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Canadian Trademark Law

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Canadian Trademark Law { PRACTICE MANAGEMENT } CI ANAD AN TRADEMARK LAW: PREPARE FOR ChaNGE By Mark Evans and Keltie Sim Luft Canadian trademark law and practice are set for the most dramatic change in over 50 years. Legislation, in the form of Bill C-31, has created a mixed bag of risks and opportunities for Canadian businesses. While implementation will likely not occur before 2018, in-house counsel should be taking a number of steps now to best protect their companies. Changes to Trademark Use mark, especially those based in Europe Requirements and other regions and countries, com- Canada has always been a use-based juris- monly file trademark applications cover- diction, and the determination of which ing a breadth of goods and services well party first used its mark in Canada will beyond those that will ever be commer- remain important in contentious pro- cialized. With Canada abolishing use as a ceedings such as trademark infringe- trademark registration requirement, the ment litigation and trademark opposi- Canadian trademark register will soon be tions. However, under the new law, it will cluttered with an influx of registrations no longer be necessary to use a mark in covering a wide range of unused goods Canada or elsewhere in order to obtain a and services. Canadian trademark registration. This is Additionally, the Canadian trademark the most dramatic change, and its impact register today provides information as to should not be underestimated. whether an application was filed on the basis of use in Canada (and since when) What is the Practical Effect? or whether the use of the mark was in As use will no longer be required to ob- a specified foreign country. Once the tain a Canadian trademark registration, changes are implemented, this informa- the registration process will generally be tion will disappear, and brand owners faster for brand owners. Unfortunately, will struggle to determine whether they this will also open the door to registra- were the first to use a mark in Canada and tions being obtained by trademark trolls whether contentious trademark proceed- and squatters who have no use of a mark ings should be launched. While the risks and whose sole intention is to extract pay- can be minimized in some cases through ment from brand owners. suitable use investigations, it is not dif- Also, many legitimate brand own- ficult to contemplate many situations, ers who do not require use of a trade- particularly involving foreign owners of 12 CCCA MAGAZINE | WINTER 2015 HIVER { PRACTICE MANAGEMENT } In-house counsel should not wait until the Madrid System is in force in Canada before protecting their brands internationally. Key “markets, present and anticipated, should be protected. Canadian trademark registrations, where tion. While the Canadian government has one set of fees to protect its brand in up investigations will not be helpful in deter- not yet announced the fees under the new to approximately 100 different countries/ mining whether a mark has been used in law, it is anticipated that brand owners territories. Canada is presently one of the Canada, since when, and in connection will face significantly greater filing costs, few industrialized countries” that is not a with which particular goods or services. particularly for those applications cover- member of the Madrid System. ing a wide range of products and services. Although the Madrid System has the Act before Increased Government Fees ability to be a cost-effective “one-stop Come into Effect Streamlining International Trademark shopping” mechanism for international Unlike in virtually every other country, Protection brand protection, it may not be worth- the Canadian government’s fee to register Currently, Canadian businesses seeking to while if foreign registration is being a trademark is not yet dependent upon protect their brands outside Canada must sought in limited jurisdictions. Further- the breadth of goods and services covered typically file a separate application in each more, the Madrid System has its own pe- by the application. Unfortunately, this flat foreign country of interest, although a culiarities and limitations. For example, if fee bargain will change once the new law single application can be filed to cover the Canadian application or registration is implemented, as Canada will be imple- the European Community. Once the new is either refused or cancelled in whole or menting the Nice Classification system. law is in effect, Canadian brand owners in part within five years of registration, This system involves categorizing goods will have one more tool available to assist the international registration will also be into 34 different classes and services into them in protecting their brands outside cancelled, unless it is converted into inde- 11 different classes. Canada: the Madrid international trade- pendent filings in the member countries/ In many countries, such as the U.S., mark filing system. The Madrid System territories to which it was originally ex- there is a separate fee for each class of will allow a Canadian brand owner to file tended. Thus, the Madrid System is typi- goods or services covered by an applica- one application, in one language, and pay cally unsuitable if there is concern that CANADIAN CORPORATE COUNSEL ASSOCIATION | CCCA-ACCJE.ORG 13 { PRACTICE MANAGEMENT } the mark may be contested in Canada by Should you be making defensive filings to culties because of trademark trolls who third parties. broaden the scope of your existing regis- have registered and asserted “their” trade- trations? marks against them in foreign countries What Steps Should be Taken Now? where their suppliers and manufacturers Set Up Trademark Monitoring. are located. ❚ Review Your Company’s Brands and File. Canadian in-house counsel should ensure In view of the anticipated flood of trade- a mechanism is already set up so the Ca- mark applications filed in Canada by nadian trademark register is monitored Mark Evans and Keltie Sim Luft are partners in the both trademark pirates and foreign brand and reviewed for potentially confusing Toronto office of Smart & Biggar, Canada’s largest owners for marks not used in Canada, trademark applications. Trademark mon- firm practicing exclusively in IP law. Canadian businesses should take steps itoring services will become especially im- Mark provides trademark protection, management to promptly file for all currently unregis- portant as the volume of trademark ap- and counselling services. He represents many of the tered brands. Additionally, by filing now, plications increases in Canada, including world’s most famous brand owners and has been chosen as Canada’s leading trademark litigator. He increased government filing fees will be for unused trademarks. avoided for multi-class applications. can be contacted at [email protected]. In-house counsel should therefore re- Protect Your Brands Internationally. Keltie focuses on the domestic and international view their trademark portfolios with their In-house counsel should not wait until the clearance, prosecution, portfolio management, marketing departments to determine Madrid System is in force in Canada be- acquisition and licensing of trademarks for clients based in Canada and internationally and operating what should be protected. For instance, fore protecting their brands internation- within a vast array of industries. She has been are all product names registered? Is your ally. Key markets, present and anticipated, widely recognized as a top practitioner in the field corporate name registered as a trade- should be protected. Also, many Canadian of trademarks. Keltie can be contacted at ksluft@ mark? The corporate logo? Sub-brands? companies have faced considerable diffi- smart-biggar.ca. Our planet’s enormous natural wealth – from untapped energy reserves to abundant minerals – is an important economic HELPING YOU driver of the Canadian and global economies. Energy and STAY CURRENT. natural resources companies need to connect with a law firm with geographical reach and proven experience. From regulatory and environmental issues that hit close to home, to cross-border and complex transactions affecting outcomes globally, we bring the legal advice that adds power to your business. We work for the best: our clients. mcinnescooper.com 14 CCCA MAGAZINE | WINTER 2015 HIVER.
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