By Paula Clancy
On June 17, 2019 Canada's trademark laws will change dramatically. Some of the critical changes include:
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:
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:
Article by Nathalie Siah