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.
For more information on the Canadian trademark registration process please contact Paula Clancy.
By Nathalie Siah.
Brexit is fast approaching on March 29, 2019. What will the impact be on IP rights?
Below is a summary of the key areas:
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.
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 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.
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:
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 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