Canadian Lawyer

January 2018

The most widely read magazine for Canadian lawyers

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32 J A N U A R Y 2 0 1 8 w w w . C A N A D I A N L a w y e r m a g . c o m S ince Canadian Lawyer last listed the top intellectual property boutiques, there's been a lot of change in the area. Take the Madrid Protocol, an internationally recognized trademark con- vention that will mean trademark owners in member countries will be able to register their rights in multiple jurisdictions by filing a single application in their home countries. The pending protocol has been on Quebec firm Robic LLP partner Bob Sotiriadis' radar for some time now and he predicts it's going to be a challenge for traditional IP boutiques who file trademarks on behalf of foreign applicants because those applicants The need for IP will be able to file in Canada without using Canadian law firms. "There's an onus on firms to prepare for this in terms of maintaining their con- tacts with their clients so that when there are examiners' reports and prosecution to do, we're top of mind and they stay with us for that work," Sotiriadis says. "There's also the purely economic aspect of having to optimise to make sure you're as nimble as possible to take the diminishing filing income that you're going to be not getting and addressing your energies to representing local clients, Canadian clients, who might be tempted to use the treaty so they don't have to go through firms in other countries." James Kosa, partner at Deeth Wil- liams Wall, says the changes to Canada's Trademarks Act to comply with the international Madrid Protocol are driv- ing changes in how people register and police their marks, adding that for bou- tique practitioners this has been "very interesting." The changes include removing the "use" requirement, which has led to changes in the practice of trademark law. "We're seeing more registrations and more disputes or potential for disputes in trademarks," Kosa says. "The changes are going to be in effect soon, but we're already seeing it happen now because people are anticipating it." Trademark Act amendments are just one of the many changes driving the need for intellectual property boutiques By Mallory Hendry TOP BOUTIQUES

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