Canadian Lawyer InHouse

April/May 2020

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

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Page 32 of 43 31 that IP enforcement costs are likely to rise as a result of such defensive filing, he says. "Register early and register often," advises Davis. "What you need to do with foreign registrations coming in is keep track of who is out there and which trademarks might present a problem to you." The amended act also introduced mandatory Nice classification. The international treaty establishes a classification system for goods and services that trademarks cover. In addition, fees to file an application have increased to $330 for the first class plus an additional $100 for each subsequent class from $250 for any number of classes of goods and services. The period before a certificate of registration must be renewed has decreased to 10 from 15 years. A broader range of non-traditional marks is now registerable, including taste, scent and texture. Other marks that were previously considered registerable, such as taglines, are now raising objections because they are not inherently distinctive, which is causing prob- lems according to Meghan Dillon, a partner at Bereskin & Parr LLP. Some believe the words included in such taglines should be available for all traders to use. "In order to overcome that, you now have to file evidence to the court that precludes you from registering borderline generic/descrip- tive taglines on the basis of proposed use, so, unless you had use before filing, you're out of luck," says Dillon. The new regulations and the need for every application to be examined for distinctiveness has created a tremendous backlog at the Ca- nadian Intellectual Property Office. Moreover, very few Canadian businesses have used the Madrid system thus far as they adjust to the new reality, so the long-term success of the amended act remains to be seen. Although Colombo is in favour of modernization, he says the consequences of some of the amendments were not well thought through by the government. On the other hand, Felicissimo is optimistic. "Overall, I'm hearing positive things, but it's early days, so we'll have to see how it plays out," he says. Intellectual Property Organization and rights can be extended into other jurisdictions, instead of having to file in each jurisdiction separately. "This has tremendous advantages for large trademark filers as they can take care of it all in one shot," says Felicissimo. However, the Madrid Protocol also permits foreign applicants to designate Canada under an international registration, which is hap- pening frequently and presenting problems, according to Jonathan Colombo, a partner at Bereskin & Parr LLP. "How is Madrid for the benefit of Canadian companies when it is being disproportion- ately used by foreign companies to get rights in Canada?" questions Colombo. Foreign companies are applying for trademarks in Canada, which they never use, creating a need for further diligence from Canadian in-house counsel, he says. "You need to think strategically about your portfolio and what marks you are protecting and where the gaps are," says Colombo. "You might want to try and reserve certain marks so they are not scooped up by a third party." In-house counsel should prepare for the fact

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