Having vast expertise in providing legal protection to large Russian and international pharmaceuticals and healthcare companies, Lidings has put together a Legal Digest highlighting the most notable patents disputes in Life Sciences:

The global food and beverage e-commerce market is expected to grow to $22.4 billion in 2020, possibly reaching $36.4 billion in 2023. That’s up from $14.9 billion in 2019.  Food and beverage e-commerce revenue in the United States alone is projected to exceed $15.2 billion this year and $19 billion by 2022.

It’s no surprise that much of this recent uptick is due, in large part, to the global COVID-19 pandemic.  With most people now working from home and limiting in-person interactions, consumers have flocked online to purchase food, beverages and other essential goods.  And it’s not only online grocery and delivery services like Instacart and Amazon Fresh that are reaping the benefits of this increased consumer demand. Many food and beverage brands themselves have also added or shifted to direct-to-consumer e-commerce offerings. Where supply chain, shipping, and payment processing, among other things, previously made direct sales logistically unattainable and unprofitable, e-commerce became one of the most powerful tools for some in the food and beverage industry to stay relevant and accessible to their customers during the pandemic.

The U.S. Supreme Court resolved a circuit split on April 23, 2020, by unanimously holding in Romag Fasteners, Inc. v. Fossil Group, Inc., et al. that a brand owner is not required to prove that a trademark infringer acted willfully in order for the owner to be awarded the infringer’s profits.

Background

Romag Fasteners, Inc. (Romag) sells magnetic snap fasteners for leather goods under its registered trademark ROMAG, and Fossil, Inc. (Fossil) designs, markets and distributes fashion accessories. Romag and Fossil had entered into a license agreement that permitted Fossil to use Romag’s fasteners in Fossil’s handbags and other products. Romag later discovered that certain Fossil products contained counterfeit snaps bearing the ROMAG mark, so Romag sued Fossil in Connecticut district court for trademark infringement. During the trial, it was established that one of Fossil’s manufacturers in China consistently used counterfeit ROMAG snaps.

The U.S. Supreme Court recently confirmed that a “generic.com” term may be eligible for federal trademark registration in the U.S., in certain circumstances. We will review the relevant decisions, discuss the Canadian legal framework with respect to registration of such mark and consider the implications of seeking registration of a “generic.com” or a “generic.ca” mark in Canada.

The Relevant Decisions

In United States Patent and Trademark Office v. Booking.com B.V, the travel reservation company Booking.com B.V. (“BBV“) sought to register four marks, each containing the term “Booking.com”, with the United States Patent and Trademark Office (“USPTO“). BBV offers its travel reservation services under the brand “Booking.com” and operates a website with the same domain name.

The Federal Court of Canada (the “FCTD“) recently released Toys “R” Us (Canada) Ltd v Herbs “R” Us Wellness Society, in which it considered whether a cannabis company, Herbs “R” Us Wellness Society (“Herbs R Us“), had breached Sections 20, 7(b) and 22 of Canada’s Trademarks Act (the “Act“) with respect to claims of trademark infringement, passing off and depreciation of goodwill. This is an interesting case in its review and application of Section 22 of the Act. It provides further protection for trademark owners in Canada.