Clancy PC is delighted to welcome Nitin Gomber as an Associate Lawyer.

Nitin holds an LL.M. in Intellectual Property from the Franklin Pierce School of Law in the US and a B.A.LL.B. (Honours) from Panjab University in India. He is called to the bar in New York, as well as in Delhi, India. Nitin is fluent in English, Hindi and Punjabi.
 
Nitin has been in the legal industry for over a decade and has worked as a trademark lawyer, as well as an academic. As a lawyer, he has worked with the largest trademark filing law firms both in the US & India and brings a multi-jurisdictional perspective to the table for our clients. He has represented clients before the US Patent and Trademark Office, the Indian Trade Marks Registry, the Trademark Trial and Appeal Board, and the Santa Clara County Superior Court.
 
Nitin has also taught law at Jindal Global Law School in India that makes him particularly sensitive to the needs of people, with a strong ability to connect with them.

Welcome Nitin! 

Clancy PC is thrilled to announce that it has achieved WBE Certification! WBE Canada certifies Canadian B2B businesses that are at least 51% owned, managed and controlled by women and connects them to corporate and government supply chains. 

The WBE certification is built on global supplier diversity standards and is recognized by such giants as IBM, General Motors, Toyota, Accenture, top Canadian companies like BMO, TD Bank, RBC, TELUS, Rogers, Bell and others. 

WBE Certification helps Canadian women-led businesses by providing direct access to corporate and government supplier diversity leaders and buyers in organizations.  This is a very exciting achievement for Clancy PC.

If you are a woman-led business and would like more information about the WBE Certification process, visit https://wbecanada.ca 

By Trish Sawhney

​In an effort to speed up the trademark registration process in Canada, effective immediately, CIPO will begin accepting expedited examination requests in the form of an affidavit or statutory declaration. The affidavit or statutory declaration must clearly set out how one or more of the following criteria are met:
​

1. A court action is expected or underway in Canada with respect to the applicant's trademark in association with the goods or services listed in the application;
   
   
2. The applicant is in the process of combating counterfeit products at the Canadian border with respect to the applicant's trademark in association with the goods or services listed in the application;
   
   
3. The applicant requires registration of its trademark in order to protect its intellectual property rights from being severely disadvantaged on online marketplaces; or
   
   
4. The applicant requires registration of its trademark in order to preserve its claim to priority within a defined deadline and following a request by a foreign intellectual property office. Note that in such cases the request will need to be attached to the affidavit or statutory declaration.

Should the request be accepted, CIPO will examine the application as soon as possible, which reduces the current 24-28 month wait time significantly.

​If you believe your trademark application meets the requirements above, contact us today to see if we can expedite your application process!

By Trish Sawhney

We are delighted to announce that Clancy PC has been featured in the Ottawa Business Journal!

The article, written by David Sali, highlights our recent partnership with Amazon via the Amazon IP Accelerator program. This program aims to provide small and medium-sized businesses across Canada the opportunity to secure trademark protection for their brands on Amazon and the Canadian marketplace in a timely and cost-effective manner.

As one of only 8 firms in Canada to be chosen, we are honoured to partner with Amazon and eager to help Canadian businesses build their brands and protect their intellectual property. As stated by Paula Clancy herself, this is a tremendous opportunity and of national importance!  

Check out the article here: https://www.obj.ca/article/techopia/mark-ottawa-law-firms-join-program-aimed-protecting-amazon-merchants-ip

If you are interested in selling your products on Amazon, contact us today to learn more!

By Trish Sawhney

​The newly announced Federal Budget 2021 proposes a variety of amendments to ensure Canadian innovators, start-ups, and technology-intensive businesses can access proper capital to protect innovations and succeed in the long term. While further details have yet to be released, we have provided a snapshot of some of the proposed investments below:

To begin, Budget 2021 introduces a new measure, which will allow Canadian-controlled private corporations to immediately expense up to $1.5 million in eligible investments, including intellectual property.

Secondly, Budget 2021 proposes a variety of amendments to the Canada Small Business Financing Program (“CSBFP”). These changes are expected to increase annual financing by $560 million, resulting in support for nearly 3000 more small businesses.

For example, as it currently stands, the CSBFP does not provide financing to help small businesses protect intellectual property. However, Budget 2021 intends to expand the CSBFP’s loan class eligibility to include lending against intellectual property and start-up assets and expenses. Budget 2021 also plans to expand borrower eligibility to include non-profit and charitable social enterprises.

Lastly, Budget 2021 proposes to support Canadian businesses through the following investments:

• $90 million, over two years, starting in 2022-23, to create ElevateIP, a program to help accelerators and incubators provide start-ups with access to expert intellectual property services; and,

 

• $75 million over three years, starting in 2021-22, for the National Research Council’s Industrial Research Assistance Program to provide high-growth client firms with access to expert intellectual property services.

 
These welcomed changes are intended to further incentivize businesses to invest in assets like intellectual property, ultimately acting as a driver for innovation and growth throughout Canada.
 
If you would like to learn about other financing options that are currently available for Canadian businesses, please check out this resource from the Canadian Intellectual Property Office.
 
Interested in discussing strategies for protecting your intellectual property? Contact us today!

By Sukey Omran

The information in this guide has been provided by the Canadian Department of Industry. Please note that this guide does not constitute legal advice and is merely intended to act as an aid if you are considering global expansion.

Where is IP registered?
The European Union Intellectual Property Office (EUIPO) is the agency responsible for registering EU-wide trademarks and designs. The granting of EU patents is administered by the European Patent Office (EPO).

Trademarks

• Filing System:  There are two primary paths to trademark registration: (1) a European Union trademark (EUTM) provides protection in all member states of the Union (2) a national level trademark provides users with protection through the individual IP office of the EU country in which they apply.

• Registration Period: The term of an EUTM is 10 years and may be renewed every 10 years.

• Madrid Protocol: As a member of the Madrid Protocol, the EU can be designated in an international application filed via the Madrid System.

IP Enforcement
Enforcement is administered on a country-by-country basis. Therefore, you must monitor the marketplace for any unauthorized use of your IP. Enforcement of your IP rights is your responsibility.

You may choose to do the following in protecting your IP rights:

• Under the Directive, all EU countries have similar measures available for IP rights holders to defend their IP rights. IP rights can be defended by asking customs to seize goods suspected of infringing any IP. In order to do so, an “application for action” must be filed with the relevant customs department. Depending on your particular rights, the application for action can be national or EU-wide.
  

• Legal proceedings can also be started to enforce your IP rights. Mediation and arbitration, which are generally more informal, less adversarial, cheaper and settlement-focused, can be used as alternatives to going to court.

 
Interested in expanding your trademark protection into the European Union? Contact us today!

We’re so proud to be working with Invest Ottawa and Digital Main Street to bring the Future Proof program to our local businesses. The program helps shops, restaurants, skilled trades companies, and home-based artisans increase online sales and build more efficient, sustainable businesses –for free. We’re dedicated to making our neighbourhood the best place to shop, explore, and eat.This is our way of showing our dedication to OUR community. Visit our website today!  #LoveOttBiz #DigitalMainStreet208

Paula Clancy will be attending this year's virtual INTA Leadership Meeting from May 3-7.  We are looking forward to seeing friends and colleagues from around the world.  Connect with us today!

By Trish Sawhney

​The information in this guide has been provided by the Canadian Department of Industry. Please note that this guide does not constitute legal advice and is merely intended to act as an aid if you are considering global expansion.

Where is IP registered?
The Japan Patent Office (JPO) is the Japanese government agency responsible for granting trademark, patent, utility model and design rights.

Trademarks

Filing System: Japan follows a "first-to-file" system for trademark rights, which means that whoever registers a trademark first holds the exclusive right to the use of the trademark.

Registration Period: In Japan, a trademark is registered for 10 years and can be renewed every 10 years.

Non-Use: If you are not regularly using your trademark in the Japanese marketplace, it may be subject to a dispute or challenged for non-use. Cancellation may be requested if the trademark is not used for 3+ consecutive years.

Madrid Protocol: As a member of the Madrid Protocol, Japan can be designated in an international application filed via the Madrid System.

IP Enforcement
There are several ways to enforce your rights against unauthorized use of your IP in Japan:

• Japan maintains a strong framework of enforcement measures to protect against IP infringement. IP owners can send a warning letter to notify the infringer of their actions in hopes that the infringer ceases all wrongful actions.
  
  
• IP right holders can request a provisional injunction to prevent infringing acts from continuing until the case is resolved.
  
  
• The Japan Customs tariff law gives IP owners the option of filing for custom suspension of infringing goods. If the goods are found to be infringing, the company may face a fine of up to USD 100,000.
  
  
• Japan also provides the option of ADR processes, such as mediation and arbitration. ADR processes are generally more informal, less adversarial, cheaper and settlement focused. They can be used before or as an alternative to going to court.

Interested in expanding your trademark protection into Japan? Contact us today.

We are thrilled to announce that Paula Clancy has been appointed as a DMS Ambassador for Invest Ottawa's Digital Mainstreet Program.The program aims to future-proof businesses by offering a variety of services for digital transformation. To find out more about the program, click here. #iLoveOttBiz 

By Sukey Omran

The information in this guide has been provided by the Canadian Department of Industry. Please note that this guide does not constitute legal advice and is merely intended to act as an aid if you are considering global expansion.
 
Where is IP registered?
Trademarks, copyrights, patents, and designs are granted under the authority of the Office of the Controller General of Patents, Designs & Trademarks (also known as Intellectual Property India), operating under the Department of Industrial Policy & Promotion.
 
Trademarks

• What is it: An Indian trademark distinguishes your company’s goods and services from those of others in the marketplace and may be composed of letters, words, numbers, and/or designs. Colour combinations and three-dimensional shapes are also registerable in India if indicated on the application. Sound marks may also be registered if capable of being represented graphically and are found to be distinctive through use. The registration can take different forms namely word mark, label, logo and device mark.
• Filing System:  Trademark applications must be filed with the Trademarks Registry in the regional office in which your business is situated. Registration may be based on the proposed use of a mark. It is therefore important to apply for registration as early as possible to ensure protection.
• Registration Period: A trademark is registered for 10 years in India and may be renewed indefinitely for periods of 10 years.
• Non-Use: A registration for a trademark that has not been used in India for five consecutive years may be subject to cancellation.
• Madrid Protocol: As a member of the Madrid Protocol, India can be designated in an international application filed via the Madrid System.

IP Enforcement
India offers several ways to enforce your rights against unauthorized use, including customs seizures and civil litigation.
 
You may choose to do the following in protecting your IP rights:

• All types of IP may be protected by the Indian Central Board of Excise and Customs which acts to prevent the import of allegedly infringing goods into India, as long as the IP has been registered or granted by the appropriate IP office. Registration is for a period of at least one year.
• Civil suits are possible for all types of IP infringement. Relief may include temporary or permanent injunction, damages or accounting of profits, delivery up of goods and/or legal costs.
• India’s Copyright Act and Trade Marks Act provide for penalties including imprisonment for a period of up to 3 years, as well as a fine of up to 200,000 rupees.

 
Interested in expanding your trademark protection to India? Contact us today!
​

By Nitin Gomber

In Iancu v. Brunetti 139 S.Ct. 2294 (2019), the Supreme Court of the United States struck down the bar in Lanham Act 15 U.S.C. § 1051 to register immoral or scandalous marks. Since that decision, several marks containing the f word and its variations have been approved for registration by the United States Patent and Trademark Office.  
 
Given the close trading ties between the US and Canada, it is only a matter of time before such brands seek protection in Canada. Therefore, this piece tries to identify verifiable trends and give suggestions on how such brands may successfully prosecute their trademark applications at the Canadian Intellectual Property Office (“CIPO”). 
 
The relevant legislation in Canada
 
Canada’s Trademarks Act, R.S.C., 1985, c. T-13 contains a prohibition against registering marks that consist of or so nearly resembles a scandalous, obscene or immoral word or device. 
 
In addition, the Trademarks Examination Manual provides that it is the duty of the Registrar to consider not only the general taste of the time but also the susceptibilities of persons, by no means few in number, who still may be regarded as old fashioned.  
 
Therefore, the threshold in Canada for registering profanity as an element of a mark is much higher. 
 
Trends at CIPO regarding mild profanity 
 
The following is a list of marks that contain mild profanity, but were nonetheless approved for registration by CIPO: HOLY CRAP THE WORLD’S MOST AMAZING BREAKFAST CEREAL (Reg. No. TMA839232), MISS NUDE CANADA (Reg. No. TMA871013), FAT BASTARD (Reg. No. TMA660750), DOUBLE BASTARD (Reg. No. TMA904533), BULLSHIT (Reg. No. TMA228302; now expunged for failure to renew), NO FRIGGIN CLUE (Reg. No. TMA643831), FREAKIN’ GOOD (Reg. No. TMA1006734), DAMN GIRL! (Reg. No. TMA1092930). 
 
The foregoing list of marks clearly shows that applicants in Canada who use or want to use mild profanity, such as “crap,” “nude,” “bastard,” “bullshit,” “friggin,” “freakin” or “damn” in their marks are at less of a risk of refusal to register. 
 
Trends at CIPO regarding not-so-mild profanity 
 
The following trends have been observed based on marks, which are either currently registered or were once approved for registration by CIPO:  

1.             Variation in visual representation only may not help, as long as the mark is a phonetic equivalent of a not-so-mild profanity
 
The marks (App. No. 1778974), as well as GOPHUQYERZELF (App. No. 0642281), were objected to by CIPO on the basis that they contained phonetic equivalents of the f word. Therefore, a simple variation in the visual representation of the mark may not be of much help, as long as the mark is a phonetic equivalent of the f word or another not-so-mild profanity. 

2.             Masking the not-so-mild profanity with socially acceptable substitutes may help
 
When three trademark applications for FUCK CANCER (App. No. 1453214),  (App. No. 1472208), and  (App. No. 1472201) were filed by a single applicant, CIPO only approved the last of the lot. On similar lines, the mark  (Reg. No. TMA779766) proceeded to registration. 
 
In contrast to the foregoing, however, the marks CAN’T F&!K IT UP! (App. No. 1769070) and LATHER THE F@#K UP (App. No. 1607632) were objected to by CIPO. The one way in which these marks are different from those in the above paragraph is that these marks have the first and the last alphabet of the f word spelled out so that the consumer has little or no confusion as to its pronunciation and meaning. On the other hand, the  and  marks, by only spelling out the first alphabet of the f word leave some room for the onlooker to come to their own conclusion about how to pronounce and/or understand the masked word. Therefore, the key to registration is not to make the f word or another not-so-mild profanity apparent and mask it in a way that onlookers have some leeway in pronouncing and/or understanding the mark. 
 
In addition to masking the profanity with stars, dashes, and other devices, there may be another way to succeed: integrating the profanity with ordinary words to arrive at a fanciful mark. The approval of SHIP OUT OF LUCK (Reg. No. TMA1046661), CUMBRELLA (Reg. No. TMA 1870424) and SASSHOLE (App. No. 1895050) evidences this. 

 
3.             Providing evidence of pronunciation
 
The mark F.H.U.K. (App. No. 1036021) was also approved for registration by CIPO. While the examiner did raise an objection initially, citing the mark to be immoral/scandalous, they changed their mind after a response from the attorney of record. In the said response, it was submitted: (a) that the mark is not a word and therefore Section 9(1)(j) of the Trademarks Act does not apply, and (b) that the periods separating the alphabets F, H, U, and K are so distinctive that an onlooker is likely to perceive the mark as an acronym or abbreviation only. 
 
Therefore, it appears that to increase the likelihood of registration of a mark, evidence of how a mark may be pronounced will help, even if the said mark would make the viewers think of the f word or another not-so-mild profanity nonetheless.   


4.             Well known slangs of profanity
 
The marks NO FRIGGIN CLUE (Reg. No. TMA643831) and FREAKIN’ GOOD (Reg. No. TMA1006734) were allowed to proceed to registration, whereas EFFIN BURGER (App. No. 1624144) was not. 
 
For refusing the latter mark, the examining attorney cited the meaning of the word “effin” from the Urban Dictionary: “a way to say fucking so you won’t get in trouble.” The only problem with the foregoing analysis is that the words “Friggin” and “Freakin” are also defined in the Urban Dictionary in similar terms: “a way to say f*uk when your parents are around” and “to replace the word fucking when you are saying/writing it for a large audience, especially in a business setting,” respectively. 
 
While it is not clear why CIPO drew the line where it drew, it is clear that it considers the use of the word “effin” too close to the f word, whereas it lets the words “friggin” and “freakin” slide by.  
 
Conclusion
 
In conclusion, CIPO is more conservative in approving the f word and other profanity than the USPTO and therefore, our friends from the south will have to rely on the foregoing strategies to successfully prosecute their marks in Canada.

By Trish Sawhney

​The information in this guide has been provided by the Canadian Department of Industry. Please note that this guide does not constitute legal advice and is merely intended to act as an aid if you are considering global expansion.

Where is IP registered?
The Mexican Institute of Industrial Property (IMPI) is the decentralized agency responsible for the administration and registration of patents, trademarks, and industrial designs.

Trademarks

Mexican trademarks may consist of names, letters, numerals, figurative elements, holographic signs, 3-dimensional shapes, sounds, scents, the plurality of operating elements, image elements (including the size, design, colour, layout form, label, packaging and decoration) or any other elements that, when combined, distinguish goods or services in the market.

Filing System: Mexico follows a "registration" and "first-to-use" system for trademark rights. This means that any natural person may use a trademark in association with their goods and services without registration, but the right to exclusive use may only be obtained by registration.


Registration Period: In Mexico, a trademark is registered for 10 years and can be renewed every 10 years if it continues to be used.

• An owner of a trademark must file a Declaration of Use stating that the mark has been used as a trademark in Mexico after 3 years from the registration date.
• As in Canada, if your trademark remains unused in Mexico after the 3 years following registration, it may be challenged for non-use. 
• Madrid Protocol: As a member of the Madrid Protocol, Mexico can be designated in an international application filed via the Madrid System.

   
Language: Since Spanish is the official language in Mexico, consider protecting the Spanish translations of your trademark as well.

IP Enforcement
There are several ways to enforce your rights against unauthorized use of your IP in Mexico:

• The Mexican Customs Authority (Aduanas de México) help prevent counterfeit goods from entering Mexico.
• Since both Mexico and Canada are members of the North American Free Trade Agreement (NAFTA), IP disputes involving parties from both countries may be resolved through the dispute resolution mechanisms outlined in NAFTA.
• IP disputes may be brought before the IMPI, the INDAUTOR and the federal and civil authorities in Mexico. Infringement of IP rights may lead to civil and/or criminal charges.
• Mediation and arbitration, which are generally more informal, less adversarial, cheaper, and settlement-focused, can also be used as alternatives to going to court.
• If you suspect infringement, your can send a "cease and desist" letter to the alleged infringer informing them that you believe they have infringed on your IP rights and advising them to refrain from infringement.

Mexican courts can award varying remedies in IP disputes, including damages, punitive damages, a temporary or permanent injunction, an order prohibiting the importation, delivery or destruction of all infringed articles or an account of all profits made by the infringer. If you pursue a legal battle and win, there is always a chance that you will receive less money than you could receive through settlement proceedings.
​
Interested in expanding your trademark protection into Mexico? Contact us today.

By Sukey Omran

This week’s guide focuses on protecting your trademarks in China.
 
The information in this guide has been provided by the Canadian Department of Industry. Please note that this guide does not constitute legal advice and is merely intended to act as an aid if you are considering global expansion.
 
Where is IP registered?
 
The China National Intellectual Property Administration, PRC (CNIPA) administers the registration of trademarks as well as the grant of patents, whereas copyright registration is overseen by the Copyright Protection Center of China (CPCC), which falls under the National Copyright Administration of China (NCAC).
 
Trademarks

• What is it: A Chinese trademark distinguishes your company’s goods and services from those of others in the marketplace and may be composed of letters, words, numbers, colour combinations, three-dimensional signs (shapes) and/ or designs. In China, a sound may also be registered as a trademark.
• Filing System:  China uses the “first-to-file” registration process, which means that the first person to file a trademark application will generally have priority over a prior user of the trademark. Applications may also be filed and registered without evidence of use of the applied-for trademark. Due to the “first-to-file” trademark system and no use requirement to obtain registration, it is important to apply for trademark protection in China as early as possible.  Registration in Roman characters does not automatically protect the trademark against the use or registration of the same or similar trademark written in Chinese.
• Registration Period:. A trademark is registered for 10 years and can be renewed every 10 years.
• Non-Use: A registration for a trademark that has not been used in China for three consecutive years may be subject to cancellation.

IP Enforcement
There are several ways to enforce your rights against unauthorized use of your IP in China, including administrative actions, customs seizures and civil litigation.
 
You may choose to do the following in protecting your IP rights:

• IP may be registered with the General Administration of Customs of the People’s Republic of China (GACC). GACC acts to prevent infringing products from being exported from or imported into China. GACC customs officials can, inspect and seize goods which infringe IP rights.
• Some e-commerce sites based in China allow IP owners to request the removal of listings for products which infringe their IP rights.
• IP owners have both administrative and judicial recourses against infringers in China. The administrative system can be used for straightforward cases. The judicial system can be used to pursue civil and/or criminal enforcement. Injunctions to stop any IP-infringing activity can be ordered and damages may be awarded.

Interested in expanding your trademark protection into China? Contact us today.Contact Us
​

.This article was written in collaboration with IP Osgoode and has been cross-posted on their blog.

​You have probably heard of the stubborn and widespread phenomenon known as the “gender wage gap”. It varies between countries and professions; however, one thing remains constant: on average globally, women earn less money than men.
 
What is the Gender Wage Gap?
 
The gender wage gap is a prevalent indicator of women’s economic equality. It refers to a metric that describes the average difference in earnings between men and women, typically calculated by dividing women’s wages by men’s wages. Even when all compensable factors (i.e., experience, education, etc.) are controlled, women are still being paid less than men for no other reason than gender.
 
Why Does the Gender Wage Gap Exist?
 
The gender wage gap is complex and results from multiple factors, such as:

1. Gender Discrimination: Women are overlooked by employers who believe that their male counterparts are more competent. Ironically, studies have found that women rank higher than men in top leadership qualities, such as problem solving and initiative.
2. Occupational Segregation: Social norms and discrimination from employers result in an over-representation of women in lower paid industries with fewer benefits.  
3. Work-Life Balance: Women are expected to take time off to raise children. However, when they return, they face the “motherhood penalty.” Many high-paying workplaces do not offer flexibility to mothers, so women are often forced to take less demanding, lower-paying jobs.

 
The Gender Wage Gap in the Canadian Legal Profession
 
Despite Canada having more women lawyers than men (53% women vs. 47% men), the legal profession sees some of the highest gender wage gaps. Ironically, lawyers, who are perceived to be flag bearers of social justice and equality, have failed to make significant progress towards closing the gender wage gap in their own profession.
 
Men and women start out in the legal industry in nearly equal numbers; however, the number of women slowly dwindles as you move up the legal career ladder. For example, there are fewer women equity partners in Canadian law firms than men. Even still, women equity partners make 25% less (estimated $200,000 a year) than men despite their equal work and billing hours.
 
Moreover, in-house women lawyers in Canada outnumber men in the legal corporate profession by 2%, yet still make 11% less. Additionally, male in-house lawyers take home performance bonuses nearly double that of women in-house lawyers. Furthermore, Crown Corporations, Government entities, in-house counsel corporations, and not-for-profit companies employ the highest number of women employees, yet women in these organizations face even greater disparities than in private practice.
 
Typically, in the legal profession, compensation is evaluated based on factors that indicate productivity and collections; however, the gender wage gap is bound to widen if women do not receive the opportunity to work on higher-paying files simply due to gender discrimination or being overlooked by their superiors because of the “motherhood penalty.”
 
Women leave the legal profession for a myriad of reasons; however, the most significant reasons all stem from the gender wage gap: the lack of monetary appreciation for their work of equal value, lack of an inclusive environment in the workplace, and lack of transparency in the pay scales policies.
 
 
Comparing the Gender Wage Gap in Other Jurisdictions
 
Similar disparities are evident in gender wage gap statistics in the legal professions of other jurisdictions.

In the United Kingdom, 78% of law firms pay men more than women. The numbers reflect the fact that men are more often considered for higher paid roles and are awarded with higher bonuses. On average, men are paid approximately 20% more than women in every law firm.

In the United States, the average yearly income of a male partner in a top-tier law firm is nearly one million dollars, whereas women partners make a third as much. A major barrier is ‘old boy’ networking tactics and business development techniques, which, whether unconsciously or consciously, usually exclude women. Another reason for this disparity is the unequal hourly billing rates of partners ($650 for women and $736 for men).

Data shows that regardless of the jurisdiction, women in the legal profession are, regrettably, on average, being paid 20-30% less than men.
 
Strategies for Reducing the Gender Wage Gap
 
The World Economic Forum’s 2020 report has predicted that, at our current rate of progression, it will take an astounding 257 years to close the global gender wage gap! So, what strategies can we implement to accelerate this process?
 
At a general level, the report has identified four helpful strategies:

1. Fully integrating women in the labour force and not subjecting them to part-time work or women-oriented jobs with low pay and low productivity.
2. Setting targets for women in leadership. Enhancing social safety nets, especially relating to childcare support. 
3. Enhancing work quality and pay standards across low-paid women-driven work.
4. Re-skilling women to be ready for re-employment in high growth sectors.

More specifically, in the legal profession, some effective strategies to narrow the gap are as follows:

1. Encouraging law firms of all sizes to share gender wage gap data for all roles. This holds firms accountable to salary transparency.
2. Intertwining gender diversity within every stage of the hiring process.
3. Eliminating discussions about pay history to avoid subconscious contributions to the wage gap.  
4. Mentoring young lawyers to create a future of confident women lawyers with the necessary leadership skills to rise through the ranks.

 
When women are recognized for the work they do and are compensated equally to their counterparts in return, everyone stands to gain. Gender equality is a matter of justice and fairness. There is no more compelling reason to accelerate progress toward gender parity than that.
 
This article is co-written by Trish Sawhney, Articling Student at Clancy PC and Aishwerya Kansal, IPilogue Contributor and IP Innovation Clinic Fellow. 
 
Trish completed her law degree at the University of Birmingham in England. She also pursued a Bachelor of Music with an Honours in Music History, and a Bachelor of Arts with a specialization in Business Administrative Studies from Western University.
 
Aishwerya has a Master’s in Law in International Business Laws from Osgoode Hall Law School and is an Internationally Trained Lawyer with experience in Intellectual Property and Brand Protection.

This week’s guide focuses on protecting your trademarks in Australia.

The information in this guide has been provided by the Canadian Department of Industry. Please note that this guide does not constitute legal advice and is merely intended to act as an aid if you are considering global expansion.

Where is IP registered?
IP Australia (Australia's IP office) is the Australian government agency responsible for granting patents, trademarks, designs and plant breeder's rights.

Trademarks

Filing System: Australia follows a "first-to-use" system for trademark rights; whoever can prove significant use of a trademark first in the Australian marketplace will own the rights to it even if the mark is not registered. However, you should still consider registering your trademark with IP Australia, as registered trademarks are easier to enforce and have a number of other important advantages over trademarks that are not registered.

Registration Period: In Australia, a trademark is registered for 10 years and may be renewed every 10 years. 

Non-Use: If you are not regularly using your trademark in the Australian marketplace, it may be subject to a dispute or challenged for non-use. 

Madrid Protocol: As a member of the Madrid Protocol, Australia can be designated in an international application filed via the Madrid System.

IP Enforcement
There are numerous ways to enforce your rights against unauthorized use of your IP in Australia:
·       The Australian government Department of Home Affairs helps prevent counterfeit and pirated goods from entering Australia. Owners of IP rights can file a customs notice known as a Notice of Objection, which enables the Department of Home Affairs to seize and detain imported goods that violate Australian IP rights.

·       IP owners have many options when they suspect infringement of their IP rights, such as sending a letter of demand, which is often the first step taken. In cases where a letter of demand is not sufficient, it may be best to seek legal action.

·       Australia also provides the option of ADR, which encompasses mediation, arbitration, and expert determination. ADR processes are generally more informal, less adversarial, cheaper and settlement focused. They can be used before or as an alternative to going to court.

​Interested in expanding your trademark protection into Australia? Contact us today.
 

By Trish Sawhney

By Sukey Omran

For the next few weeks, we will be providing general guides to trademark protection in various jurisdictions globally. Please note that these guides do not constitute legal advice and are merely intended to act as an aid if you are considering global expansion.

This week’s guide focuses on protecting your trademarks in Brazil.
 
Where is IP registered? 
 
Brazil’s National Institute of Industrial Property (INPI) is the agency responsible for the administration and registration of patents, trademarks, geographical indications and industrial designs.
 
Trademarks

• What is it: A Brazilian trademark must be a visually perceptive and distinctive, original sign that is not prohibited by any other law. It can be a combination of letters, words, designs or numbers. Brazil also allows 3-dimensional marks, such as the shape or packaging of goods without a functional or technical effect.
• Filing System:  Brazil follows a “first-to-file” system for trademark rights. If someone has been using a similar mark in good faith for 6 months before your filing date, they may be able to challenge your claim to the trademark. Trademark applications must be filed directly with the INPI. Brazilian trademarks only allow registration in 1 class of goods or services. You must submit a separate application for each class.
• After a preliminary examination, a mark is published in the Industrial Property Gazette and becomes open to opposition by interested parties for 2 months. After the opposition period, it is submitted for substantive examination before being granted. 
• Registration Period: In Brazil, a trademark is registered for 10 years from the granting date and may be renewed indefinitely every 10 years. 
• Non-Use: It is not necessary to submit proof of use when filing a trademark application, and non-use is not grounds to challenge a trademark, as third parties can require the forfeiture of trademark registrations after 5 years of non-use. 
• Madrid Protocol: As a member of the Madrid Protocol, Brazil can be designated in an international application filed via the Madrid System.

IP Enforcement
Enforcement is administered on a country-by-country basis. Therefore, you must monitor the Brazilian marketplace for any unauthorized use of your IP. Enforcement of your IP rights is your responsibility.
You may choose to do the following in protecting your IP rights:

• Request assistance from the Department of Federal Revenue of Brazil (Secretaria da Receita Federal do Brasil) as they help prevent counterfeit goods from entering Brazil. 
• Bring your dispute before the state courts of Brazil, unless a federal entity is the accused infringer, in which case it will go before federal court. Brazilian courts can award varying remedies in IP disputes, including monetary damages, imprisonment, fines, temporary or permanent injunctions, and search and seizure orders.
• Choose an alternative dispute resolution method to resolve your IP dispute in Brazil. Mediation and arbitration, which are generally more informal, less adversarial, cheaper and settlement-focused, can also be used as alternatives to going to court. 
• send a “cease and desist” letter to the alleged infringer informing them that you believe they have infringed on your IP rights and advising them to refrain from committing the infringement. 

Interested in expanding your trademark protection into the Brazilian marketplace? Pleasecontact us today.
 

By Trish Sawhney

For the next few weeks, we will be providing general guides to trademark protection in various jurisdictions globally. The information in these guides have been provided by the Canadian Department of Industry. Please note that these guides do not constitute legal advice and are merely intended to act as an aid if you are considering global expansion.
This week’s guide focuses on protecting your trademarks in the United States.
 
Where is IP registered in the United States?
 
The United States Patent and Trademark Office (USPTO) is the U.S. federal agency responsible for granting patents and registering trademarks.
 
Trademarks in the United States
 
What is it: In the U.S., as in Canada, a trademark is a combination of letters, words, symbols and/or designs that distinguishes your company's goods and services from those of others in the marketplace. The USPTO also accepts applications for the registration of non-traditional trademarks such as scent and sound.
 
Filing System: The U.S., like Canada, follows a "first-to-use" system for trademark rights. This means that whoever used the mark first in the U.S. marketplace will own the rights to it even if the mark is not registered. However, you should still consider registering your trademark with the USPTO as registered trademarks are easier to enforce and have a number of other important advantages over trademarks that are not registered.
 
Registration Period: A trademark is registered for 10 years and can be renewed every 10 years.
 
Non-Use: If you are not regularly using your trademark in the U.S. marketplace it may be subject to a dispute or challenged for non-use.
 
IP Enforcement in the United States
 
There are numerous ways to enforce your rights against unauthorized use of your IP in the U.S.:
 
• The U.S. Customs and Border Protection (CBP), a bureau of the Department of Homeland Security, helps prevent counterfeit and pirated goods from entering the U.S. The CBP can seize and detain imported goods which violate U.S. IP rights.
 
Registered trademarks and copyright can be recorded electronically with the CBP. This is a quick, easy, and cost-effective way to protect and enforce IP rights. CBP officers can access a database of recorded IP and monitor imports to prevent the transport of counterfeit goods and goods bearing infringing trademarks.
 
• Counterfeiting, piracy and other potential contraventions of IP rights can also be reported to the National Intellectual Property Rights Coordination Center, which investigates sources of goods that violate IP rights to identify and prosecute organizations and individuals that produce, smuggle, or distribute such goods.
 
• Legal proceedings can be started. Mediation and arbitration, which are generally more informal, less adversarial, cheaper, and settlement-focused, can be used as alternatives to going to court.
 
• A "notice-and-takedown" process may be initiated by copyright holders by sending a takedown notice to an Internet service provider, search engine, host, or other type of site owner/manager to remove from a website material that is infringing their copyright.

​Interested in expanding your trademark protection into the United States marketplace? Contact us today.