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!
By Sukey Omran
Bill C-86 has introduced bad faith as a new ground of opposition. In other words, an opponent may now oppose a trademark application on the basis that it was filed in bad faith.
Prior to the amendments to the Trademarks Act, Section 30 (i) required an applicant to declare that it was satisfied of its entitlement to use the trademark in Canada. This provision was sometimes used to attack applications filed in bad faith since it was argued that an applicant could not be satisfied that it was entitled to use the mark in Canada if it was filed in bad faith.
The following are examples of where bad faith may be found:
We know you have nothing but the best intentions in mind, but where in doubt, feel free to contact us so we can help you avoid any allegation of bad faith!
By Trish Sawhney
On January 1, 2021, the Canadian Intellectual Property Office will be increasing its fees for several services, including:
For a list of updated fees please click here.
We would be pleased to review your trademark portfolio and provide you with recommendations of cost-effective strategies to help minimize expenses before the increases come into effect.
For more information (on how to keep those extra dollars in your pocket!), please do not hesitate to contact us.
By Trish Sawhney
When submitting a trademark application, clients often ask whether they should file an application for a standard character mark, a design mark, or both.
A standard character mark, also known as a word mark, refers to a word, phrase, acronym, numbers or letters, regardless of the font, size, style, colour, etc. It is often deemed to be the broadest form of protection since it covers the words themselves. By contrast, design marks may consist of pure design elements and/or word elements. However, the word elements are protected in the context of the design, therefore if the design changes, protection for the words incorporated in the design may be lost.
When deciding whether to register the word(s), the design, or both, some important factors to consider are:
Hayabusa CEO, Ken Clement, discusses the importance of having an IP strategy and securing IP protection in the fight against counterfeits. A good defence is always the best offence — even outside the ring.