Posted in International, Trademark and Copyright
Chris Bennett
outlines common #trademark mistakes companies face in Canada, providing tips on
how to deal with upcoming changes to the country’s new law.
Hockey players are taught a fundamental lesson at an
early age: keep your head up when you have the puck or you could end up in a
world of hurt. Improper trademark usage and protection in Canada can lead to a
similar result. Below are some common Canadian trademark mistakes, as well as
summaries of some upcoming changes to #Canadian_law.
Not
doing searches
The fact that a mark is available for use in another
country does not mean it is available for use in Canada. It is therefore
important to conduct Canadian clearance searches before using or applying to
register a trademark in Canada. These searches can identify potential issues in
advance and could help you avoid unnecessary legal fees, rebranding fees and
damages.
Not
registering
Your mark must be registered in Canada to be fully
protected in Canada. Registrations in other countries provide no protection in
Canada. Using your mark extensively in Canada might give you some common law
trademark rights in the cities where your mark has become well known. However,
this will not stop competitors from using the mark in other cities. In
contrast, registration will protect your mark throughout Canada, regardless of
where you have used it. Registration also provides a complete defence if you
get sued for trademark infringement.
Improper
licensing
Your trademark rights in Canada could be diminished or
destroyed if a third party uses your mark without a proper licence agreement.
Canadian law requires you to have that agreement in place with any third party
who uses your mark and requires you to have control over the character and
quality of the products and services offered in connection with your mark. This
rule applies to arm’s length third parties as well as to intercompany
agreements with affiliates and subsidiaries, which are often overlooked.
Non-use
Your Canadian registration can be expunged if you do
not use your mark in Canada in association with the goods and services in your
registration for at least three consecutive years. Your mark can also be
expunged if there are material differences between the registered version of
the mark and the actual version of the mark you are using.
Forgetting
copyright and moral rights
Logos and design marks can be protected in Canada by
both trademark law and copyright law. However, registering your logo as a
trademark does not give you any rights under copyright law. If the logo was
created by a contractor or any third party other than an employee in the course
of his or her employment, then the contractor or third party will own the
copyright in the logo, even if you paid them to create it. You will therefore
want the contractor and third parties to transfer ownership to you. This
must be done in writing.
Ignoring
the upcoming changes to Canada’s trademark laws
Canada’s trademark laws are about to change in a big
way, likely in late 2017 or 2018. Some of the changes will benefit registrants,
but others will provide some significant challenges. For example, Canada will
implement the Madrid Protocol, allowing foreign applicants to extend their
international applications into Canada, and allowing Canadian applicants to
extend their applications internationally. It will also implement the Nice
Agreement, which will require applicants to group their goods and services into
international classes. Canada is currently one of the few countries that does
not charge filing fees based on the numbers of classes of goods and services in
an application, and this could change with the implementation of Nice.
One of the most controversial changes to the law is
that applicants will no longer be required to use their marks in Canada as a
prerequisite to registering their marks in Canada. This change will
significantly increase the number of conflicting marks on the Canadian
register. It will also increase the number of trademark conflicts in Canada and
will make trademark clearance more difficult and expensive. There will be new
grounds of opposition, one of which could slightly mellow the impact of the
changes to the use requirements. In particular, an opponent will be able to
oppose an application on the basis that the applicant wasn’t using the mark and
didn’t intend to use the mark in Canada as of the filing date.
Among the other changes, examiners will be able to
object to an application on the basis of distinctiveness and may require
applicants to submit evidence of a mark’s distinctiveness. The changes will
also permit applicants to divide their applications, which is particularly
useful if there is a problem with only some of the goods and services in the
application. Further, the length of a trademark registration in Canada will be
reduced from 15 years to 10 years.
The prospect of these upcoming changes should
encourage many applicants to file their Canadian applications soon to avoid the
undesirable changes in the new legislation, while still taking advantage of the
positive changes that will apply after the applications have been examined
and allowed.
No comments:
Post a Comment