Janine MacNeil is an experienced Trademark Agent in Vancouver and a member of the firm’s Intellectual Property group. Start-ups and major companies in Canada and abroad seek her out for her in-depth knowledge of the law of trademarks.
As a strong supporter of the food and beverage industry, Fasken is pleased to invite you to view this episode of the Masterclass Series, presented by BC Food & Beverage (BCFB).
This video series features topics that will be of interest to producers, distributors and retailers in BC’s growing agribusiness, food and beverage industry.
Hear from Roger Kuypers and Janine McNeil, Trademark Agents at Fasken who discuss the importance of trademarks and how an effective trademark strategy is critical to your brand’s future growth and success.
Earlier this year, the trademark
system in Canada was modernized to bring in the Nice classification system.
The Nice classification system is an international classification system that
is used to classify goods or services into 34 classes for goods and 11 classes
for services for the purposes of registering trademarks. As part of this
modernization, the Canadian Trademarks Act was amended to add section
44.1, which provides the following:
44.1 (1) The Registrar may give
notice to the registered owner of a trademark requiring the owner to furnish
the Registrar, in the prescribed time and manner, with a statement of the goods
or services in respect of which the trademark is registered, in which those
goods or services are grouped in the manner described in subsection 30(3).
(2) The Registrar may amend the
register in accordance with the statement furnished under subsection (1).
(3) If the statement required by
subsection (1) is not furnished, the Registrar shall by a further notice fix a
reasonable time after which, if the statement is not furnished, the Registrar
may expunge the registration of the trademark or refuse to renew it.
(4) Any question arising as to
the class within which any goods or services are to be grouped shall be
determined by the Registrar, whose determination is not subject to appeal.
As a result, owners of existing
trademark registrations in Canada will be required to classify the listed goods
and/or services in order to maintain rights to the mark in Canada or the
registration will be expunged. We note the Canadian Trademarks Office
allows six-months to respond to this notice. The deadline to classify is
extendable for another six-months but under limited exceptional
circumstances. If the deadline to classify is missed, a notice of default
will issue which provides two-months to respond failing which will result in
the expungement of the registration.
If a response is filed on or
before the deadline to classify, the Canadian Trademarks Office will either
accept the proposed classification of the goods and services, or issue an
action requesting amendments.
Please note these notices issue
to the agent of record noted on the registration. If the trademark owner
renews directly or a third party renews the registration on behalf of the
trademark owner, the agent of record will receive the notice only.
If you require any assistance with the above (or any other trademark matters), don’t hesitate to contact the Fasken IP group.