Trademarks: Divide and Conquer

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The Canadian Trademarks Act has undergone the most dramatic change in recent history. Canada had not been consistent with some of the international treaties governing trademark practice. The goal was to make Canadian trademarks practice more consistent with those practices in other countries. Changes include adopting a class system to group use descriptions, a class based fee structure, dropping use requirements from the application process, and new types of trademarks. Some of these changes will make things easier, some will make it more difficult and costly.

This is one of a series of posts about changes to trademarks coming on June 17, 2019. Last time we discussed the the elimination of declarations of use. We’ve also covered the Nice classification system, new types of trademarks and the new requirements to prove distinctiveness for your mark.

Change #5: Dividing applications 

Currently getting a trademark registered is an all or nothing proposition. If issues arise during the application, the entire application is delayed until the problem is sorted out or goods and services are dropped from the application. The new laws include the ability to divide an application and finalize it for the non-contentious uses.  

What this means to you.

Sometimes problems can arise with examiner’s reports that take the position that part of the use description makes the mark unregistrable because of confusion with an existing mark. Or a third party might oppose the mark. Sometimes those problems can be overcome – but it takes time. It will be possible to finalize an application and register it for the non-contentious uses, and continue to deal with the contentious parts.    

Next week we’re going to discuss how third party protests will be possible during the examination stage. Subscribe to our Top Ten in Tech Law newsletter to be sure to catch the rest of this series.

If you're concerned that these changes might have an impact on your business, we recommend that you contact your trademark lawyer today or contact us for a no obligation consultation. 

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