The Madrid System will be implemented in Canada on June 17, 2019. This system allows for the international registration of marks in more than 120 countries with one single procedure, one fee, one currency and in one language.

How do you file a Madrid application?

• We can help! Madrid applications are filed with the International Bureau of WIPO.
• The Madrid application is based on a national application in one of the member countries.
• Canada will be a member of the Madrid system as of June 17, 2019.
• Applicants can file their international application at the same time as their national application or any time thereafter.

Advantages of the Madrid System

• Possible cost savings due to the streamlined filing processes, particularly if filing in 3 or more jurisdictions.
• Streamlined administration and maintenance of the registration.
• Ease for expanding trademark protection – you can simply apply to designate additional countries.
• All examination periods are fixed at either 12 or 18 months.

Disadvantages of the Madrid System

• “Central Attack” – if the national application is rejected or refused within five years from the date of application, the Madrid application will collapse. The owner of the application will need to “convert” the Madrid application to national applications in the designated countries which will incur significant costs.
• Deadlines for responding to office actions vary and can be considerably short.

If a Madrid filing is of interest, please contact Paula Clancy.

Photo: WIPO

By Nathalie Siah.

The recent decision of Roots Corporation v. YM Inc. (Sales) 2019 FC 16 has shed some light on the consequences of material misstatements made in the registration of a trademark. 

In this case, the trademark CABIN FEVER and Design was registered in 2017; however, the court found that a material misstatement was made in the Declaration of Use of the application – specifically, its description of “Men’s, women’s and children’s casual, dress, business and athletic clothing; fashion accessories, namely rings, earrings, necklaces, bracelets, scarves, belts, socks, handbags, sunglasses; cold weather accessories, namely mittens, gloves, scarves, hats, toques; footwear, namely shoes, boots, slippers and sandals.” 

Nevertheless, the court held that the registration could be amended to delete the goods/services in question, without affecting the registration as a whole. In other words, the court refrained from finding that the registration was void ab initio. 

Major changes to the Act coming in June 2019 may lower the risk of material misstatements since applicants will no longer be required to file Declaration attesting to the use of the mark to secure registration.
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For more information on the Canadian trademark registration process please contact Paula Clancy. 

Clancy PC is very pleased to announce that founder and managing attorney, Paula Clancy, has been certified by the Law Society of Ontario as a Specialist in IP (Trademarks) as of February 2019. Certified Specialist designation is awarded to professionals who are recognized and experienced in his or her field of law and have met high standards.

To learn more about the Certified Specialist Program, visit the Law Society of Ontario's website.

By Nathalie Siah. 

Brexit is fast approaching on March 29, 2019. What will the impact be on IP rights?

• If a Withdrawal Agreement is negotiated and agreed upon by both the UK and EU, there will be a transitional period until the end of 2020 where EU law will continue to apply in the UK. 
• If no-deal is reached between the UK and the EU, the government has published a series of technical notices applying to the relevant areas of IP outlining the transition.

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Below is a summary of the key areas:

Trademarks
For trademarks, the effects will be minimal. The UK government has confirmed that in the event of a “No Deal Brexit”, equivalent rights will be granted in the UK that correspond to the EUTM registration. These rights will be created automatically and without cost to the owner. Registration certificates will not be issued by the UKIPO, but the details of these marks will be available on the database.  For “pending” EUTMs, the applicant will have 9 months to apply for the same protections in the UK while retaining the priority date of the EU application.  For pending applications, UK application fees will apply. The mark and the specification must be identical to, or at a minimum, contained within, the EUTM application.

Patents
There will be no change to the way patents are filed and prosecuted. The UK will remain a member of the European patent system, governed by the European Patent Convention (EPC) –completely separate from the EU. There are many non-EU members such as Iceland, Switzerland and Norway that are also part of the EPC. The European Patent Office (EPO) will continue to validate European patents in the UK and patent prosecution will follow suit.

Copyright
Copyright has existed for centuries, prior to the formation of the EU. The UK and EU member states are part of several international treaties on copyright which do not depend on UK’s membership in the EU. Therefore, protection of copyright will be largely unchanged.

What may change
As the first country to leave the EU, the UK has the opportunity to deviate from established EU law. The threshold for copyright protection for example, may be of interest. Currently, the threshold in the EU for copyright is a “uniform test of originality, based on intellectual creation” established by the Infopaq case. However, prior to joining the EU, the originality threshold was far lower and the result of their “labour, skill or effort”. The UK may be inclined to revert back to this lower threshold once the UK leaves the EU if they so choose. Similar trends may be seen in patent and trademark jurisprudence emanating from the UK post-Brexit.
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For more information on the effects of Brexit for Canadian IP owners, please contact Paula Clancy.

By Nathalie Siah. 

The IP Canada Report was published on January 22, 2019. This annual publication contains the most recent statistics and trends in intellectual property (IP) usage by Canadians and by foreign entities in Canada. 
Here are some of the key statistics worth noting:

• In 2017, trademark applications showed the most significant growth (8%) with industrial designs (6%) and patents (1%) following suit. This may be compared with the previous year (2016) in which there was a 9% growth for industrial design, 4% for trademarks and, again, marginal growth for patents.
• Trademark applications have increased significantly over the past ten years.
• Trademark applications filed in Canada had a majority made by entities in Canada (44%), then the United States (29%), with China (4%) and the United Kingdom (3%) following close behind.
• The largest growth of applications filed in Canada has been from China, a growth of 50%.
• International trademark filings by Canadian companies have grown, with the majority being in the United States.
• CIPO forecasts that 10 years after Canada accedes to the Madrid Protocol, a quarter of all Canadian applications will be filed abroad via the Madrid system.

• The largest number of patent applications filed in 2017 emanated from the United States, with Canada second, and Germany, Japan and France not far behind.
• Since 2008, patent applications in Canada have declined by 17%, whereas filings abroad by Canadians increased 13% from 2007 to 2016

• The countries filing the most industrial design applications in Canada are the United States (53%) and UK (5%).

For more information on the IP Canada Report, please contact Paula Clancy.