By Trish Sawhney
In Canada, once you have filed a trademark application, it is examined by CIPO to ensure that it meets the registrability requirements set forth in the Trademarks Act. If an Examiner objects to the application, a formal Office Action will issue.
If objections are raised, the Examiner must state whether the objection pertains to all or some of the goods or services used in association with the mark. In the case the objection only pertains to some of the goods/services, Applicants now have the option of filing a divisional application. This essentially divides the original application into two – the original application and the divisional application.
The goods or services that were not objected to stay in the original application and can proceed to the next steps of prosecution, whereas the goods or services that were objected to are removed to form the second divisional application, which has the same filing date as the original and proceeds through prosecution on its own.
An application may also be divided during opposition proceedings. If an Opponent has objected to some of the goods or services in the subject application, the Applicant can use a divisional application to move certain goods or services forward to registration, while the opposition continues for the contested goods or services.
Once a divisional application has proceeded to registration, provisions of the Trademarks Act allow it to be merged with other registrations of the trademark that stem from the same original application. So, unlike the orange in the picture above, divisional applications can be put back together. Tasty, right?
If you are interested in learning more about divisional applications or are curious if your trademark application would benefit from being divided, contact us!
By Sukey Omran
Since the 2019 amendments to the Trademarks Act, trademark 'use' is no longer a pre-requisite to the registration of a trademark in Canada. Indeed, applications filed after June 17, 2019 no longer need to include a claim of use, making known, proposed use, or use and registration abroad. Brand owners with pending applications that were filed prior to June 17, 2019 now have the option of removing any use claims from the application. There could be value in removing these claims when it comes to third-party challenges post-registration.
Of course, "use" is still essential for establishing and maintaining trademark rights in Canada. If a registered mark is not in use, it is vulnerable to cancellation under Section 45 of the Act.
If you would like more information on what constitutes 'use' of a trademark in Canada, please contact us at Clancy PC. Spoiler alert: the definition of 'use' differs if the trademark is associated with goods vs. if a trademark is associated with services!
By Trish Sawhney
In Canada, trademark applications are examined in the order in which they are received. In other words, requests for expedited examination are disregarded. CIPO recently announced changes to this practice to ensure Canadians have timely access to COVID-19 related goods and services. As of this month, requests for expedited examination of trademark applications claiming medical goods or services relating to COVID-19 will now be considered.
To be eligible for expedited examination, the application must include one of the following types of goods or services:
All requests for expedited examination must be made by way of affidavit or statutory declaration setting out how one or more of the following criteria are met:
By Sukey Omran
On January 1, 2021, the Brexit transitionary period will end and as a result, European trademarks (“EUTMs”) will no longer cover the United Kingdom (“UK”).
All registered EUTMs, will be cloned into an equivalent UK trademark registration. The UK registration will have the same application date, registration date, registration number (preceded by ‘UK009’), and renewal date as the EUTM registration. However, at the time of renewal, a separate renewal fee will apply to the UK and EUTM registrations.
Brand owners with pending EUTM applications have until September 30, 2021 to convert their application into a UK mark. These Applicants will be able to claim the filing date of the corresponding pending EUTM application.
Opting Out of the Comparable UK Trademark
Trademark owners may choose to opt out of the comparable UK trademark and the mark will be treated as though it had never been applied for or registered under UK Law. Trademark owners may not opt-out if they have used the comparable UK right in the UK. Opt-out requests can be submitted after January 1, 2021.
If you need assistance in understanding the implication of Brexit on European and UK trademarks, or assistance with these foreign filings, contact us at Clancy PC.
Clancy PC is extremely proud to announce that our very own Erin McEwen, Alexa Bailey, and Janna Ouellette have passed the 2020 Intellectual Property Institute of Canada’s Trademark Administrator Exam.
In passing this exam, these remarkable women have achieved the status of Certified Canadian Trademark Administrator (C.C.T.A) by demonstrating their knowledge of trademark foundations, regulations, procedures and the best practices pertaining to the administration of trademarks.
Clancy PC invests heavily in continuing professional development in order to provide the most up to date services for our clients. We have a wonderful, skilled team ready to assist you with all of your trademark needs.
Congratulations Erin, Alexa, and Janna!
By Trish Sawhney
In June 2019, the revised Trademarks Act came into force in Canada. Among the many changes, the Act expanded the definition of a ‘trademark’ to allow for the registration of various “non-traditional” trademarks.
When we usually think of trademarks, we think of words, phrases, designs, or a combination of these elements. Non-traditional trademarks on the other hand include sounds, holograms, moving images, scents, tastes, colours per se, three-dimensional shapes, modes of packaging goods, textures, and/or the positioning of a sign. For example, Crayola Properties Inc. has filed an application in Canada to register the iconic crayon scent, describing it as “a unique scent of a pungent, aldehydic fragrance combined with the faint scent of a hydrocarbon wax and earthy clay.”
A key function of a trademark is to point consumers to a single source of goods or services. Non-traditional trademarks are incredibly advantageous in achieving this goal as entities can strategically target all five senses and use them to create a brand connection, resulting in an incredibly powerful sensory experience for consumers.
As more and more non-traditional trademarks proceed to registration in Canada, it will be essential for companies to review their portfolios to ensure all trademark avenues are covered. Now may be the time to adopt a non-traditional mark!
If you have a non-traditional trademark you wish to protect, contact us today!
Registering a trademark is a win for any brand owner: not only does it provide a broad monopoly and the exclusive right to use the mark across Canada, but also it confers powerful remedies against unauthorized use as well as a defence or 'shield' against infringement claims by third parties.
However, obtaining a registration is not the end of the story. In fact, it is just the beginning. Any registration may be attacked if the mark that is being used varies or deviates from the mark that was registered, or if the mark is not in fact being used in the Canadian marketplace.
Competitors may challenge trademarks that are registered at anytime after the 3rd anniversary from the date of registration. Therefore it is very important for brand owners to begin using their mark in Canada (preferably in the exact form as it was registered) within the first 3 years following the date of registration. Otherwise, the registered trademark may be challenged either for non-use, or on the basis that the mark 'as used' deviates from the mark 'as registered'.
"Use" has a very specific meaning under the Trademarks Act, and this definition varies if the trademark is used in relation to goods or services. "Use" in relation to goods is deemed to occur when the mark is displayed on the goods themselves or on their packaging. The Act makes no mention of the display of a mark in advertising or other promotional material. Therefore, the display of a mark on a website or in social media posts would not qualify as "use" in respect of goods. For example, if you have registered ACME for use with t-shirts, you must ensure that the word ACME appears somewhere on the t-shirts themselves, the tags or any labels affixed to them. Posting a photo on Instagram stating "Check out our new ACME t-shirt" would not qualify as "use" of the ACME mark for t-shirts in Canada. Moreover, you would need to establish the sale of t-shirts in Canada since the mark must be displayed at the time that the sale/exchange is made.
By contrast, "use" in relation to services is deemed to occur when the mark is displayed in the performance of or advertising of the services. If you guessed that displaying the ACME mark on a website advertising personal shopping services would be sufficient to constitute use in relation to services, you guessed correctly! Provided, of course, that these services were available in Canada to Canadian consumers.
If you are a brand owner with 'post-registration' questions, we're here to help. Please contact us.
The goal of IPIC’s Indigenous IP Committee is to raise awareness in Canada of the relationship between IP law and the protection of Indigenous knowledge and cultural expressions. Click here to read IPIC's interview with Chair of the IPIC Indigenous IP Committee, Paula Clancy.
By Trish Sawhney
At some point or other, you have most likely seen the trademark symbol (™), or the registered trademark symbol (®) being used in association with various goods and services. These two symbols can be confusing. What exactly do they represent and why should you use them?
The ™ symbol is used when a mark is used as a brand identifier and meets all the requirements of a trademark but the mark is not actually registered. By contrast, the ® symbol signifies that the mark has been registered by the Canadian Intellectual Property Office. Whenever you use your trademark in marketing materials or packaging, you should use the appropriate symbol. Keep in mind that the ™ symbol may be used even if you haven't registered your trademark, therefore you should begin to use it as soon as possible.
In terms of the positioning of these symbols, they normally appear on the upper right side of the trademark, as a superscript, for example: Clancy PC™ or Clancy PC®. However, there are no set rules as to where the symbol must appear.
Using either of these symbols to indicate trademark ownership can be quite advantageous. Not only do these symbols provide public notice of trademark use, but they also help your brand develop goodwill. By using the symbols, you can communicate to the public that you are invested in protecting your intellectual property. Your competitors will be precluded from arguing that they were not aware that the word or design was being used as a trademark, or that they did not know you had asserted trademark ownership. We recommend you review your website, marketing materials and packaging to determine whether you are using trademark markings where necessary.
Have any other questions about trademarks or which symbols to use association with your trademarks? Please contact us!
By Sukey Omran
Bill C-86 has introduced bad faith as a new ground of opposition. In other words, an opponent may now oppose a trademark application on the basis that it was filed in bad faith.
Prior to the amendments to the Trademarks Act, Section 30 (i) required an applicant to declare that it was satisfied of its entitlement to use the trademark in Canada. This provision was sometimes used to attack applications filed in bad faith since it was argued that an applicant could not be satisfied that it was entitled to use the mark in Canada if it was filed in bad faith.
The following are examples of where bad faith may be found:
We know you have nothing but the best intentions in mind, but where in doubt, feel free to contact us so we can help you avoid any allegation of bad faith!
By Trish Sawhney
On January 1, 2021, the Canadian Intellectual Property Office will be increasing its fees for several services, including:
For a list of updated fees please click here.
We would be pleased to review your trademark portfolio and provide you with recommendations of cost-effective strategies to help minimize expenses before the increases come into effect.
For more information (on how to keep those extra dollars in your pocket!), please do not hesitate to contact us.
By Trish Sawhney
When submitting a trademark application, clients often ask whether they should file an application for a standard character mark, a design mark, or both.
A standard character mark, also known as a word mark, refers to a word, phrase, acronym, numbers or letters, regardless of the font, size, style, colour, etc. It is often deemed to be the broadest form of protection since it covers the words themselves. By contrast, design marks may consist of pure design elements and/or word elements. However, the word elements are protected in the context of the design, therefore if the design changes, protection for the words incorporated in the design may be lost.
When deciding whether to register the word(s), the design, or both, some important factors to consider are:
Paula Clancy will be participating in a Twitter Q&A for Canadian Innovation Week. Join us Thursday, November 19th at 1:00 p.m. @CanadianIP @PaulaClancy @BngatchaIPlaw @IPIC_Canada and @Cdn_Innovation to chat about Intellectual Property and Innovation in Canada.
Hayabusa CEO, Ken Clement, discusses the importance of having an IP strategy and securing IP protection in the fight against counterfeits. A good defence is always the best offence — even outside the ring.
21 Savage recently took to Twitter to express his frustration over individuals profiting from the use of the word “Yessirskiii”, a word he claims to have coined in his 2020 song Yessirskiii. According to 21 Savage, authorship of this word should entitle him to 50 percent of the profits from every song that uses the Yessirskiii hook.
Although 21 Savage may have coined the word Yessirskiii, and while he may very well have copyright in his “Yessirskiii” song, to enforce ownership rights over the word Yessirskiii and to claim infringement, he would need to pursue a trademark registration.
If you have questions about ownership or how trademark protection can benefit you, please contact us at Clancy PC!
By Trish Sawhney
Samsung Displays, the display making affiliate of Samsung Electronics, has filed trademark applications in the United States, Korea, Australia, and Europe for QNED. QNED is an acronym for "quantum nano-emitting diode" which is a new type of display technology.
Samsung Display’s QNED application comes just weeks after LG Electronics also filed trademark applications for QNED. The two Korean tech companies have been competing globally in the electronic market for years. It will be interesting to see which company, if any, emerges victorious in this trademark battle. There may be an argument that QNED lacks distinctiveness or that it is descriptive of quantum nano-emitting diode display technology, which means that neither company may be able to monopolize this term.
For further information about what potential pitfalls you may encounter in the trademark registration process, please contact us.
Is there a nicer surprise than receiving fresh flowers from a client? A big, heartfelt thank you to our friends at Liuming International for the gorgeous flowers. We are happy to celebrate the Harvest Moon Festival with you and we thank you so very much for the beautiful gift. We are so grateful for our clients in Canada and around the world who permit us to do what we absolutely LOVE to do each and every day.
By Paula Clancy
Cannabis trademark owners are not able to obtain Federal Trademark Registrations in the U.S. This position was affirmed by the Trademark Trial and Appeal Board ("TTAB") last month in In Re NL LLC, wherein the Board held that for a trademark to meet the "use in commerce" requirement, the use must be "lawful".
Although cannabis and CBD products have been legalized in several U.S. states, the Federal Food, Drug & Cosmetics Act (FDCA) and the Controlled Substances Act (CSA) prohibit the sale of products containing cannabis.
The Applicant argued that under Colorado state law, its use was indeed "lawful", however the TTAB rejected this argument. “The fact that the provision of a product or service may be lawful within a state is irrelevant to the question of federal registration when it is unlawful under federal law”. Under the Supremacy Clause of the U.S. Constitution, in cases where there is conflict between federal and state law, federal law prevails.
This is of course disappointing to cannabis brand owners who are excluded from the benefit of Federal Trademark Registration. The upcoming U.S. election may provide some solace given that Biden/Harris have vowed to legalize cannabis if they win.
We will continue to track these developments as cannabis is a growing sector in Canada, and many Canadian companies are anxiously awaiting the decriminalization of cannabis in the U.S.
Please contact us for further information on protecting your brands worldwide.