employer that has previously used the TFWP applies for a new Labour Market Impact Assessment (LMIA).

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In no mood for charity: Federal Court confirms that charities are not necessarily public authorities

The Federal Court of Canada recently confirmed in Starbucks (HK) Limited v. Trinity Television Inc., 2016 FC 790 (the “Decision”) that status as a charity is, in and of itself, insufficient to constitute an entity as a public authority for the purpose of obtaining an official mark.

(For a discussion about official marks and their interplay with regular trade-marks, please see this previous post on our blog.)

The facts leading up to the Decision are straightforward: in 2013, Starbucks (HK) Limited (“Starbucks”) filed an application to register the trade-mark NOW TV & Design.  During prosecution, an official mark for NOWTV, owned by Trinity Television Inc. (“Trinity”), was cited against the Starbucks application.  In response, Starbucks commenced a judicial review application against the Registrar’s decision – made in June 2001 – to give public notice of the adoption and use of NOWTV as an official mark.

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What’s Your Evidence? The Danger of Hearsay Evidence in IP Litigation

iStock_000011931148XSmallIn Pfizer Canada Inc. v. Teva Canada Limited, 2016 FCA 161, the Federal Court of Appeal (“FCA”) recently overturned a substantial damages award in a pharmaceutical patented medicines action on the basis that the trial judge admitted improper hearsay evidence. This is an important reminder that the hearsay rule of evidence is alive and well.

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