Trademark Protection in Canada
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EVERYTHING YOU NEED TO KNOW ABOUT TM PROTECTION NORTH OF THE BORDER Wednesday, October 5, 2016 1:00 pm - 2:00 pm
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Transcript of Trademark Protection in Canada
EVERYTHING YOU NEED TO KNOW
ABOUT TM PROTECTIONNORTH OF THE BORDER
Wednesday, October 5, 20161:00 pm - 2:00 pm
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How To Interact Today
Raise your virtual hand to ask an audio question at the endType your comments and questions here throughout
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Agenda
Overview of Canadian Trademarks
Canadian Records in Alt Legal
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Our Key Message
With changes to the law pending, now is a good time to help your client’s protect their trademark rights in Canada.
Alt Legal introduces Canadian Intellectual Property Office integration.
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Who Will Benefit The Most From This Hour?
Focus is on providing a practical overview for US Trademark Professionals.
Independent and small firm US trademark practitioners with clients that have US trademark rights, who may or may not have service Canada or sell goods in Canada.
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Webinar GoalsUnderstand the advantageous of registering in Canada
Understand the process and costs of registration
See how Canadian records are tracked in Alt Legal
See how you may confidently and competently advise clients with an integrated solution
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Why Canada Matters
Common market
Limits of “Making Known” in Canada
Registration gives best protection
Change in Canadian trademark law pending
Protecting your client’s rights in Canada can make you look like a genius.
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Trademarks In Canada
Business Name & Trade Names
Common Law Trademarks
Registered Trademarks
Certification Marks
Industrial Designs
Official Marks
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Official Marks
Official Marks are “UberMarks” for “Public Authorities”
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Registration Process
1. Filing3. Approval & Advertisement
2. Examination
4. Opposition Proceedings 5. Allowance & Registration
6. Post-Registration Life
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Filing Part 1
An application can be made with one or more claims:• Intent to Use in Canada• Use in Canada• Making Known• Use & Registration Abroad
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Filing Part 2
Goods & Services Descriptions
• “Ordinary Commercial Terms”• Canada is moving to a Class system
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Examination
a. Formalities
b. Entitlement
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Approval & Advertisement
Two-month window for Opposition after publication in Trademarks Journal
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Opposition Proceedings
Canadian Oppositions are typically less expensive than US Oppositions. 90% of Oppositions settle
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Allowance & Registration
Presently: 15 years No interim Declarations of Use similarly to s. 8 & 15
Soon: 10 years
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Costs of a Typical Application
Government Fees @ Filing CAD $250 @ Registration CAD $250
Legal Fees vary but typically around CAD $1,400 to $1,600 but can be higher owing to various issues
Trend towards fixed fees. (Ask me!)
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Post Registration Life
Non-use and cancellation proceedings
Incontestability* after 5 years
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Changes On The Horizon
New and expanded definition of “Trademark”
10-year registration Term
Classes for goods and services
*No Use required as a condition for Registration*
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Recommendations • File now and take advantage of Use and
Registration Abroad.
• File now to get establish priority and entitlement.
• There is uncertainty about trademark squatting and increased opposition activity is expected.
• Reach out to clients to discuss Canadian trademark protection strategies.
Canadian Trademark Recordsin Alt Legal
