Canadian Lawyer InHouse

April/May 2020

Legal news and trends for Canadian in-house counsel and c-suite executives

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30 www.canadianlawyermag.com/inhouse FEATURE has increased, in Davis' opinion. Despite concerns, some in-house coun- sel are benefitting from the removal of the "use" requirement. David Felicissimo, general counsel at Valsoft Corporation and Valnet Inc., does not believe the issue of squatting will be as bad as some think as prior use will still be given priority. "The trademark office is very responsive and quick to deal with infringement when there's a conflicting mark," he says. In fact, Felicissimo considers the removal of the "use" requirement to be helpful to his business as it enables him to proactively register multiple marks before they are close to being in use. "Valnet owns and operates various websites in different verticals, so, oftentimes, we would be developing a website or building it, but we wouldn't necessarily file a trademark until we were very close to launch and we would test out different names," he says. "Now this allows us to register multiple marks. The cost is not that high, so we can do so earlier in the pro- cess rather than later, so that's a positive." Under the Madrid Protocol, a single trade- mark application can be filed through the World THE JURY IS still out on the success of the amendments to the Canadian Trademarks Act that came into play in June 2019, to better align with five international intellectual property treaties. Among the most significant revisions are the removal of the "use" requirement for registration, Canada's introduction to the Madrid System, the implementation of the Nice classification and changes to fees. Many lawyers are concerned that the removal of the "use" requirement for registration will result in an increase in problematic trademark squatters. "You no longer have to say that you are using a trademark or intending to use it in Canada, so entities are registering trademarks that belong to others," says Mark Davis, a partner and trademark agent at Norton Rose Fulbright Canada LLP. Another problem that arises is the difficulty in recognizing which trademarks are available. "If you're launching a new product, you want certainty that you're not going to run into trademark problems," says Davis. "The last thing anyone wants to do is spend millions on an advertising campaign and then find someone else has the rights to prevent the ongoing use of the trademark." The due diligence required before filing a trademark "[A single trademark application process] has tremendous advantages for large trademark filers as they can take care of it all in one shot." David Felicissimo, Valsoft Corporation GCs treading carefully around trademark laws Due diligence required for trademark usage has increased, say lawyers

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