Navigating the New Canadian Trademark Laws - 10 Things U.S. Practitioners Need to Know September 26, 2018 Speakers: Stephanie A. Adams, Esq. Law Office of Stephanie Adams PLLC Susannah Rolston Partner, Gowling WLG ERIE INSTITUTE OF LAW
STEPHANIE "COLE" ADAMS THE LAW OFFICE OF STEPHANIE ADAMS (LOSA) "SEE IT. BUILD IT. WORK IT." After graduating from UB Law School in 1999 Stephanie "Cole" Adams worked as an associate in the Lockport office of Dan Seaman, Morgan Jones, and F. Gerard "Gerry" Hogan. It was in that office where she gained experience with municipal matters. From there, she started her own practice in Buffalo, eventually partnering with Daniel D. Shonn and Eric A. Bloom to form Bloom, Cole & Shonn, LLP. From 2002 through 2006, her practice focused on education and internet law, and she handled cases ranging from World Intellectual Property Organization (WIPO) domain name cases, to alleged violation of federal wiretap laws. While at Bloom, Cole & Shonn, LLP, Cole helped staff the legal office at SUNY Buffalo's Group Legal Services, starting a path of service to educators and students that has continued to this day. She also continued to work on construction, municipal and real property issues, and chaired the Erie County Bar Association's Intellectual property committee. In 2006, Cole left her small partnership to become the full-time general counsel at Niagara University, a position she held for more than ten years. That work drew upon and expanded her experience in education, real property, municipal, labor and employment, intellectual property, education, and not-for-profit law. The University's proximity to the New York Power Authority created unique challenges and opportunities, including collaborating with the Authority on new roads, landscaping, a shared bike path, and a large wall and berm. During her time at NU, Cole designed a system of Enterprise Risk Management (ERM), databases for grant, contract and event management, and other legal/operational workflow solutions. Her system for ERM was purchased for development and is commercially available. She frequently speaks on ERM and other business solutions for higher education and not-for-profits. Through all her time as an attorney, Cole made her home in and committed her public service time largely to Buffalo. She is the pro bono counsel for the Western New York Arts Services Initiative. She volunteered on historic preservation and civic issues, including representing the Allentown Association on the "Granite Works" preservation in 2002. In 2017, Cole brought her professional home base back to Buffalo, opening her practice in a small space in a new building on Grant Street. She is delighted to be practicing law in Buffalo again, and to offer some services in the Mohawk Valley. Stephanie "Cole" Adams The Law Office of Stephanie Adams 363 Grant Street, Suite One Buffalo, New York 14213 www.losapllc.com adams@losapllc.com copper line: 716-464-3386 cell: 716-308-2906
SUSANNAH C. ROLSTON Partner Trademark Agent Speaks: English Registered Trademark Agent: 1989 - Canada +1 416-862-4634 +1 416-863-3634 susannah.rolston@gowlingwlg.com Primary office: Toronto SUSANNAH C. ROLSTON Susannah Rolston is a Toronto-based Gowling WLG partner with more than 25 years' experience. She can provide you with strategic advice on trademark matters, including availability and registrability opinions, filing strategies, prosecution issues, oppositions and expungement proceedings. Through her experience managing worldwide trademark portfolios, Susannah can provide you with worldwide trademark portfolio strategies to enhance and protect your intellectual property assets. Susannah has experience with all types of clients from large corporate to fledgling startups. Susannah listens to client s demands and provides advise that is not only sound and effective, but also user-friendly and straightforward. She is proactive and resourceful in pursuing success for her clients. She is an active member of Intellectual Property Institute of Canada (IPIC), the International Trademark Association (INTA) and European Community Trademark Association (ECTA). EXPERTISE Tech Intellectual Property Trademarks, Brands & Designs Cannabis United States
Navigating the New Canadian Trademark Laws 10 Things U.S. Practitioners Need to Know and Transitioning to the New Act Background Changes enacted in the Economic Action Plan of 2014. Most comprehensive changes in 50 years. Goal is to harmonize Canadian trademark law with law of its trading partners and to streamline and simplify the trademark registration process in Canada. Implementation has been delayed while Regulations and Practice Notices have been developed. Regulations are now finalized. Some Practice Notices are still in the works. We expect to see publication of Practice Notices which are completed and not subject to any further changes later this month. There may yet still be further changes. Target date for implementation (the Coming into Force / CIF date) is May, June 2019.
Why do I care? Canada - growing market (3.0% GDP growth in 2017 - top performing G7 economy). Online shopping, marketplaces and services continue to make location less relevant. The Comprehensive and Progressive Agreement for Trans- Pacific Partnership (CPTPP). Trolls and other opportunistic filers are now taking advantage of opportunity to file in Canada. 10 THINGS YOU NEED TO KNOW 1. Adherence to the Madrid Protocol 2. Elimination of use as a prerequisite to registration in Canada 3. Elimination of the requirement to declare a specific filing base for applications 4. Introduction of a per class application and renewal fee structure 5. Renewal requests may now be filed only 6 months before/6 months after renewal deadline 6. Change in term of Registration
10 THINGS YOU NEED TO KNOW 7. Introduction of NICE Classification 8. Introduction of Letters of Protest 9. Division of Applications 10. Introduction of Examination for Distinctiveness 1. Madrid Protocol Amended Act provides for Canada s accession to the Madrid Protocol. For the most part Protocol Applications will be treated the same as domestically filed applications. Foreign applicants will now be able to secure protection in Canada under the Madrid Protocol.
2. Elimination of Use as a Prerequisite to Registration Currently applicants must base an application on: use - if there is use of a trademark in Canada; or intent to use and must file a Declaration of Use at the allowance stage. Applications filed after the CIF date will include a standard statement that the applicant has used or intends to use the mark in Canada. The requirement to use a trademark in Canada in order to obtain registration is eliminated. 2. Elimination of Use as a Prerequisite to Registration Speculative and abusive applications. This is already happening. In 2017 we saw a sharp increase in the number of applications filed in all 45 NICE classes Unlikely that anyone has a genuine intention of using a trademark in association with every type of good and service As of December 2017 there were 427 all-class applications on the Canadian Trademarks database 419 of which were filed in 2017
3. Elimination of the requirement to declare a specific filing base for applications Currently applications must include a basis of either: use; and/or intent to; use and/or foreign use and registration. Currently an application must be based on use if there is use of a trademark in Canada. After CIF date applications will include a standard statement that the applicant has used or intends to use the mark in Canada. Requirement to claim existing use in Canada at the time of filing is eliminated. After CIF date information related to basis will be removed from applications and registrations. 3. Elimination of the requirement to declare a specific filing base for applications Currently, applicants may base an application on foreign registration and use as a basis for a Canadian application. This basis was one way foreign applicants were able to get around the use requirement in Canada. After the CIF date reliance on a foreign registration and use as a basis for a Canadian application is eliminated. Any information related to this basis will be removed from all pending applications and existing registrations after the CIF date.
4. Introduction of per class application and renewal fee structure APPLICATIONS Current government fees: C$250 filing fee regardless of number of classes C$200 final registration fee regardless of the number of classes After the CIF date new filing fee will be C$330 - one class and C$100 for each additional class. Existing C$200 registration fee eliminated. Single class applications will see a reduction in government fees. Multi-class applications will see an increase in government fees. 4. Introduction of per class application and renewal fee structure RENEWALS Current government renewal fee is C$350 regardless of the number of classes. New government renewal fee will be C$400 for the first class and C$125 for each class thereafter. Overall government renewal fees will be higher.
5. Renewal requests 6 months before / 6 months after Currently a renewal request can be filed at any time prior to the renewal date or during the 6 month grace period after the renewal date. After the CIF date renewal requests may only be made six months prior to or six months subsequent to the renewal date. 6. Change in term of registration Current term is 15 years. After CIF date the term of a registration will be 10 years. TRANSITIONAL PROVISIONS FOR RENEWALS: Renewal requests made during the transitional period are dependant on when renewal is processed by CIPO, NOT when renewal request is filed. Registrations due for renewal before and renewed before the CIF date can be renewed: for the current 15 year term with no classification requirement no per class renewal fees
6. Change in term of registration Registrations due for renewal after CIF date can be renewed before the CIF date: with no classification requirement; and no per class renewal fees; but the registrant will not get benefit of the current 15 year term (a revised registration certificate indicating a 10 year term will be issued after the CIF date). Registrations due for renewal after CIF date and renewed after the CIF date: classification required; per class renewal fees; and the renewal term will be 10 years. 7. Adoption of NICE Classification Currently classification in newly filed and pending applications is strictly voluntary but highly recommended. Examiners cannot issue Office Actions based on classification issues only. Canada will adopt and implement NICE Classification. Applications filed after CIF date must have the goods and services classified in accordance with the NICE Classification. Pending applications which have not been advertised as of the CIF date and in which the goods and services have not been classified will be returned to examination for classification. Pending applications which are advertised or allowed as of CIF date will be allowed to move forward without classification. Registrar may issue classification requests in respect of such registrations after CIF date.
7. Adoption of NICE Classification NICE Classification Courtesy Letters currently being issued by the CIPO in respect of current registrations are voluntary. After CIF date existing registrations will need to be classified as a condition of renewal. After CIF date CIPO will be issuing notices requiring classification of current registrations. This will be mandatory and will carry deadlines. The obligation to describe goods and services in ordinary commercial terms remains. 8. Letters of Protest Under the amended Act, interested parties will be entitled to direct the Registrar s attention to specific facts relating to the registrability of an application (Letter of Protest). Likely that the grounds of protest will be very limited. Confusion A registered trademark appearing in the goods and services descriptions No other point of challenge No submissions, persuasive arguments or affidavits Stayed tuned! This could still change.
9. Division of Applications As of CIF date applicants can divide goods and services in an application into two or more applications during examination or opposition. This will provide the ability to advance applications for certain goods and services, if others remain challenged. 10. Examination for Distinctiveness Amended Act introduces examination for distinctiveness. Practice Notice related to distinctiveness in examination still subject to change. Amendments expand the circumstances in which Registrar may require an applicant to provide evidence establishing distinctiveness. Currently, these circumstances include the trademark being held not registrable because it is descriptive or a name or surname. Any application not yet advertised as of CIF date may be re-examined (including for distinctiveness).
10. Examination for Distinctiveness Currently S. 12(2) and S. 14 are two acquired distinctiveness saving provisions: S. 12(2) - the trademark is distinctive due to its extensive use in Canada. Must show distinctiveness in all provinces and territories or registration may be restricted to certain provinces or territories; S. 14 the trademark is distinctive due to its foreign registration and extensive foreign use. As of the CIF date S.14 will be repealed. All applications not yet advertised at the CIF date and which claim the benefit of S. 14 will have the S. 14 claim stripped from the application. As of the CIF date the only acquired distinctiveness saving provision available will be S. 12(2). Transitioning to the New Trademarks Act How to ensure a smooth ride!
Quick Facts CIF date expected May/June 2019. Due to lead times, any applications filed as of today will be examined under the new Act Applications not advertised in the TMJ prior to the CIF date will be re-examined under the new Act. All examination is likely to come to a halt about 2 months before the CIF date. What do I do now? New Filings Do not include 16(2) [foreign use and registration] claims in new applications. Section 16(2) will be gone with the New Act and the technical reasons for needing these claims will be gone. Perfect colour claims at filing or, so as not to delay the filing, shortly thereafter. Don t wait for the examination report. Classify all goods and services. Use pre-approved goods and services where possible. CIPO slowdown: Don t expect to hear from the examiners for as long as 12-14 months from filing.
What do I do now? Office Actions / Responses Focus on getting all applications through examination to approval by end of 2018. Delete 16(2) claims in an application unless the foreign rights will issue in the very near future. Section 16(2) will be gone and the technical reason for needing these claims also gone. Ensure goods/services are classified. What do I do now? Approval Notices / Advertisements Review all Approval Notices/Advertisements to ensure classification of goods and services. Classification is still voluntary - Examiners cannot issue OA solely raising Classification issues. If an application is otherwise in order but the Classification is not, the application will still be approved but the Approval Notice will not list the Classes. If classification is not shown in the Advertisement consider amendment to classify.
What do I do now? Allowance Ensure goods/services are classified. ITU based applications - Declarations of Use not required after the CIF date. Seek extensions to file Declaration of Use. At CIF date simply pay final registration fee. Note the registration date and hence term of the registration [15 vs 10 years] determined by processing date of registration fee and Declaration of Use - not when CIPO receives payment of registration fee and Declaration of Use. registration fee and Declaration of use processed prior to CIF date term of registration will be 15 years registration fee and Declaration of use processed after CIF date Declaration of use will be ignored and the term of registration will be 10 years registration fee processed after CIF date term of the registration will be 10 years What do I do now? Renewals For any registrations due to expire after the CIF consider: renewing prior CIF to take advantage of lower fees. Note term will be 10 years classifying goods and services prior to renewal - avoid post CIF date classification requirements
What do I do now? Portfolio Strategy Review Canadian trademark portfolios to ensure: all important/core trademarks are adequately protected - all versions - in all relevant classes. all secondary marks, for which perfecting the use requirement in the past may have been difficult, are protected. File before the CIF date you can take advantage of: the elimination of the use requirement at the CIF date current lower government fees THANK YOU!
For further information Susannah Rolston Susannah.rolston@gowlingwlg.com Work: 416.862.4634 1,400+ legal professionals Offices in 18 cities worldwide Focused on key global sectors, including energy, financial services, life sciences, natural resources, infrastructure, real estate and tech Top-tier suite of legal services, including leadership in IP: 1. File more patents and trademarks than any other law firm in Canada 2. One of the largest and most highly regarded IP practices in Canada 3. Shaping IP law for decades Committed to diversity and inclusion and repeatedly recognised as a top employer GOWLING WLG AT A GLANCE