Canada’s Intellectual Property Firm

Depreciation of goodwill with cannabis trademarks

Authored byGiselle Chin

Companies looking to use humorous or parody trademarks should weigh the risks, writes Giselle Chin.

The legalization of recreational cannabis in Canada in 2018 was accompanied, naturally, by an increase in cannabis-related trademark use, often with humorous or satirical undertones, such as Fifty Shades of Green and High Park. Not everyone, however, is laughing.

Toys “R” Us (Canada) Ltd. v. Herbs “R” Us Wellness Society, 2020 FC 682  suggests that a tongue-in-cheek trademark, even if it is found to be non-confusing, may still contravene the Trademarks Act by depreciating the goodwill of the registered mark under s. 22 of the Trademarks Act. Until recently, s. 22 has been relatively overlooked, with its scope relatively untested. Toys “R” Us (Canada) Ltd. owns the well-known Toys “R” Us trademark with multi-coloured lettering and a prominent backwards “R”.  

Read the full article written by author Giselle Chin in Canadian Lawyer Magazine’s InHouse column.