By Trish Sawhney

In Canada, trademark applications are examined in the order in which they are received.  In other words, requests for expedited examination are disregarded. CIPO recently announced changes to this practice to ensure Canadians have timely access to COVID-19 related goods and services.  As of this month, requests for expedited examination of trademark applications claiming medical goods or services relating to COVID-19 will now be considered. 

To be eligible for expedited examination, the application must include one of the following types of goods or services:

1. pharmaceuticals, medical devices (such as diagnostic tests, ventilators), or medical protective equipment (such as sanitary masks for protection against viral infections, disposable gloves for medical purposes) that prevent, diagnose, treat, or cure COVID-19; or
2. medical services or medical research services for the prevention, diagnosis, treatment, or cure of COVID-19.

All requests for expedited examination must be made by way of affidavit or statutory declaration setting out how one or more of the following criteria are met:

1. A court action is 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. An approval for use of the goods or services listed in the application has been submitted to, or has been obtained from, Health Canada under the same name as the trademark.

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

By Sukey Omran

​On January 1, 2021, the Brexit transitionary period will end and as a result, European trademarks (“EUTMs”) will no longer cover the United Kingdom (“UK”).
 
Registered Marks
 
All registered EUTMs, will be cloned into an equivalent UK trademark registration. The UK registration will have the same application date, registration date, registration number (preceded by ‘UK009’), and renewal date as the EUTM registration. However, at the time of renewal, a separate renewal fee will apply to the UK and EUTM registrations.  
 
Pending Applications
 
Brand owners with pending EUTM applications have until September 30, 2021 to convert their application into a UK mark. These Applicants will be able to claim the filing date of the corresponding pending EUTM application.
 
Opting Out of the Comparable UK Trademark
 
Trademark owners may choose to opt out of the comparable UK trademark and the mark will be treated as though it had never been applied for or registered under UK Law. Trademark owners may not opt-out if they have used the comparable UK right in the UK. Opt-out requests can be submitted after January 1, 2021.
 
If you need assistance in understanding the implication of Brexit on European and UK trademarks, or assistance with these foreign filings, contact us at Clancy PC.

Clancy PC is extremely proud to announce that our very own Erin McEwen, Alexa Bailey, and Janna Ouellette have passed the 2020 Intellectual Property Institute of Canada’s Trademark Administrator Exam.
 
In passing this exam, these remarkable women have achieved the status of Certified Canadian Trademark Administrator (C.C.T.A) by demonstrating their knowledge of trademark foundations, regulations, procedures and the best practices pertaining to the administration of trademarks.
 
Clancy PC invests heavily in continuing professional development in order to provide the most up to date services for our clients. We have a wonderful, skilled team ready to assist you with all of your trademark needs.  
 
Congratulations Erin, Alexa, and Janna!

By Trish Sawhney

In June 2019, the revised Trademarks Act came into force in Canada. Among the many changes, the Act expanded the definition of a ‘trademark’ to allow for the registration of various “non-traditional” trademarks.

When we usually think of trademarks, we think of words, phrases, designs, or a combination of these elements. Non-traditional trademarks on the other hand include sounds, holograms, moving images, scents, tastes, colours per se, three-dimensional shapes, modes of packaging goods, textures, and/or the positioning of a sign. For example, Crayola Properties Inc. has filed an application in Canada to register the iconic crayon scent, describing it as “a unique scent of a pungent, aldehydic fragrance combined with the faint scent of a hydrocarbon wax and earthy clay.”

A key function of a trademark is to point consumers to a single source of goods or services. Non-traditional trademarks are incredibly advantageous in achieving this goal as entities can strategically target all five senses and use them to create a brand connection, resulting in an incredibly powerful sensory experience for consumers. 

As more and more non-traditional trademarks proceed to registration in Canada, it will be essential for companies to review their portfolios to ensure all trademark avenues are covered.  Now may be the time to adopt a non-traditional mark!

If you have a non-traditional trademark you wish to protect, contact us today!