The most widely read magazine for Canadian lawyers
Issue link: https://digital.canadianlawyermag.com/i/1205487
36 www.canadianlawyermag.com FEATURES TOP INTELLECTUAL PROPERTY BOUTIQUES IN 2020, the top firms in Canada specializing in intellectual property will be doing more to help brand owners guard against "brand trolls" and other consequences of recent gov- ernment reforms. "There's been a lot of changes in the trade- mark and patent act(s) recently and that has some firms worried," says Bereskin & Parr LLP partner and leader of the firm's life sci- ences group Micheline Gravelle. Firms have to be nimble, pivot away from where they're losing work and gain more work elsewhere, says Gravelle. "There's always going to be other work to be done," she says. On June 17, 2019, amendments to the Trade-marks Act and new Trademarks Reg- ulations came into force. The changes upped the fees for trademark applications, decreased the period a trademark is valid to 10 from 15 years and allowed Canada to join five interna- tional IP treaties. Another significant change, which created anxiety among practitioners, was the removal of "use" as a requirement for trademark registration. Trademarks special- ists predicted that not requiring an applicant to prove they use a trademark before regis- tering it could create a flood of brand trolls buying up brands as assets with no intention of using them. This means brand owners will have to be more proactive in guarding their brands and lawyers will be doing more moni- toring and opposition work. The end of the use requirement was one example of how Gravelle says Bereskin & Parr has moved with the changes. With the requirement's elimination, the work the firm got from filing "declarations of use" was out the window. But because people can file trade- marks without use, more work is expected to be available "on the opposition side," where one can oppose trademarks that weren't filed in good faith or are not being used in Canada. And lately, Bereskin & Parr has focused on artificial intelligence and cannabis and have seen a lot more work in those areas, she says. When Canadian Lawyer interviewed her for this article, Gravelle was the firm's manag- 2020 Top Intellectual Property Boutiques Combatting brand trolls among the changes for IP boutiques