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 us. 

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 us.

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 us.

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. Contact us here to schedule. 

​Article by Nathalie Siah

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"Paula Clancy is a trademark lawyer and agent with recognised expertise in all areas of trademark procurement, licensing, strategic planning and global portfolio management."

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