Canadian Lawyer

November 2022

The most widely read magazine for Canadian lawyers

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Page 24 of 51 23 was the fifth-most-popular jurisdiction in the world for companies to apply to register their marks through the Madrid Protocol. Canada just wasn't equipped to deal with this flood of new applications." The Nice Agreement establishes a classifi- cation system comprising 34 classes of goods and 11 classes of services. CIPO's Goods and Services Manual now includes these classes. The new international classification requirements also cause delays for applicants and examiners, says Lapin. These delays are partly because Canada's trademarks office is one of the most finicky in the world for describing goods and services. Non-residents own most trademarks in Canada. He says when foreign applicants use broader descriptions, which they may have successfully registered in dozens of other juris- dictions, the trademarks office often rejects them. "A lot of applicants in other countries have found this very frustrating," Lapin says. "It causes delays at the trademarks office because they are objecting, and it can signifi- cantly add to the costs for applicants because they spend so much time going back and forth with us and the trademarks office to describe their goods and services very specifi- cally – which they haven't had to do anywhere else in the world. That's another factor adding to both costs and frustration and delays." Two other aspects of the 2019 amendments adding to the delays are the requirement that "There are huge backlogs, yes. But the trademarks office is doing everything they can to try to alleviate the situation" Meghan Dillon, Bereskin & Parr LLP a mark has "some degree of inherent distinc- tiveness," and the elimination of the use requirement. Daniel Anthony, a lawyer, patent and trademark agent, and counsel at Smart & Biggar LLP, says the trademark office's aggressive application of the non-distinctive objection is another cause of backlogs. Lapin says there is confusion and no rele- vant case law around the meaning of inherent distinctiveness. When examiners began objecting to applications because marks

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