New Canadian Trademark Law Changes Take Effect on June 17, 2019: What You Need to Know

Canadian Trademark Law Changes Take Effect on June 17, 2019 –
What You Need to Know  

Trademark protection in Canada and recent Canadian trademark law changes.  Canada has overhauled its trademark laws and they take effect on June 17, 2019. 

This post covers certain changes to the law and what they mean for brand owners seeking trademark protection in Canada and how the Canadian Parliament may have unwittingly transformed the Canadian Trademark Law System into the Chanadian (China + Canadian) Trademark Law System and, as a result, why some brand owners may fall victim to trademark piracy in Chanada (China + Canada).

Trademark protection in Canada

Major Changes Include the Following:

Filing fees increase.

  • New applications. After June 17, 2019, application fees will increase from the current Trademark Office flat fee of $250CAD for all listed goods/services to $330CAD for the first class (a classified type of good/service) and $100CAD for each additional class.
  • Renewals. After June 17, 2019, renewal fees will increase from the current Trademark Office flat renewal fee of $350CAD per registration to $400CAD for the first class and $125CAD for each additional class of goods/services.

Use of a mark is no longer required to secure trademark registration.

  • All pending trademark applications as at June 17, 2019 will proceed to registration upon the payment of a registration fee without the need to file a use affidavit, assuming no objections are raised by third parties during the advertisement phase.
  • This new system will likely entice – and is reportedly already inviting – trademark pirates to register third party trademarks for the sole purpose of holding them for “ransom” – thereby potentially throwing the new “Chanadian” trademark registration system into chaos for some trademark owners.
  • It has been reported that government officials will address the anticipated onslaught of trademark pirates.
  • The obvious question is why wasn’t this issue addressed during the enactment of the law? This issue was absolutely foreseeable and obvious to those of us that have extensive experience with the Chinese trademark registration system.
  • We remain hopeful that any “bad faith” registration standard will require applicants to have a “bona fide intent” to use the mark in Canada on the day an application is filed; a standard well-established in the United States.
  • In any event, contentious proceedings, including non-use cancellations and oppositions, will likely increase, thereby significantly increasing costs and burden on some brand owners. 
  • As a result, trademark monitoring services should be implemented.

Nice Classification system of goods and services will be enacted to conform with international trademark laws.

  • Actions to take now:
    • use relevant Nice Classes for new application filings; and
    • voluntarily classify goods and services in pending applications and issued registrations to avoid possible re-classification delays in the future (and possible deletion of goods/services during the renewal process).

Canada joins the Madrid Protocol Treaty, thereby allowing for filing new trademark applications via the Madrid Protocol international registration mechanism.

Registration term reduced from fifteen to ten years.

    • Pending applications maturing into registration before June 17, 2019 receive its last fifteen-year registration term. Renewal terms thereafter receive ten year registration terms.
    • Pending applications maturing into registrations after June 17, 2019, receive ten-year registration terms.

Renewal term reduced from fifteen to ten years.

    • Existing registrations expiring before June 17, 2019 (even if renewed thereafter during the grace period) receive its last fifteen-year renewal term. Renewal terms thereafter receive ten year registration terms.
    • Existing registrations expiring after June 17, 2019, receive ten year renewal terms, even if a renewal filing is made before June 17, 2019.

Trademark protection will extend to “Non-traditional” marks, including the types of marks listed below.  The Office will require evidence of secondary meaning or acquired distinctiveness before registration will issue.

    • Tastes
    • Textures
    • Shapes
    • Colors
    • Smells

Divisional applications will be available to divide certain goods/services into separate applications, if necessary.

Letters of Protest may be filed against third party applications during examination, which, if successful, may result in a total refusal of the target application thereby drastically reducing the cost of objecting to a third party filing.

  • That is another reason to implement a watch service for monitoring infringing third party trademark application filings.

Some key actions to take now for trademark protection in Canada:

  • File multi-class applications before June 17, 2019, to avoid the increase in multi-class application fees.
  • Renew eligible registrations before June 17, 2019, to reduce renewal fees.
  • Audit your trademark portfolio for gaps in protection and seek registration for key marks and key goods and services before pirates… do it… for you…

Podcast 8: Copyright Creation and Ownership – What You Need to Know

Copyright Creation and Ownership –

What You Need to Know

Podcast Episode Begins as :45s

Podcast: Play in new window | Download | Embed

Subscribe: Google Podcasts | Stitcher | TuneIn | RSS

Introduction – Copyright Creation and Ownership

Securing U.S. copyright registration for works that are integral to your business is a good business and intellectual property strategy – especially for works that give you or your business a competitive advantage. 

  • Those works may include product manuals, teaching guides, jewelry, poetry, novels, artwork, photographs, movies, music, puppets and software.

Eligibility for Copyright Protection

To be eligible for copyright protection, however, a work must (1) be fixed in a tangible medium, (2) be original to the creator and (3) comprise protectable expression (i.e., something more than simply stating an idea or fact).

  • Copyright law, therefore, protects your expression of a certain idea, concept and principle, but does not protect the underlying idea, concept or principle. In other words, your expression of your views or thoughts about an idea, concept or principle is what may be protected by copyrights.

The Bundle of Exclusive Rights Include the Right to:

  • Distribute;
  • Display;
  • Copy;
  • Perform; and
  • Create derivative works (new works based upon an original work)

How are Copyrights Created?

Copyrights are created the moment a work is fixed in a tangible medium; a registration is not necessary. 

Alert: If the work was commissioned from a third-party vendor (i.e., individual artist or brand agency), the party claiming copyright ownership must ensure that title to the copyright was transferred from the creator of the work because under copyright law, the general rule is that the author (or creator) of the work is the owner of the copyright, unless the work is assigned or the work was commissioned as a “work made for hire.”

  • If an employee created the work within the scope of employment, the employer is considered the “author” of the work and thus owns the copyright in the work.
  • A “work made for hire” must meet certain written and statutory requirements; many works do not fall within the legal category of a “work made for hire.” Thus an assignment would be necessary for the transfer of title to the commissioning party.

Tip: Check your agreements with vendors to see if the works were assigned or were commissioned under agreement as a legally recognized “work made for hire.” 

Copyright Creation and OwnershipAdvantages of Copyright Registration

Although copyrights are created immediately upon the creation of a work fixed in a tangible medium, copyright registration still provides extremely valuable rights, some of which are:

  • May entitle copyright owners to attorneys’ fees and statutory awards for third party infringements
  • Provides leverage in settlement discussions for infringement
  • Can add value to the company’s assets at the time of a business sale
  • Provides immediate access to the courts

Company Assets, Business Transaction & Copyright Creation and Ownership

Securing copyright (as well as trademark and patent) registration is a prudent business strategy for building stronger IP rights and a more valuable business.  In some instances, failure to secure registration protection for key intellectual property assets can present serious concerns during a sale of a company or company’s business assets, and may affect purchase price, since buyers expect sellers to adequately protect their intellectual property and are not eager to buy uncertainty. 

Copyright ownership issues may include:

  • Whether company has “good title” to all copyrightable materials / works
  • The need for a “Catch All” provision in a business transaction agreement for “all copyright protected works”
  • Co-authors — beware of co-authorship issues!
  • Software – beware of open source issues with software products

Conclusion

Due to the ease at which one can secure copyright registration (simply go to www.copyright.gov and fill out the online form – if you have good title to the work), the low cost of securing registration and the Supreme Court’s recent decision that copyright registration must be made prior to gaining access to the courts, seeking copyright registration protection is an obvious business and intellectual property strategy for protecting valuable copyright-eligible works.

Music: Special thanks go out to Jelsonic and Jeremy Wray for the fabulous music contained in my podcasts titled “The Returning.”  

  • The music contained in this podcast is only a portion of the original; to hear the full version click here