High TMs

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Health Canada recently announced that regulations surrounding new cannabis products such as edibles, beverages, topicals and extracts will come into effect on October 17, 2019. The expectation is that these cannabis products will be available for consumers to purchase in mid-December.

This announcement is likely to impact the number of cannabis-related trademarks applications being filed. Before you rush out to file your trademark application, here are a few things to keep in mind.

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All cannabis-related trademarks must comply not only with the Trademarks Act, but also with the applicable federal and provincial cannabis legislation. For example, this means that your trademark cannot be appealing to young persons, set out a testimonial or endorsement, depict a person, character or animal, whether real or fictional, evoke a positive or negative emotion about or image of, a way of life such as one that includes glamour, recreation, excitement, vitality, risk or daring, or contain any information that is false, misleading or deceptive or creates any erroneous impression about the performance, safety, etc. of the product.

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Although a declaration of first use is no longer required in order to register a mark under the Trademarks Act, you must be able to prove use in order to enforce your trademark following registration. Sitting on a registered trademark without actually using it could put your mark at risk of opposition and expungement. For more information, check out our blog post Trademarks: Use Them or Lose Them?

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The Canadian trademarks register is currently saturated with cannabis-related marks. This, plus the elimination of the first use declaration requirement, increases the likelihood that a cannabis-related trademark that you are applying for will be opposed. When considering a trademark registration, it’s important to ensure that your proposed mark is distinctive, not descriptive and not similar to any mark that has been applied for previously. Trademark opposition proceedings are very expensive to defend and the stakes can be high (no pun intended). If you’ve invested in the development of your brand, only to find that you must cease, desist and rebrand, the financial consequences can be significant.

If you’re interested in learning more about the intersection of Canada’s cannabis and trademark laws and how they affect your business, please contact us for a no obligation consultation.


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