October 1, 2019

Third edition of the ‘Canadian Trademark Law Benchbook’ now available

An essential text for new members of the intellectual property law bar and those focusing their skills on the legal and business realities of trade-mark law practice.

Originally done as a resource for Canadian judges, Canadian Trademark Law Benchbook provides a thorough analysis of Canadian trade-mark law and is an essential text for intellectual property lawyers. Contributors use their considerable experience to bring their unique insights and provide clarity to Canadian trade-mark law. In conjunction with Canadian Patent Law Benchbook, new members of the intellectual property bar and those seeking to refocus their skills on the fundamental legal and business realities of IP law are provided with meaningful interpretations of these aspects of law.

New in this Edition

Complete review of the chapters with commentary added discussing:

Trade-mark law in Canada: upcoming changes to the Trade-marks Act

Registrability and Entitlement: geographic places of origin

Use and s. 45 Proceedings:

  • use not a prerequisite to registration
  • meaning of the “normal course of trade” by product samples
  • services in Canada where no “bricks and mortar” store

Opposition Proceedings: standard of review

Distinctiveness: when loss of distinctiveness justifies an interlocutory injunction

Passing Off:

  • use of competitor’s marks in metatags
  • s. 7(a) and damages due to demand letters

Infringement and Depreciation of Goodwill: infringement by manufacturing, causing to be manufactured, possession, attempting to export and offering for sale

Litigation Procedures and Remedies:

  • intervention, customs remedies and punitive and exemplary damages
  • proceeding by application
  • criminal counterfeit proceedings

Survey Evidence:

  • crafting the proper question and the survey
  • alternative or supplements to survey evidence

Official Marks: test for government control

About The Author

Donald M. Cameron, B.A.Sc. (Eng. Sci.), M.A. Sc. (Aerospace), LL.B., is a Partner at Bereskin & Parr LLP. His practice focuses on intellectual property litigation, particularly relating to patent, trade-mark, copyright, trade secrets law, and technology licences. He also advises clients on intellectual property portfolio strategies and the intellectual property aspects of technology licensing. He is certified as a Specialist by the Law Society of Upper Canada in Intellectual Property Law (Patents, Trademarks and Copyright) and Civil Litigation.

Don has participated in intellectual property law litigation involving a broad range of technologies and businesses including electromagnetic fields and induction, semiconductor chip fabrication, telecommunications, mechanical devices, bio-engineering, biotechnology, pharmaceuticals, and computer databases. He was senior trial counsel in Canada's first DNA patent trial and appeal as well as Canada’s first all-electronic IP trial.

Don is an Adjunct Professor of Law at the University of Toronto Faculty of Law and Osgoode Hall Law School at York University, teaching Patent and Trade Secret Law at both the undergraduate and graduate level.