Not-for-profit organizations and other brand owners can look
forward to amendments to the Canadian Trade-marks Act
("Act") and Regulations which will extend opportunities
to protect their trademarks in Canada and internationally.
Highlights of Canadian trademark legislation passed in June of
this year and expected to come into force sometime in late 2015 or
early 2016 include:
The definition of
"trademark" will expand significantly to include marks
which include three-dimensional shapes, holograms, moving images,
modes of packaging and marks comprised of colour, scent, taste or
Applications filed before the
Canadian Intellectual Property Office ("CIPO") will now
be based solely on the applicant's intention to use or existing
use in Canada. Applicants claiming use in Canada will no longer
have to identify their date of first use.
Certification mark applications which
protect trademarks for use in association with the standards of the
goods or services offered will no longer require use of the mark in
Canada prior to filing.
Trademark applications can be
divided, allowing greater flexibility in responding to delays or
Canadian brand owners will be able to
file applications internationally by way of the Madrid Protocol,
accessed through CIPO.
Applications will utilize the Nice
Classification system for goods and services.
Registrations will have 10 year
Application opposition practice will
change significantly, including the addition of new bases of
opposition and parties taking responsibility for the timing of
No changes have been made to Section 9 of the Act which provides
exclusive protection for the marks of Canadian organizations which
qualify as public authorities.
We expect the Federal Government of Canada to publish draft
Trademark Regulations for public consultation within the next few
weeks. Those regulations will further define the treatment of
applications and registrations before CIPO. Once the Government
finalizes the regulations it will move toward implementation of the
amendments to the Act and the accompanying Regulations.
The content of this article is intended to provide a general
guide to the subject matter. Specialist advice should be sought
about your specific circumstances.
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A recent Saskatchewan Court of Queen's Bench decision allowed a court-appointed receiver to sell and transfer intellectual property rights free and clear of encumbrances, finding that a license to use improvements of an invention was a contractual interest and not a property interest.
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