By Paula Clancy

​On June 17, 2019 Canada's trademark laws will change dramatically. Some of the critical changes include: ​

•  the reduction of the registration period from 15 years to 10 years
•  the elimination of the requirement to file a Declaration of Use
•  the introduction of per class registration fees​​

Applicants who have pending "allowed" trademark applications therefore have an option: namely, to register prior to June 2019 or to wait.  Let's review the pros and cons: one of the primary reasons to wait would be to take advantage of the fact that the requirement to file a Declaration of Use will be eliminated.  This means that if "Proposed Use" was claimed in respect of any goods or services, and if use has not yet commenced in Canada, the mark may nonetheless proceed to registration post-June 2019.  In other words, the applicant will not be required to file a Declaration of Use or delete goods and services that are not currently in use in Canada to proceed to registration.

The advantage of proceeding to registration prior to June 2019 is that the applicant will benefit from a flat registration fee of $200 (as opposed to a per class registration fee), and the applicant will receive a 15 year registration period.  Of course, this may require the deletion of goods and services for which Proposed Use was claimed, if use of the mark has not yet commenced with respect to same.

Please contact Paula Clancy if you would like further information about the legislative changes coming in June 2019.

With the legalization of cannabis for recreation in Canada, the cannabis market is racing to keep up and protect their brands. A quick search of the Canadian Intellectual Property Office (CIPO) trademark database shows over 500 trademark applications pending for the proposed use of cannabis or cannabis-related goods and/or service.

As there are limited variations of, for example, CANN- or  CANNA-, it is understandable that cannabis businesses feel the ‘register-rush’. In addition, trademark applications take over a year or more to register, creating uncertainty. 

With the bulk of applications being filed at the same time, it is anticipated that there will be conflicts coming to light. Conflicts stem from CIPO’s review of the applications for likelihood of confusion with previously filed  trademarks. 

A positive development is that CIPO has updated its Goods and Services Manual to include more examples of acceptable descriptions relating to marijuana and cannabis. This will hopefully permit applicants to avoid objections during examination. Some examples of what is currently accepted within CIPO’s Goods and Services Manual are:

• Cannabis plants
• Dried cannabis
• Cannabis infused chocolate bars
• Cannabis oil for electronic cigarettes
• Cannabis grinders
• THC oil for medical purposes
• CBD oil for medical purposes
• Marijuana grinders
• Tetrahydrocannabinol for medicinal purposes
• Medicinal cannabis for temporary relief of seizures

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Please press here for a link to the Goods and Services Manual and here for the recent notice relating to cannabis goods issued by CIPO.

Article by Nathalie Siah.

With the New Year just passed, people are reflecting on their personal as well as professional goals for 2019 and making a list of what they are hoping to achieve. This year, we are encouraging clients to reflect on their Intellectual Property (IP) assets. Here are Clancy PC’s recommendations:

1. Identify and review your company’s IP which may include copyright, trademarks, industrial designs, trade secrets and patents.
2. Conduct a valuation of your IP assets to know their worth.
3. Develop an IP strategy for your business. Are there IP assets you have not yet formally protected? Is it time to expand protection outside of Canada? Are you policing the use of your brands both internally and externally?
4. Review employee agreements to ensure that your company’s IP rights are protected. 
5. Raise awareness with your employees. It is very important for your employees to be aware of your intellectual property and how it may or may not be used. Also, employees must be alerted to the risks of infringing third party rights.  
6. Review any confidentiality and licensing agreements to confirm when they expire.
7. Create a policy surrounding social media. Employees may accidentally share information on a public sphere that should be kept confidential.

We would be pleased to conduct a complimentary seminar on the basics of IP for your employees. Please contact Paula Clancy to schedule. 

​Article by Nathalie Siah