June 29, 2018
Intellectual Property (IP) rights are the most important assets of many businesses. Protecting and enforcing those assets is critical to most business strategies. Goodmans’ IP Group provides experienced, practical and timely services and advice to ensure our clients’ businesses take full advantage of their IP assets.
Major changes are underway to Canadian trademark practice. Canada will be adhering to the Madrid Protocol and Singapore Treaty and significant amendments are expected to come into force in 2019 with the new legislation, once revised regulations are finalized and the Canadian Intellectual Property Office’s (CIPO) information technology system is modified. On this Canada Day weekend, here are a few Canadian trademark practice tips to keep in mind before the new law comes into effect.
File Early: The removal of the requirement that marks be used before registration in the new legislation is expected to increase trademark trolling. Protect your brand by filing early.
File Applications for New Marks: The adoption of Nice Classification of goods and services will bring per-class fees resulting in higher filing costs. Trademark owners should consider filing new applications in Canada as soon as possible for new marks to save on government fees and secure rights against third parties.
Fill in Gaps: To protect marks of interest, trademark owners should consider whether the coverage set out in their existing applications and registrations properly reflects all the current marks of interest, covers all goods and services with which the marks are in use, and covers the current presentation of the marks. Fill in gaps by filing new applications to cover all important marks and current goods and services.
Renew Existing Registrations Early: The term of registration will be shortened from 15 to 10 years and, like applications, fee-per-class will be introduced upon renewal. Trademark owners should consider renewing registrations due in 2019 early to save fees.
Cannabis Marks: With the very recent passage of the Cannabis Act in Canada, businesses should consider all aspects of their operations to take advantage of opportunities and to minimize risks including considering IP issues and ensuring that marketing and distribution activities comply with the new legislation and regulations. Unlike the United States, trademark filings in the cannabis field are possible federally in Canada. Like other marks, we recommend cannabis companies file trademark applications as soon as possible to prevent interlopers. Furthermore, since at present there is no fee-per-class, applications can cover a range of goods and services of interest at no additional cost (although with the new legislation, there will be restrictions on use of trademarks with cannabis products).
Over the coming months, Goodmans Intellectual Property and Cannabis Groups will provide updates highlighting key provisions in the new Trademarks Act and Cannabis Act and related Regulations under each. For more information on any of the above, please contact any member of our Intellectual Property or Cannabis Groups.
Goodmans IP Group
As a uniquely Toronto-based firm, we are well-positioned to collaborate with international law firms with minimal risk of conflicts. Our team consists of lawyers, agents and scientists who provide technical support to the IP Group.
We have won numerous landmark cases in the IP area, many of which have defined the extent of IP rights available in Canada. Our award-winning lawyers are recognized for their breadth of expertise and years of experience in trademarks, patents, industrial designs, copyright and trade secrets.
Our office and CIPO will be closed on Monday, July 2, 2018 for the national holiday.