Paula Clancy Wins Distinctive Women Magazine’s 2017 Entrepreneur of the Year Award

Paula was not only featured in this year’s Distinctive Women Magazine, but also won the 2017 Entrepreneur of the Year Award.  The 4th Annual IGNITE conference was held from November
bringing female professionals, leaders, entrepreneurs, trailblazers and more together.  During the IGNITE conference, Paula Clancy was recognized for her accomplishments and the difference she is making in the community.

Happy Birthday Canada! Canada’s 150 Logo and Your Brand

The Canada 150 logo is being made available for use by any organization/company that applies for a license from Heritage Canada.

As a licensee, the license holder is authorized to use the Canada 150 logo for either commercial or non-commercial purposes, the former of which is defined as either: (a) the reproduction of the logo on wares offered for sale or distribution, or (b) the display of the logo in association with a company’s corporate look.

In filing a request, interested brand owners must prepare mock-up images or illustrations of the product(s) on which the Canada 150 logo will be used, using the following versions of the Canada 150 logo:

For further information, please contact Paula Clancy at pclancy@cbrcanada.com.

The European Community Trademark Reform and What It Means For Canadian Brand Owners

On December 24, 2015, a new Regulation (EU No. 2015/2424) was published which will bring several significant changes to the Community Trademark system.  The Regulation will come into force on March 23, 2016.  The aim of the Community Trademark Reform is to harmonize the existing national EU trade mark system.

What are some of the most relevant changes for Canadian brand owners?

  • New Fee System: The EU will implement a “one fee per  class” (as opposed to having a lump sum fee for up to 3 classes).  Canadian brand owners that are thinking of filing multi-class trademark applications in Europe should do so before March 23, 2016 in order to take advantage of the lower filing fees.
  • Opportunity to re-specify goods in existing CTM registrations: Following the CJEU’s ruling on the IP Translator case, trademark protection will now only extend to the specific products and services designated in the application. This is problematic for many brand owners who registered trademarks using  the “class heading” hoping to cover all of the products or services within that class.  The IP Translator case held that trademark protection can only extend to the literal description  in the class heading, and not to the totality of products or services included in that class.  Canadian owners of CTM registrations filed before June 20, 2012 that only include class headings will have the opportunity, until September 24, 2016, to provide a more precise description of the goods and services associated with the mark.  The  specific description must nonetheless fall within the relevant class.  All Canadian brand owners who own CTM registrations should review their portfolios with their agent to ensure that they did not use the class headings as the descriptor of the goods or services associated with the mark.  In the event that class headings were used, an amendment should be filed before September 24, 2016 so that the goods or services can be specifically identified.
  • Change of Name: The Community Trade Mark Office will be changing its name to The European Union Intellectual Property Office (EUIPO).  Community Trademarks will now be known as European Union Trade Mark (EUTM).  Canadian brand owners who own CTM registrations should amend their records to reflect the change of name to EUTM.
  • Renewal Date and Fees:  Renewals must now be made prior to the expiry of the registration period.  Previously, applicants had until the end of the month in which the mark was registered to proceed with a renewal payment. Renewal fees will be charged per class.  Canadian brand owners should ensure that they renew their EUTM registrations well in advance of the deadline date.
  • Priority Claims:  Previously priority claims could be made up to two-month following the CTM application date.  Under the new Regulation, priority claims must be made at the time of filing.

For further information, please contact Paula Clancy at pclancy@cbrcanada.com.

 

 

 

Canada Concludes Negotiations on Trans-Pacific Partnership Agreement

Canada has concluded negotiations with 11 other countries (including Australia, Chile, Japan, Mexico, and Peru) to create the Trans-Pacific free trade zone (the largest free trade zone in the world).  The text of the Trans-Pacific Partnership (TPP) Agreement was released on November 5 2015. The TPP Agreement will need to be ratified by Canada before coming into force.

The TPP addresses aims to facilitate the protection and enforcement of IP rights.  Chapter 18 of the TPP covers IP. Parties to the TPP must cooperate by streamlining their PTO procedures and processes, exchanging search results and other information, and reducing procedural barriers.

On the Trademark front, the TPP requires signatories to allow for the registration of sound and scent marks, and to adopt the Nice Classification system.  These requirements have already been addressed in Bill C-31 (which received Royal Assent and is anticipated to come into force in late 2017, or early 2018.  The TPP also expands the protection afforded to registered trademarks, well-known marks and geographical indications, and requires stronger border measures.  Although Canada recently introduced new border measures in the Combating Counterfeit Products Act, the TPP expands on these by requiring member states to provide customs officials with the power to  initiate border measures ex officio with respect to goods under customs controls that are in transit.

The newly-elected Liberal government has indicated that it supports free trade.  Prime Minister Trudeau stated that “[t]he Trans-Pacific Partnership stands to remove trade barriers, widely expand free trade for Canada, and increase opportunities for our middle class and those working hard to join it. Liberals will take a responsible approach to thoroughly examining the Trans-Pacific Partnership.”

For further updates, please contact Paula Clancy

 

CIPO Will Accept Applications with NICE Classifications in Fall 2015

CIPO has issued a news release indicating that it will begin accepting trademark applications filed with their goods and services grouped and classed according to the Nice Classification later this year.  This international classification standard  was established by the Nice Agreement and is administered by the World Intellectual Property Organization (WIPO).

It is not clear whether this new protocol is voluntary – in other words, the Office has not indicated whether objections will be made if goods and services are not grouped into Nice Classifications, or if the Classifications are incorrect.  Moreover, there is no word from the Office yet as to whether there will be additional filing fees required on a per class basis.

The Office has indicated that it will provide online tools to assist with the classification of goods and services, including a redesigned Goods and Services Manual that will assist in identifying the correct class, and improved search functionality that will enable users to search for marks in a particular class of goods and services.

New Combating Counterfeit Products Act Procedures Will Help Brand Owners

The Combating Counterfeit Products Act came into force on January 1, 2015.  In addition to expanding the definition of trademark infringement to include the manufacture, possession, import and export of protected goods for the purpose of sale or distribution, the Act creates new criminal offences of copyright and trademark infringement.  Penalties for knowingly infringing on copyright or trademark rights may lead to a fine of up to $1,000,000 and/or a jail sentence of up to 5 years.

The Act also creates a new procedure whereby owners of Canadian trademark registrations and copyright may file a “Request for Assistance” with Canadian Border Services, in turn enabling border officials to seize or detain goods that are suspected of being counterfeit or pirated.  Border officials will have the power to detain goods for 5 days (in the case of perishable goods), and 10 working days (for non-perishable goods).  Moreover, they will be able to disclose information to IP owners which will assist in enforcement proceedings.

The Request for Assistance procedure is outlined on the Canada Border Services Agency website (click here for more information). Below are the steps outlined by the CBSA to enroll and participate in the program:

  • Step 1: Ensure that your trademark is registered with CIPO and your information is up to date.
  • Step 2: Complete the Request For Assistance form and submit it to the CBSA.
  • Step 3: Await confirmation of enrollment and CBSA approval letter.
  • Step 4: Once approved, if suspected counterfeit goods are intercepted by the CBSA, you will be notified and given the opportunity to take commence an action. The CBSA may communicate information to you to assist in making a determination as to whether the goods are counterfeit or pirated.
  • Step 5: Notify the CBSA if the goods are not counterfeit or pirated, or if you do not intent to purse a claim.

It is important to note that by filing a Request for Assistance, brand or copyright owners may become liable to the Canadian government for any costs relating to storage, handling and destruction of detained goods.  Costs are tallied from the day after the notice of detention is sent by the CBSA. Therefore, it is important to respond as soon as possible to any notices received from the CBSA in order to minimize such costs. 

The RCMP will lead any criminal investigations related to large-scale (commercial) counterfeiting and piracy.

For further information, please contact Paula Clancy.

Combating Counterfeit Products Act (Bill C-8) Passed in House of Commons

The Combating Counterfeit Products Act is one step closer to being passed into law.  Bill C-8 (formerly Bill C-56) received first reading in the Senate on October 2, 2014.   The aim of Bill C-8 is to strengthen Canada’s laws against counterfeiting and to give Customs Officials greater powers to stop counterfeit products from entering Canada.  Some of the changes proposed by Bill C-8 include:

  • the creation of new civil causes of action and criminal offences against trademark counterfeiting and prohibiting the possession or export of counterfeit goods;
  • the enactment of  new border enforcement measures that enable customs officers to detain suspected infringing goods;
  • the implementation of procedures that will allow customs officers to share information on detained goods with trademark owners; and
  • the creation of new powers to permit police to use wiretaps.

Among the shortcomings of Bill C-8 is the fact that rights holders will be responsible for the costs associated with detaining suspected goods, which may prove to be prohibitive.  Nevertheless, Bill C-8 is seen as a welcome step towards the modernization of Canada’s IP regime.

For further information, please contact Paula Clancy.

 

 

Feds Release CETA Text

On September 26, 2014, the Canadian Federal Government released the much-anticipated text for CETA (otherwise known as the Comprehensive Economic and Trade Agreement between Canada and Europe).  The Government has indicated that the text has been released for information purposes only, and reflects the end of the negotiations between Canada and the EU.  However, the text will be subject to further legal review.

CETA includes provision relating to Trademarks and Geographical Indications, Data Protection, Plant Varieties and Enforcement and Border Measures, among other things.  Many of Canada’s obligations under CETA have been addressed in Bill C-31 and Bill C-8.   For example, CETA requires Canada to adhere to the Madrid Protocol, as well as the Singapore Treaty on the Law of Trademarks.  CETA also expands the protection of geographical indications beyond spirits and wines to agricultural products and foodstuffs.

For more information, please contact Paula Clancy.

Moving Closer to Trademark Law Harmonization – CIPO joins OHIM Database of Goods and Services

On August 25, 2014, the Canadian Intellectual Property Office (CIPO) joined the European Community Trademark Office (OHIM) database of goods and services,  TMclass.   TMclass is an online tool, with over 60,000 entries in 28 languages, that allows trademark practitioners to verify whether a particular term is acceptable in other national trademark offices.  Canada joins over 25 cooperating countries including the United Kingdom, Japan, Italy, Mexico and the United States.

The Canadian Wares and Services Manual will now include several thousand new entries classified in accordance with the Nice Agreement.  As reported earlier, it is anticipated that Canada will implement the Nice Classification system in 2015, which will require that all goods and services be grouped in accordance with the international classes.  Access to TMclass may streamline and standardize this task.

For further information, please visit the CIPO site or contact Paula Clancy.

OHIM Changes Practice for Black and White Marks

On June 2, 2014, the European Community Trade-mark Office (known as “OHIM”), changed its practice for trade0marks filed in black and white or gray-scale.  Specifically, while a black and white registration was thought to cover all colour variants of the mark, OHIM’s new policy suggests that this is no longer the case.  Under the new policy a black and white mark is not deemed to be identical to its colour variant.  Moreover, if colour gives the image a special effect, then a separate colour registration is required.  Use of a colour mark will only be deemed to be use of the black and white form (and vice versa) if the change in colour does not affect the distinctive character of the mark.  As a result, our European associates are recommending that in the case of designs, both black and white and colour versions of the mark be filed in the EU.  For further information about your international trade-mark portfolio or trademark strategy, please contact Paula Clancy.