By Sukey Omran
In the midst of this global pandemic, the NHL has finally been cleared to resume play. This season is unlike any other with several changes including the way the NHL interacts with sponsors. One of the most noticeable changes fans will see is the expansion of the spaces where NHL teams display brand sponsorships. Logos, also known as design marks, are now on the tarps that cover the empty seats, more visible on the ice and boards, and in an unprecedented move, on the players’ helmets.
Helmet ads will be allowed on a one-year trial basis taking the form of helmet stickers. These ads are unique because only one brand can be on a helmet at a time. The sticker is permitted to be on both sides of the helmet with no official rules as to the size of the sticker.
This new development encourages the creation of design marks and rewards brand owners with well-executed logos whilst also encouraging newer brands to take advantage of the spotlight.
The way we advertise and do business is changing and at ClancyPC we want to help you take advantage of these dynamic opportunities. Contact us for all your design mark protection needs.
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!