Civil Litigation

Changes bring Canada in line with global trademark rules

By AdvocateDaily.com Staff

Amendments to Canada’s Intellectual Property laws will bring a more simplified process to attaining global protection, Toronto civil litigator Sarah O’Connor tells AdvocateDaily.com.

O’Connor, principal of O’Connor Richardson Professional Corporation, says the new protocols, set to come into force June 17, result from two global conferences on intellectual property and trademarks.

Not only will they better align the rules globally, they will also reduce the number of applications for clients looking to protect their trademarks, she says.

“It’s going to be one stop for global protection,” O’Connor says. “And while the fees are going up a bit, it’s not much, and they extend protection much more than the existing regime.”

The new protocols will also eliminate the need for an applicant to use a trademark before trying to register it.

“Now, they will be able to register the trademark before they use it,” she says.

The federal government says the amendments — in accordance with treaties signed in Singapore and Nice — will modernize the trademark regime, and bring Canada in line with leading international standards and benchmarks.

“In turn, a modernized trademark regime will help Canadian businesses stay competitive in international markets by giving them an efficient means of protecting their intellectual property in various jurisdictions around the world,” the government website says. “A regime that is aligned with other jurisdictions will also lower the cost of doing business to the benefit of both Canadian businesses and those looking to invest in Canadian markets.”

O’Connor says it will be easier for both global, and domestic companies, to protect their brands as a result of the changes.

“There will now be 34 goods classifications, and 11 service classifications,” she says. “Existing trademark holders should reclassify their existing registrations according to the new categories if they haven’t already.”

The only apparent downside of the amendments is that protections will only last for 10 years, down from 15. But, all holders will have to do is renew at the end of the term. They will also extend what is eligible for a word mark, or trademark, O’Connor says.

“A sign mark, colour hologram, animated image, and even scent will now be added,” she says. "For example, in the U.S. Playdoh has trademarked the scent of its product."

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