Canada’s impending trademark law changes to affect how IP lawyers protect fate of clients’ brands

Canada’s trademark laws will be revised on June 17, which means the country will be shifting to a first-to-file requirement for trademark registration from a first-to-use system.

Canada’s impending trademark law changes to affect how IP lawyers protect fate of clients’ brands
Panelists Colleen Spring Zimmerman, Catherine Douglas, Admira Nezirevic and moderator Kim Koster discuss the upcoming changes in Canada’s trademark laws at Fogler Rubinoff LLP in Toronto.

Canada’s trademark laws will be revised on June 17, which means the country will be shifting to a first-to-file requirement for trademark registration from a first-to-use system, so companies will no longer have to first commercially use a trademark to register it under the new laws, said panelists at a Canadian Marketing Association event on March 27 at Fogler Rubinoff LLP’s Toronto office.


As these changes occur, intellectual property lawyers and trademark agents must work even more closely with marketing and advertising professionals during the creative process to protect the future of their brands.


“We are now switching over to first to file. That could now have implications for larger companies such as in sports, where they tend to try out a new tagline first, and if that sells in the market, then they apply to register the next year,” said panelist Colleen Spring Zimmerman, a partner at Fogler Rubinoff. 


While the changes will alter the definition of trademark to soon include descriptors such as 3D shape, scent, taste, texture, positioning and more, to broaden the scope of brand protections, they could potentially open the doors for more “trolls” — people who register trademarks without intent of use, most commonly to sell them back to companies who want them. Without the requirement to use the trademark prior to registration, it will be easier to file registrations in bad faith.


However, one of the new changes might deter these trolls.


Canadian trademark application filing will be increasing on June 17. Now, it costs $250 to register a trademark for all goods and services, whereas come June 17, the cost will be $330 plus additional fees per registered class. If the troll wants to file for all 45 classes, the fees will cost thousands of dollars, said Zimmerman.


Companies will need to work closely with their legal team to watch for potential trolls and to stay vigilant of trademarks owned by others, as well as the impacts of the new laws during the creative branding process — especially if there’s a plan to extend a trademark to another country.


“Even if you’re not developing new branding elements, just be monitoring for potential trolling activity that could hurt the brand,” said panelist Admira Nezirevic, vice president at Ove Brand |Design. Marketing and advertising professionals “need to understand how much time is needed to build [preliminary pre-clearance searches] and be prepared should something be rejected, so you could move on to another idea.”


By conducting pre-clearance searches, lawyers could advise clients whether a particular idea has already been trademarked and, if so, in which of the 45 categories it has already been trademarked. This due diligence could save clients a lot of money if an already-trademarked idea has been pitched and marketed.


Social media influencers are a popular method of marketing products and services by companies. But Zimmerman cautioned that if a company uses an influencer to promote its product in another jurisdiction, such as in China, it could be infringing another company’s trademark in that particular jurisdiction.


“You could get in trouble. Your client could sue you or your client could insist that you pay (depending on the terms of use or terms in your contract) for the litigation that comes in China against them or wherever,” she said. “It’s becoming an extremely sophisticated business.”


A good practice is to ensure trademark registrations include jurisdictions into which companies might want to eventually expand, the panelists agreed. If the company has future plans to expand overseas, for instance, it should proactively secure that trademark before someone else does, especially with a first-to-file system.


The European Union is also a first-to-file jurisdiction. Panelist Catherine Douglas, a trademark agent and paralegal, said part of the reason why Canada is making the change is to align itself with the systems of some of its trade partners, including the EU. The United States remains a first-to-use jurisdiction, however.


Canada will also become a member of the Madrid Protocol, an international entity concerning intellectual property. This will allow Canadians to file trademark applications worldwide with the World Intellectual Property Organization, with one payment mechanism and one language, simplifying the process of obtaining international trademarks.  


“Involve legal clearances. If [companies] want to have [all the trademarks], be on the front end,” said Douglas. 

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