Lawyer Monthly - June 2022

About Catherine Lovrics Catherine (Cat) Lovrics is a partner at Marks & Clerk Canada and head of the firm’s Copyright and Digital Groups, as well as a senior member of the Trademarks Group, with a wealth of experience in helping national and multinational clients protect, exploit and enforce their IP in a wide range of industries. Her practice focuses on copyright, trademarks and personality and publicity rights in addition to marketing and advertising law, consumer protection and data and privacy law. She is also Chair of the Intellectual Property Institute of Canada’s Copyright Committee. First established in the UK in 1887, Marks & Clerk is a global intellectual property that aids its international clients with legal, technical and commercial expertise. Its team of more than 300 worldwide practitioners aid businesses in enforcing and maximising the value of their intellectual property. Catherine Lovrics Partner Marks & Clerk Law Canada 33 Yonge Street, Suite 300 Toronto, Ontario M5E 1G4 Canada Tel: +1 416-268-1236 +1 416-849-8396 Fax: +1 416-595-1163 E: 57 JUN 2022 | WWW.LAWYER-MONTHLY.COM EXPERT INSIGHT and use their own recipes for the pizza dough. The plaintiff exercised no control over the price of the pizzas or the flavour of the finished products, the territories were not reviewed for optimisation of delivery times by the plaintiff, and the plaintiff did not conduct regular inspections to ensure compliance with quality standards. Essentially, the licensees were free to operate their businesses as they saw fit. There was evidence of a haphazard licensing program, inconsistent terms and a lack of written licensing agreements. The decision is also a reminder to trademark owners that prompt enforcement of their trademark rights with respect to third parties is helpful to maintain the validity their trademarks. Evidence showed that the plaintiff had permitted coexistence of third-party MILANO marks/operations, such as PIZZERIA MILANO of Masson, QC, thus rendering the Milano Marks non-distinctive. Evidence that that the plaintiff did not implement a program for policing the Milano Design Mark, including in respect of the PIZZERIA MILANO QC, was specifically raised by the court and this along with the permitted coexistence ultimately proved fatal to the validity of the Milano Design Mark. Finally, the decision is a cautionary tale regarding the difficulties of proving, with the passage of time, both the subsistence and terms of an oral licence arrangement. Reducing all license agreements to writing is best practice and highly recommended. Looking back on the aforementioned cases, can you expand on the trends currently being witnessed in the trademark space and further developments that may soon emerge? The Bombay Frankies case recognises the uncertain and evolving legal requirements for interlocutory injunctions and signals a possible broadening of the circumstances in which interlocutory injunctions may be granted. Trademark owners and contentious trademark users should be aware of the evolving case law in this regard. It also follows a trend of uncertainty arising in Canadian trademark law resulting from the 2019 amendments to the Trademarks Act, notably the impact of the removal of the use requirement for registration. The Milano Pizza is another cautionary tale recognising the court’s willingness to invalidate trademarks where the trademark owner has not sufficiently exercised control over the character and quality of licensed goods or services, and correspondingly that licensing should be undertaken judiciously and with clear and implemented control requirements. My thanks to Robert McNaughton, Studentat-Law, for his assistance preparing this article. Be sure to view this article on the Lawyer Monthly website, where a number of useful sources are listed.

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