The Canadian Trademark landscape has changed significantly over the last few years with a modernized trademarks regime. The challenges that have arisen since Canada’s 2019 accession to the Singapore Treaty, the Madrid Protocol, and the Nice Agreement, along with various input from stakeholders, have guided the Canadian Intellectual Property Office (CIPO) in adopting new measures to accelerate the prosecution of trademark applications. With the time to the issuance of a first examination report reaching recently 24-30 months in the case of some national applications, these measures need to be carefully considered. Two new practice notices are intended to address delays in examination, namely:
The Canadian Intellectual Property Office (“CIPO”) recently released its annual report, IP Canada Report 2019, on the statistics and trends regarding the intellectual property (“IP”) system in Canada and use of IP globally by Canadian companies. One interesting development highlighted in the report is that the number of Canadian companies filing trademark applications in China has seen steady growth over the past decade with 3,401 applications in 2018, a 265% increase since 2008.
This is likely due to several factors, including the growth in consumer spending in China; however, Canadian businesses who do not intend to sell their goods within the Chinese market may still want to consider registering their trademarks in China. China has a “first-to-file” trademark system and no “use” requirement, meaning valuable marks can be registered in the names of third parties looking to take advantage of business owners who fail to protect their IP in China.
Chinese trademark registrations are important for companies that manufacture their goods in China for export to Canada and other jurisdictions. Chinese border services may detain goods due for export, however, on the basis that they infringe the registered Chinese trademark rights in an effort to crack down on counterfeits. In order to avoid these types of disputes, and incurring significant costs in getting the goods out of detention, we recommend that all companies manufacturing goods in China register their trademark with the Chinese National Intellectual Property Administration to allow for the easy export of their goods from China.
If you would like to discuss registering a trademark in China or elsewhere, please contact a member of the Fasken IP team.