Category Archives: Trademark

CIPO Fees to Increase After January 1, 2021

The Canadian Intellectual Property Office (“CIPO”) has announced that many of its fees for Canadian trademarks, patents, industrial designs, and integrated circuit topographies will increase on January 1, 2021. Among the fees being increased by 2% are those for an application to register a trademark as well as examination of patent and industrial design applications. A full list of the adjusted fees can be found in the links above or on the CIPO website.

The CIPO website should be consulted for an up-to-date listing of the adjusted fees because the applicable Tariff of Fees in the Patent Rules may not yet be updated. Whether the current fee or the adjusted fee must be paid for a given service will depend on the date on which the fee is received by CIPO, not the date on which the service is requested.

Fasken’s team of experienced intellectual property lawyers, patent agents, and trademark agents would be pleased to assist you with any and all CIPO matters.

Rapid Patenting of Solutions to Covid-19

Are you a small business or independent inventor with an invention which may help in the fight against COVID-19?

On 8 May 2020, the United States Patent and Trademark Office (USPTO) announced a new program for accelerating the review of patent applications related to COVID-19. This could be your lucky day (if you’re one of the 500 selected…)!

The purpose of this program is to facilitate the patenting process by reducing cost and allowing rapid review of eligible filed patent applications.

What do you need to know about the new program (“COVID-19 Prioritized Examination Pilot Program”)? Here’s a snapshot:

  • The patent application must cover a product or process that is subject to U.S. Food and Drug Administration (FDA) approval for use in the prevention and/or treatment of COVID-19.
  • Only small and micro entities are eligible (companies with <500 employees or independent inventors).
  • Prioritized examination fees are not required under this program (regular fees apply).
  • Total of 500 applications will be reviewed under the program.

Full details may be found by clicking here (link to USPTO).

Canada’s Intellectual Property Office (CIPO) does not have a specific program for inventors in response to COVID-19 but it has multiple programs for expediting review of new patent applications, and at a low cost relative to the U.S., which may be used as before. Canadian patent applications may be expedited under one of the following scenarios:

  1. By payment of a fee of $500CAD (useable on virtually all applications).
  2. By having a corresponding patent issued in a foreign patent office. For example, if you have filed the same patent application in the U.S. and Canada and a U.S. patent has issued, CIPO will expedite review of the corresponding Canadian application.

For any questions or further information, please contact a member of our patent group.

SUSSEX ROYAL Trademark in Canada: Safe Heaven, But Maybe Not for Royal Trademarks

The past two months have been marked by unprecedented turmoil for the British royal family, after the announcement by the Duke and Duchess of Sussex, Prince Harry and Meghan Markle, that they would step down as senior members of the royal family and entertain their own financial independence. Under a new working arrangement, they will be free to earn professional income and will have more liberty to pursue their charitable endeavours. Further details on the specific arrangements can be found here.

In anticipation of their new projects, a trademark application and a domain name registration for SUSSEX ROYAL had been sought in the UK. Following a recent intervention by Her Majesty the Queen herself, however, the use of the term “royal” has now been disallowed. Since the Duke and Duchess of Sussex would no longer be serving as “royal” members and representatives, as they gave up their royal duties, then there was no justification for them to further use this term. The UK trademark application for SUSSEX ROYAL was thereby withdrawn.

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Key Estate Planning Considerations for Individuals with IP (Part II: Trademarks)

Key Estate Planning Considerations for Individuals with Intellectual Property (Part II: Trademarks)

This is the second entry in a three-part blog series about the interaction between estates law and intellectual property law. Part I introduced Ontario’s succession law regime, and provided an analysis of estates law vis-à-vis copyright law. Part II will apply this analysis to trademark law. Finally, Part III will examine this area in relation to patent law, as well as provide some concluding thoughts and considerations.

Trademarks

In the previous blog entry in this series, we looked at Ontario’s succession law regime. We also applied this regime to the provisions in the Copyright Act that related to the assignment of one’s copyright after their death. This week, we will take the same approach and apply it to trademark law, which definitely has some considerations that distinguish it from copyright law.

A trademark is a combination of letters, words, sounds or designs that distinguishes one company’s good or services from those of others in the marketplace. A trademark is mostly a business-related form of intellectual property, as it often signifies a company’s goods, services, reputation and brand.

A trademark can be registered in the name of an individual, or in the name of a corporation. As opposed to copyrights, which are more related to works of art and entertainment, trademarks pertain to the operation of a business. As such, it may make more sense for a variety of reasons, including from an estate planning perspective, to register a trademark in the name of a corporation. In doing so, a testator could transfer the shares of that corporation to a beneficiary, and that beneficiary would in effect own the trademark because they control the corporation that is the registered owner of said trademark.

The Trademarks Act is the key piece of legislation in this respect, and it contains multiple provisions relevant for the purposes of estate planning. The first is Subsection 48(1), which allows for the transfer of trademarks, whether registered (in which case CIPO requires a fee  of $100) or unregistered. On that note, as with copyrights, trademarks also do not need to be registered. By the same token, registration of a trademark is prudent, as registering a trademark help more effectively enforce trademark rights against third parties.

Unlike copyrights, however, the ownership of a trademark is not subject to the same types of term limitations. As per Subsection 46(1) of the Trademarks Act, the registration of a trademark is valid for an initial period of 10 years, and can be renewed for any number of subsequent 10-year periods as long as the owner pays the renewal fee ($400 for the first class of goods or services to which the request for renewal relates, and $125 for each additional class). However, the registration must occur within six months after the expiry of the initial or renewal period (although there are certain avenues for extending this timeline).

All that being said, individuals planning their estates should be weary of the common law rule against the partial assignment of trademarks. The Exchequer Court of Canada held in Great Atlantic & Pacific Tea Co. v. Canada (1945), [1945] Ex CR 233, 5 CPR 57 that if a person owns a registered trademark for use in Canada in association with certain goods, they cannot validly assign the trademark unless they also assign the whole of the goodwill of the business carried on by them in Canada in association with such wares. As such, an individual should avoid assigning a trademark to one beneficiary and the business with which said trademark is associated to a different beneficiary.

This principle only further supports the notion that registering a trademark in the name of a corporation and then gifting the shares of a corporation to a beneficiary is an effective way of managing a trademark for the purposes of estate planning. Trademark assignment can be a complicated legal area, so it is best for a testator not to separate the trademark from the business with which it is associated.

A Recent Look at Interlocutory Injunctions in Trademark Infringement Cases

Interlocutory injunctions remain difficult to obtain in trademark infringement cases. To obtain an interlocutory injunction, the moving party must satisfy a three-part test. A party must show that:  (1) a serious issue has been raised; (2) irreparable harm will result if the injunction is not granted; and (3) the balance of convenience favours the moving party. Over the years parties seeking injunctive relief in trademark infringement cases have faced difficulty satisfying the irreparable harm branch of the test. In order to satisfy the court that irreparable harm will result, the court requires clear and non-speculative evidence of harm that could not be compensated for by an award of damages at trial. This has proven to be difficult for parties for among other reasons, the fact that often in these cases it is in fact possible to quantify the harm that has and/or will be done and accordingly compensate the moving party through an award of damages at trial. Canadian courts have recently provided more insight on the evidence required to support a request for injunctive relief.

In the 2017 decision of Sleep Country Canada Inc. v. Sears Canada Inc., 2017 FC 148, Sleep Country Canada Inc. (“Sleep Country”) was granted an interlocutory injunction against Sears Canada Inc. (“Sears”) to prevent Sears from using its slogan: “THERE IS NO REASON TO BUY A MATTRESS ANYWHERE ELSE”, pending the final determination of Sleep Country’s trademark infringement action against Sears. Sleep Country alleged that Sears’ slogan infringed Sleep Country’s trademarked slogan of “WHY BUY A MATTRESS ANYWHERE ELSE”. The court accepted Sleep Country’s arguments and found that on a balance, there was a likelihood of confusion between the time of the motion and the disposition of the infringement action and that this confusion would result in lost sales as a result of consumers being less aware and familiar of the slogan’s association to Sleep Country. The court found that these associations would consequently result in a loss of distinctiveness for the brand of Sleep Country and this would in turn have an effect on the goodwill established by Sleep Country.

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