quarterly.exchange | May 2019 Table of Contents

May 2019 - Communications & Branding

Trademark Changes will add scope... and expense
Exchange Magazine Publisher Jon Rohr interviews Colleen Spring Zimmerman, partners with Fogler, Rubinoff LLP about upcoming legislative changes to the Trademark Act.
by Jon Rohr

Exchange Magazine: Why are changes coming to the Canadian Trademark Act?

Colleen Spring Zimmerman: About 2014, the Federal government indicated that there would be changes coming with respect to the Canadian Trademark Act. A process was put in place by the government and provided certain materials to the public so that people could make comments on them. And as we went along and through those processes we’ve now come to the point where the changes to the Canadian Trademark Act are going to be implemented on June 17, 2019.

Exchange: What are some major changes that will be taking place?

Zimmerman: There are many changes; one change is that we have assented to a variety of international treaties. We [Canada] are now a member of the Madrid protocol. As of June 17, we’re going to be able to file trademark applications through the Madrid protocol, and that protocol permits a Canadian to file a trademark application in Canada, and then, based upon that application, to file through the Madrid protocol to more than 100 countries around the world.
We will be able to move those applications along to registration. So Canadians who are looking to expand their business, outside of Canada, are going to have help in doing that by being able to file these applications.

Exchange: Where do most clients want to file trademarks?

Zimmerman: Most clients want to file in the United States, in Europe, Australia, New Zealand, and maybe a few other countries including China and Japan... depending on what their future business expansion will be. So now we’ll be able to do that in one process.

Exchange: Is streamlining the filing process a “good thing”?

Zimmerman: In most countries of the world when you file trademark applications, you use the Nice classification system. So, a Canadian trademark application sets out the goods and services in association of which, the owner wants to have registration.

Most countries in the world accept the classification system, so that goods and services fall into one of 45 classes... when we file trademark applications, the goods and services are designated, in one or the other of those classes. So that, again this is a good thing, because most places in the world, including the US use a classification system.

Exchange: Are fees to file a trademark changing?

Zimmerman: The US, as a example, has a filing fee and then, additional filing fees for additional classes. And that’s what’s going ahead in Canada. We’re going to have a filing fee plus additional fees for additional classes, ones that are set out in the trademark application. So right now [before June 17, 2019] we can file in Canada for any number of goods and services, as long as they fall into these 45 classes, and pay only one filing fee, which is at the moment $250.
As soon as June 17, 2019 comes, it’s going to be very much more expensive to file those applications. As of June 17, 2019 all of these changes are going to be implemented.

Exchange: Are there other changes?

Zimmerman: In the meantime the Canadian Trademark act is been amended, to change the definition of trademark, so that it is broader. Right now there are certain trademarks that fall within the definition that is currently part of the legislation. As of June 17, 2019, there will be more trademarks that fall within the new definition, for instance smell, texture, holograms, colour of a product and those kinds of things. Let’s say you have a wine that smells in a particular way, or you’re going to put a label on the exterior of the bottle, that going to have a particular smell to it, that smell would be trademarkable. If you have body lotion, and it has a unique smell, then again you can identify that as a trademark, and yes, you will be able to obtain a registration and stop other people from using that smell, [or] texture.

Exchange: Really, you can trademark a texture?

Zimmerman: If you use the texture in some unique way, as a trademark for your product. You could not trademark velvet for the very product of a velvet piece of fabric, that’s not what this is about. This is about if you use a texture, let’s say a velvety texture, on the exterior of a wine bottle, a soda bottle, and if you can show that that’s distinctive of your product, then you would be able to obtain a trademark registration for it. It has to be recognizable as a trademark for that product.

Exchange: It will open up a huge scope.

Zimmerman: People have been trying to file in advance of the June 17, 2019 trademark changes, so they can obtain registration of certain trademarks that they otherwise wouldn’t be able too. We have to remember that, if these applications are still pending after June 17, 2019, they are going to be subject to the new rules as to what is or what is not trademarkable.

Exchange: Are there other significant changes coming?

Zimmerman: The most important ones are the Nice Classification system, the Madrid Protocol, and the definition of trademarks. There are other changes that are coming into effect, in the process of obtaining a trademark, which is of more interest to the lawyers who are processing those trademark applications. We are interested to see how they unfold – things that we haven’t had to do before, that we’re were going to have to do in the context of, doing the registration.

Exchange: What was driving the discussion?

Zimmerman: In 2014 the government said that they wanted to assist companies in being innovative, including in the trademark field. So they went about looking how the trademark law could be changed, to help that innovation.

Exchange: What about Previous Use?

Zimmerman: Another change that is coming which is completely different than the way things are been done now is that you’re not going to have to show use of the trademark in Canada, before you obtain registration. That is one of things that may very well cause more litigation in the country, because companies that don’t necessarily have the right to those marks are going to obtain registration.

So they’ll file a trademark classification without claiming use, or having to have a trademark register anywhere else in the world for that mark, and they can move that registration to application now.

Exchange: How has that changed the process for the business seeking the trademark?

Zimmerman: At one point every trademark application is subject to advertisement in the Canadian trademark journal, so at that time, any member of the public including any company that thinks there is an issue with the trademark that’s been filed, that it’s confusing with it’s own mark, they can oppose the application. So now, there may be more opposition proceedings, and there may be more trademark litigation, as a result of these changes.

Exchange: What are some legal issues for businesses?

Zimmerman: One of the issue points that comes out of all of this is that a company has to be aware of the fact that trademarks are advertised in the Canadian Trademark journal, once a week. And checking to see if there are any marks that are going to impinge upon their own trademark rights. Right now there are section 45 proceedings, which are cancellation proceedings, that can be brought against a registered trademark. In those proceedings you have to be able to show that you have used the mark in the previous three years before the proceeding have been commenced.
It’s really not an end date, it’s more like ‘Have you been using the mark?” so if you get a mark registered that you have not been using, three years later, any member of the public including the trademark office, can issue a section 45 cancelation proceeding against your registration. It is complicated, and the way that these changes are going to be implemented, and what companies have to think about, they really do need advice from lawyers, in how they’re going to take advantage of those changes and what those changes mean for their trademark rights.

Exchange: What are the differences between trademarks, copyrights and patents?

Zimmerman: Trademarks are not to be confused with copyright. But copyright does not protect, it’s not like a patent, it doesn’t protect the fundamental aspect of what’s written on the page. So a recipe would not be the subject matter of a trademark, it could be the subject matter of a copyright. Patent you have to apply for and assuming it granted, is valid for 20 years from the date of filing. And then, unless it can be extended, it’s not valid anymore. A trademark can go on for ever; trademark registrations can be renewed and the changes to the act [mean] in terms of the renewal, it is currently 15 years and after the changes it will be 10 years.

Exchange: What can a company do to limit risk when advertising and promoting goods and services online?

Zimmerman: Let’s just say a tech company is advertising and promoting their goods and services online, digitally; they have either social media platforms, wireless platforms that they are using to promote their goods and services. They could be very creative, in the kinds of trademarks that they use online to promote their goods and services.

They may be able to do things like holograms or other displays on, let’s say a wireless phone that could be the subject matter of a trademark registration. Those kinds of companies usually promote online or do television advertising, or whatever – so they may be able to use these new rights, to obtain registration for things that wouldn’t have before, and things that would be quite appealing to their demographic. The Canadian Marketing Association has been very good at bring this forward to their members.


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