Trademarks: Stop Right There

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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 new option to divide applications. We’ve also covered declarations of use, the Nice classification system, new types of trademarks and the new requirements to prove distinctiveness for your mark.

Change #5: Third party protests

Unlike current practice, it will be possible to send a letter of protest to CIPO to try to convince them that someone else’s mark shouldn’t be registered.

What this means to you

Now the only way to challenge someone else’s pending application is to wait until it is published in the trademarks journal and then file an opposition. The opposition process can be costly, and can take a long time to resolve. This provides an opportunity to bring facts to the attention of the examiner that they otherwise might not be aware of.

Next week we’re going to discuss the adoption of the Madrid Protocol, allowing applicants to make trademark applications in several countries at once. 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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