First Anti-Spam Decision

CanadaFashionLaw previously advised on Canada’s new anti-spam legislation “CASL” (click here).  Within a year of the legislation’s enactment, we have our first decision.  This shows that companies really should pay heed to CASL and ensure that it is in compliance with its provisions.  Below is a summary of the decision against Plentyoffish Media Inc. (“Plenty of Fish”).

Plenty of Fish sent commercial electronic messages to registered users of its online dating service.  The unsubscribe mechanism was not clearly or prominently set out in the e-blasts.  In addition, the unsubscribe mechanism could not be readily performed.  The purpose of the e-blasts was to notify the Plenty of Fish subscribers of all the services that were available.  The violations occurred between July 1, 2014 and October 8, 2014.

Plenty of Fish was hit with a significant fine: $48,000.  In addition, Plenty of Fish was required to undertake that it would develop and implement a program that ensured compliance with the anti-spam legislation.  This included training and education for Plenty of Fish’ staff and the creation of corporate policies and procedures.

If you’d like to know more about Canada’s Anti-Spam Legislation, feel free to reach out to CanadaFashionLaw at afroese(at)

SIGNIFICANT Changes to Canada’s Trade-marks Regime

Canada’s trade-mark regime was officially given a maaaaaajor dose of botox on June 19, when proposed changes to trade-marks legislation was given royal assent. Whereas some revisions were expected, others have brand owners and their trusty trade-mark lawyers up in arms.

First, let’s go over the expected changes. Canada is now a signatory to a series of international trade-mark treaties, Madrid, Nice and Singapore. This brings Canada into alignment with the global system and, frankly, makes sense if Canada is going to continue to be a player in the global marketplace.

The good news? What qualifies as a trade-mark is now expanded. In addition, the registration process will be streamlined.

The unfortunate news? Trade-mark applicants will now be required to adhere to a classification system with respect to their wares and services – this may increase costs as there will likely be a “per class” government fee.

The bad news? Canada is no longer going to be a use-based jurisdiction. Historically, any brand owner is required to use the trade-mark in Canada in order to obtain trade-mark rights. This has been foundational to Canadian brand protection. The impending revisions to the legislation do away with this concept. Thus, there is no longer a use requirement in order to obtain a trade-mark registration. This is less than ideal. This allows “brand pirates” to secure registrations in Canada, which can then be used to block legitimate brand owners from launching their brands in Canada. If you’ve ever had dealings with the Chinese trade-mark regime (and I’ve had many clients do so), it is a comparable regime. Bottom line, if you want to secure your trade-mark rights in Canada, you should do so quick before the “brand speculators” do so.

As with any type of new legislation, it takes time for the changes to come into practice, which is beneficial for the brand owner. I highly recommend that brand owners take advantage of this time lag to file their trade-mark applications now and secure their rights ahead of the onslaught of “brand speculators/pirates”.

If you want more information about this, feel free to reach out.

Wham, Bam…Now There’s No Spam

Starting July 1, Canada’s Anti-Spam Legislation (“CASL”) will come into effect, which could significantly impact your business’ marketing campaign.

CASL regulates how businesses generate business leads via electronic messages. In real talk, it means less unwanted e-mails! A “Commercial Electronic Message” extends to any means of telecommunications (including text, sound, voice or images), whose purpose is to encourage commercial activities. In reality, this extends to e-mails, texts, instant messages, or anything similar. Whether or not this extends to social media messaging is up in the air.

If e-blasts are a part of your marketing strategy, it is necessary for each recipient to expressly opt-in to being spammed. This can either be in writing or orally. The request for express consent must clearly set out:

– the purpose for the consent;
– the specific information being sought about the consenting individual; and
– a statement that the individual can withdraw his/her consent.

If, however, there is an existing business relationship, an existing non-business relationship or voluntary disclosures, the consent is implied. In specific instances, consent is not required.

CASL also regulates what information must be contained in the consented-to electronic message:

– information that identifies the sender;
– information enabling the recipient to contact the sender;
– a mechanism that enables the recipient to unsubscribe.

If your finger is on that trigger and you continue to spam, thereby violating CASL, monetary penalties could follow.

Word of advice: take a look at your marketing strategy and determine whether any of your electronic messages may be covered under CASL. If yes, determine whether consent is implied or needs to be expressly obtained. Finally, create internal policies that ensure that your business continues to comply with the CASL requirements.

If you have any questions on how your company can comply with CASL, feel free to reach out to CanadaFashionLaw directly.