#IPLSpring CLE Review: A Trademark Overhaul! Canadian Trademarks Amendments and their Effect on Trademark US owners

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First published on Law Student Action Group ABA IPL

Many Intellectual Property attorneys have international clients and/or United States clients with registered trademarks outside of the US. Four panelists joined by moderator James L. Bikoff, partner at Silverberg, Goldman, & Bikoff LLCP in Washington, DC, spoke about Canada’s Trademark Amendments at the ABA IP Spring Meeting this past March.

Panelist John McKeown of Goldman, Sloan, Nash, & Haber LLP in Toronto, ON Canada, began the CLE giving the audience a chronology of trademark changes. McKeown reported that the changes were “driven by international trade negotiations and agreements.” Further he added that, “all changes reflect [a] desire to harmonize Canadian trademark systems especially with European Union and simplify procedures for applicants.”

Next, Matthias Berger of Field Fisher Waterhouse LLP in Hamburg, Germany spoke about the “other side of the street”, European Union’s community trademarks and use. US trademark owners make up “41% of all applications.” Canada “accounts for 3% of all applications.”

During his presentation, Berger explained that one application in EU covers all 28 EU member states. The use requirement allows a “grace period for non-use of five years calculated from the registration date.” However, the community trademark is “no longer enforceable if mark has not been used in the Community within this period.” Lastly, proof of use is required. Compared to the EU, Canada’s non-use grace period is three years.

Panelist Luna Samman of Arent Fox LLP in Washington D.C spoke about the difference between registering TMs in the US versus Canada. Explaining the filing bases in the US, Samman defined “use in commerce” required. Under 15 USC § 1127, “use in commerce is defined as “all commerce, which may lawfully be regulated by Congress.” In other words, Samman explained that it “generally encompasses, the transport or sale across state or foreign borders.”

So how will Canada’s trademark amendment impact trademark owners? Samman shares that trademark owners will have the “ability to register without use”, “classification requirement creates congruity”, and “modified term of protection now similar to the US.”

Combatting counterfeit products is also addressed in the trademark amendment. Cynthia Rowden of Bereskin & Parr in Toronto, ON Canada explained that the amendments “adds expanded infringement provisions” such as the sale and distribution of goods, labels, and packaging. In fact, it adds new criminal sanctions “for acts without consent of owner, on a commercial scale, if person knows that TM is identical to or cannot be distinguished in essential elements from registered TM.” Offenders can face “a fine up to $1,000,000” and “imprisonment up to five years.”

Rowden left the audience with some practical tips for TM owners: register and check list of goods for likely counterfeits, and confirm “system” for responding.

Photo Credit: Flickr/ Alex Indigo

Mappingthecity

5 Comments

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