.This article was written in collaboration with IP Osgoode and has been cross-posted on their blog.
You have probably heard of the stubborn and widespread phenomenon known as the “gender wage gap”. It varies between countries and professions; however, one thing remains constant: on average globally, women earn less money than men.
What is the Gender Wage Gap?
The gender wage gap is a prevalent indicator of women’s economic equality. It refers to a metric that describes the average difference in earnings between men and women, typically calculated by dividing women’s wages by men’s wages. Even when all compensable factors (i.e., experience, education, etc.) are controlled, women are still being paid less than men for no other reason than gender.
Why Does the Gender Wage Gap Exist?
The gender wage gap is complex and results from multiple factors, such as:
The Gender Wage Gap in the Canadian Legal Profession
Despite Canada having more women lawyers than men (53% women vs. 47% men), the legal profession sees some of the highest gender wage gaps. Ironically, lawyers, who are perceived to be flag bearers of social justice and equality, have failed to make significant progress towards closing the gender wage gap in their own profession.
Men and women start out in the legal industry in nearly equal numbers; however, the number of women slowly dwindles as you move up the legal career ladder. For example, there are fewer women equity partners in Canadian law firms than men. Even still, women equity partners make 25% less (estimated $200,000 a year) than men despite their equal work and billing hours.
Moreover, in-house women lawyers in Canada outnumber men in the legal corporate profession by 2%, yet still make 11% less. Additionally, male in-house lawyers take home performance bonuses nearly double that of women in-house lawyers. Furthermore, Crown Corporations, Government entities, in-house counsel corporations, and not-for-profit companies employ the highest number of women employees, yet women in these organizations face even greater disparities than in private practice.
Typically, in the legal profession, compensation is evaluated based on factors that indicate productivity and collections; however, the gender wage gap is bound to widen if women do not receive the opportunity to work on higher-paying files simply due to gender discrimination or being overlooked by their superiors because of the “motherhood penalty.”
Women leave the legal profession for a myriad of reasons; however, the most significant reasons all stem from the gender wage gap: the lack of monetary appreciation for their work of equal value, lack of an inclusive environment in the workplace, and lack of transparency in the pay scales policies.
Comparing the Gender Wage Gap in Other Jurisdictions
Similar disparities are evident in gender wage gap statistics in the legal professions of other jurisdictions.
In the United Kingdom, 78% of law firms pay men more than women. The numbers reflect the fact that men are more often considered for higher paid roles and are awarded with higher bonuses. On average, men are paid approximately 20% more than women in every law firm.
In the United States, the average yearly income of a male partner in a top-tier law firm is nearly one million dollars, whereas women partners make a third as much. A major barrier is ‘old boy’ networking tactics and business development techniques, which, whether unconsciously or consciously, usually exclude women. Another reason for this disparity is the unequal hourly billing rates of partners ($650 for women and $736 for men).
Data shows that regardless of the jurisdiction, women in the legal profession are, regrettably, on average, being paid 20-30% less than men.
Strategies for Reducing the Gender Wage Gap
The World Economic Forum’s 2020 report has predicted that, at our current rate of progression, it will take an astounding 257 years to close the global gender wage gap! So, what strategies can we implement to accelerate this process?
At a general level, the report has identified four helpful strategies:
More specifically, in the legal profession, some effective strategies to narrow the gap are as follows:
When women are recognized for the work they do and are compensated equally to their counterparts in return, everyone stands to gain. Gender equality is a matter of justice and fairness. There is no more compelling reason to accelerate progress toward gender parity than that.
This article is co-written by Trish Sawhney, Articling Student at Clancy PC and Aishwerya Kansal, IPilogue Contributor and IP Innovation Clinic Fellow.
Trish completed her law degree at the University of Birmingham in England. She also pursued a Bachelor of Music with an Honours in Music History, and a Bachelor of Arts with a specialization in Business Administrative Studies from Western University.
Aishwerya has a Master’s in Law in International Business Laws from Osgoode Hall Law School and is an Internationally Trained Lawyer with experience in Intellectual Property and Brand Protection.
This week’s guide focuses on protecting your trademarks in Australia.
The information in this guide has been provided by the Canadian Department of Industry. Please note that this guide does not constitute legal advice and is merely intended to act as an aid if you are considering global expansion.
Where is IP registered?
IP Australia (Australia's IP office) is the Australian government agency responsible for granting patents, trademarks, designs and plant breeder's rights.
Filing System: Australia follows a "first-to-use" system for trademark rights; whoever can prove significant use of a trademark first in the Australian marketplace will own the rights to it even if the mark is not registered. However, you should still consider registering your trademark with IP Australia, as registered trademarks are easier to enforce and have a number of other important advantages over trademarks that are not registered.
Registration Period: In Australia, a trademark is registered for 10 years and may be renewed every 10 years.
Non-Use: If you are not regularly using your trademark in the Australian marketplace, it may be subject to a dispute or challenged for non-use.
Madrid Protocol: As a member of the Madrid Protocol, Australia can be designated in an international application filed via the Madrid System.
There are numerous ways to enforce your rights against unauthorized use of your IP in Australia:
· The Australian government Department of Home Affairs helps prevent counterfeit and pirated goods from entering Australia. Owners of IP rights can file a customs notice known as a Notice of Objection, which enables the Department of Home Affairs to seize and detain imported goods that violate Australian IP rights.
· IP owners have many options when they suspect infringement of their IP rights, such as sending a letter of demand, which is often the first step taken. In cases where a letter of demand is not sufficient, it may be best to seek legal action.
· Australia also provides the option of ADR, which encompasses mediation, arbitration, and expert determination. ADR processes are generally more informal, less adversarial, cheaper and settlement focused. They can be used before or as an alternative to going to court.
Interested in expanding your trademark protection into Australia? Contact us today.
By Sukey Omran
For the next few weeks, we will be providing general guides to trademark protection in various jurisdictions globally. Please note that these guides do not constitute legal advice and are merely intended to act as an aid if you are considering global expansion.
This week’s guide focuses on protecting your trademarks in Brazil.
Where is IP registered?
Brazil’s National Institute of Industrial Property (INPI) is the agency responsible for the administration and registration of patents, trademarks, geographical indications and industrial designs.
Enforcement is administered on a country-by-country basis. Therefore, you must monitor the Brazilian marketplace for any unauthorized use of your IP. Enforcement of your IP rights is your responsibility.
You may choose to do the following in protecting your IP rights:
By Trish Sawhney
For the next few weeks, we will be providing general guides to trademark protection in various jurisdictions globally. The information in these guides have been provided by the Canadian Department of Industry. Please note that these guides do not constitute legal advice and are merely intended to act as an aid if you are considering global expansion.
This week’s guide focuses on protecting your trademarks in the United States.
Where is IP registered in the United States?
The United States Patent and Trademark Office (USPTO) is the U.S. federal agency responsible for granting patents and registering trademarks.
Trademarks in the United States
What is it: In the U.S., as in Canada, a trademark is a combination of letters, words, symbols and/or designs that distinguishes your company's goods and services from those of others in the marketplace. The USPTO also accepts applications for the registration of non-traditional trademarks such as scent and sound.
Filing System: The U.S., like Canada, follows a "first-to-use" system for trademark rights. This means that whoever used the mark first in the U.S. marketplace will own the rights to it even if the mark is not registered. However, you should still consider registering your trademark with the USPTO as registered trademarks are easier to enforce and have a number of other important advantages over trademarks that are not registered.
Registration Period: A trademark is registered for 10 years and can be renewed every 10 years.
Non-Use: If you are not regularly using your trademark in the U.S. marketplace it may be subject to a dispute or challenged for non-use.
IP Enforcement in the United States
There are numerous ways to enforce your rights against unauthorized use of your IP in the U.S.:
• The U.S. Customs and Border Protection (CBP), a bureau of the Department of Homeland Security, helps prevent counterfeit and pirated goods from entering the U.S. The CBP can seize and detain imported goods which violate U.S. IP rights.
Registered trademarks and copyright can be recorded electronically with the CBP. This is a quick, easy, and cost-effective way to protect and enforce IP rights. CBP officers can access a database of recorded IP and monitor imports to prevent the transport of counterfeit goods and goods bearing infringing trademarks.
• Counterfeiting, piracy and other potential contraventions of IP rights can also be reported to the National Intellectual Property Rights Coordination Center, which investigates sources of goods that violate IP rights to identify and prosecute organizations and individuals that produce, smuggle, or distribute such goods.
• Legal proceedings can be started. Mediation and arbitration, which are generally more informal, less adversarial, cheaper, and settlement-focused, can be used as alternatives to going to court.
• A "notice-and-takedown" process may be initiated by copyright holders by sending a takedown notice to an Internet service provider, search engine, host, or other type of site owner/manager to remove from a website material that is infringing their copyright.
Interested in expanding your trademark protection into the United States marketplace? Contact us today.
By Sukey Omran
Clancy PC is honoured to be recognized as one of Canada’s top trademark firms by the World Trademark Review. A special congratulations to Clancy PC’s very own Paula Clancy who has also individually been recognized for another consecutive year as one of the world's leading trademark professionals.
We are very grateful to be recognized for our excellence in the area of trademarks and this designation is a testament to our drive in providing quality service. We take pride in continually growing and developing our skills in trademark law and it is a privilege to serve our clients.
Check us out in the World Trademark Review!
By Paula Clancy
Several of our foreign clients who have filed a Canadian designation using the Madrid Protocol have contacted us to inquire about the issuance of a "Notice of Possible Opposition" in relation to their application. We thought it would be helpful to explain why CIPO is issuing these Notices, even though opposition proceedings have not been commenced.
CIPO is obligated to issue any notice of provisional refusal in respect of Protocol Applications within 18 months of being notified of the Canadian designation. If such notice is not issued within the 18 months, the application is deemed to be approved and will proceed to registration.
The issue is that there are currently significant delays in prosecution at CIPO. For non-Protocol Applications, it is taking an average of 24 months for an application to be examined. Moreover, there may be situations where CIPO approves the application within the 18 month period, however, an opposition is commenced after the deadline. It is for this reason that CIPO has been pre-emptively issuing these notices in relation to Protocol Applications, which in turn allows it to send a provisional refusal beyond the 18-month window. Therefore, if you receive one of these notices, this does not necessarily mean that an opposition has been commenced.
We recommend that foreign associates appoint a Canadian Trademark Agent to help monitor the status of their clients' applications. Otherwise, CIPO will correspond directly with the applicants. Of course, we would be pleased to appoint our firm as agent of record on behalf of your clients.
By Sukey Omran
February is black History month. We acknowledge this as a time to reflect on the important history of Black people. In this month we will celebrate the achievements of the Black community, immerse ourself in learning and allyship, and acknowledge the complex reality faced by many in the Black community.
This month we encourage you to support Black owned businesses, learn about Black stories, and most importantly check in with and listen to the Black people in your community.
While there is much work to be done, we look forward to this month of learning and reflection. Our team is committed to diversity and inclusion, and we will continue to champion women, BIPOC, LGBTTQQIAAP and all others who enrich the fabric of humanity through diversity.
By Sukey Omran
Since COVID-19 has become a harsh reality the USPTO has reported over 600 trademark applications that use or refer to COVID. Many of these applications are said to have been applied for by “trademark trolls”, a term used to describe applicants who want to register a trademark without intent to use the mark, or in bad faith. However, since the USPTO requires actual use of the mark in order to proceed to registration, most of these “trademark troll” applications will likely fail since trolls are unlikely to demonstrate use of the mark in commerce.
The emergence of trademark trolls in the United States touches upon an interesting question regarding how jurisdictions such as Canada, who have eliminated the use requirement for the purposes of obtaining a trademark registration, will repel trademark trolls. The amended Canadian Trademarks Act has been in force for almost two years now, and it introduced new provisions which provide for 'bad faith' as a new ground of opposition and invalidation. Of course, Canadian registrations may also be cancelled for non-use after the third anniversary from the date of registration. Time will tell if these provisions will be sufficient to curb the activities of trademark trolls in Canada.
If you have questions about what constitutes 'bad faith' or how to block a trademark troll, please contact us at Clancy PC.
By Sukey Omran
In the midst of this global pandemic, the NHL has finally been cleared to resume play. This season is unlike any other with several changes including the way the NHL interacts with sponsors. One of the most noticeable changes fans will see is the expansion of the spaces where NHL teams display brand sponsorships. Logos, also known as design marks, are now on the tarps that cover the empty seats, more visible on the ice and boards, and in an unprecedented move, on the players’ helmets.
Helmet ads will be allowed on a one-year trial basis taking the form of helmet stickers. These ads are unique because only one brand can be on a helmet at a time. The sticker is permitted to be on both sides of the helmet with no official rules as to the size of the sticker.
This new development encourages the creation of design marks and rewards brand owners with well-executed logos whilst also encouraging newer brands to take advantage of the spotlight.
The way we advertise and do business is changing and at ClancyPC we want to help you take advantage of these dynamic opportunities. Contact us for all your design mark protection needs.
By Trish Sawhney
In Canada, once you have filed a trademark application, it is examined by CIPO to ensure that it meets the registrability requirements set forth in the Trademarks Act. If an Examiner objects to the application, a formal Office Action will issue.
If objections are raised, the Examiner must state whether the objection pertains to all or some of the goods or services used in association with the mark. In the case the objection only pertains to some of the goods/services, Applicants now have the option of filing a divisional application. This essentially divides the original application into two – the original application and the divisional application.
The goods or services that were not objected to stay in the original application and can proceed to the next steps of prosecution, whereas the goods or services that were objected to are removed to form the second divisional application, which has the same filing date as the original and proceeds through prosecution on its own.
An application may also be divided during opposition proceedings. If an Opponent has objected to some of the goods or services in the subject application, the Applicant can use a divisional application to move certain goods or services forward to registration, while the opposition continues for the contested goods or services.
Once a divisional application has proceeded to registration, provisions of the Trademarks Act allow it to be merged with other registrations of the trademark that stem from the same original application. So, unlike the orange in the picture above, divisional applications can be put back together. Tasty, right?
If you are interested in learning more about divisional applications or are curious if your trademark application would benefit from being divided, contact us!
By Sukey Omran
Since the 2019 amendments to the Trademarks Act, trademark 'use' is no longer a pre-requisite to the registration of a trademark in Canada. Indeed, applications filed after June 17, 2019 no longer need to include a claim of use, making known, proposed use, or use and registration abroad. Brand owners with pending applications that were filed prior to June 17, 2019 now have the option of removing any use claims from the application. There could be value in removing these claims when it comes to third-party challenges post-registration.
Of course, "use" is still essential for establishing and maintaining trademark rights in Canada. If a registered mark is not in use, it is vulnerable to cancellation under Section 45 of the Act.
If you would like more information on what constitutes 'use' of a trademark in Canada, please contact us at Clancy PC. Spoiler alert: the definition of 'use' differs if the trademark is associated with goods vs. if a trademark is associated with services!
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:
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:
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”).
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.
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!
Registering a trademark is a win for any brand owner: not only does it provide a broad monopoly and the exclusive right to use the mark across Canada, but also it confers powerful remedies against unauthorized use as well as a defence or 'shield' against infringement claims by third parties.
However, obtaining a registration is not the end of the story. In fact, it is just the beginning. Any registration may be attacked if the mark that is being used varies or deviates from the mark that was registered, or if the mark is not in fact being used in the Canadian marketplace.
Competitors may challenge trademarks that are registered at anytime after the 3rd anniversary from the date of registration. Therefore it is very important for brand owners to begin using their mark in Canada (preferably in the exact form as it was registered) within the first 3 years following the date of registration. Otherwise, the registered trademark may be challenged either for non-use, or on the basis that the mark 'as used' deviates from the mark 'as registered'.
"Use" has a very specific meaning under the Trademarks Act, and this definition varies if the trademark is used in relation to goods or services. "Use" in relation to goods is deemed to occur when the mark is displayed on the goods themselves or on their packaging. The Act makes no mention of the display of a mark in advertising or other promotional material. Therefore, the display of a mark on a website or in social media posts would not qualify as "use" in respect of goods. For example, if you have registered ACME for use with t-shirts, you must ensure that the word ACME appears somewhere on the t-shirts themselves, the tags or any labels affixed to them. Posting a photo on Instagram stating "Check out our new ACME t-shirt" would not qualify as "use" of the ACME mark for t-shirts in Canada. Moreover, you would need to establish the sale of t-shirts in Canada since the mark must be displayed at the time that the sale/exchange is made.
By contrast, "use" in relation to services is deemed to occur when the mark is displayed in the performance of or advertising of the services. If you guessed that displaying the ACME mark on a website advertising personal shopping services would be sufficient to constitute use in relation to services, you guessed correctly! Provided, of course, that these services were available in Canada to Canadian consumers.
If you are a brand owner with 'post-registration' questions, we're here to help. Please contact us.
By Trish Sawhney
At some point or other, you have most likely seen the trademark symbol (™), or the registered trademark symbol (®) being used in association with various goods and services. These two symbols can be confusing. What exactly do they represent and why should you use them?
The ™ symbol is used when a mark is used as a brand identifier and meets all the requirements of a trademark but the mark is not actually registered. By contrast, the ® symbol signifies that the mark has been registered by the Canadian Intellectual Property Office. Whenever you use your trademark in marketing materials or packaging, you should use the appropriate symbol. Keep in mind that the ™ symbol may be used even if you haven't registered your trademark, therefore you should begin to use it as soon as possible.
In terms of the positioning of these symbols, they normally appear on the upper right side of the trademark, as a superscript, for example: Clancy PC™ or Clancy PC®. However, there are no set rules as to where the symbol must appear.
Using either of these symbols to indicate trademark ownership can be quite advantageous. Not only do these symbols provide public notice of trademark use, but they also help your brand develop goodwill. By using the symbols, you can communicate to the public that you are invested in protecting your intellectual property. Your competitors will be precluded from arguing that they were not aware that the word or design was being used as a trademark, or that they did not know you had asserted trademark ownership. We recommend you review your website, marketing materials and packaging to determine whether you are using trademark markings where necessary.
Have any other questions about trademarks or which symbols to use association with your trademarks? Please contact us!