Trends, analysis and insights in IP Law
The Madrid Protocol is celebrating its second anniversary in Canada! Since it came into effect on June 17, 2019, Canadian businesses have more than one string to their bow to protect their trademarks in Canada and internationally. This is the first article in the series on the Madrid Protocol in Canada; it will focus specifically on international filings made by Canadian companies.
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In May 2021, CIPO added upwards of 60 cannabis- and marijuana-related terms to the Goods and Services Manual (the “Manual”).
Most of the new terms fall into Nice Classes 3 (non-medicated toiletry preparations), 5 (pharmaceuticals), and 30 (foodstuffs of plant origin). However, new terms have also been added in Class 16 (namely “printed publications in the field of cannabis”), 42 (“scientific research in the field of cannabis”) and 45 (“legal research in the field of cannabis”).
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With the rise of e-commerce, many non-Canadian businesses can now advertise their services to Canadians online without having any physical presence in Canada. If these businesses have Canadian registered trademarks associated with these services, there are however important considerations for businesses wanting to properly maintain their trademarks in Canada. Unlike other forms of intellectual property, an owner of a Canadian trademark must “use” their registered mark in Canadian commerce or it may lose the protections provided by the Trademarks Act. It goes without saying that without a physical presence in Canada, it could be challenging for foreign trademark owners to prove that they are meeting the “use” requirement. The WALDORF ASTORIA case provides helpful guidance for foreign trademark owners to mitigate the risk of compromising their intellectual property.
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Under section 19 of the Canadian Trademarks Act, “… the registration of a trademark in respect of any goods or services, unless shown to be invalid, gives to the owner of the trademark the exclusive right to the use throughout Canada of the trademark in respect of those goods or services.” (our emphasis) That exclusive right is said to be infringed if another person, among other things, sells goods in association with a confusingly similar trademark or trade name. (s. 20(1)(a)) The owner can then institute legal proceedings against the allegedly infringing party (s. 52 ff) and, if they are successful, obtain monetary compensation or other remedies.
But what happens if a registered trademark is later expunged and the use of that mark is held to be infringing another trademark owner’s trademark rights? When does the protection of section 19 cease? In other words, when can another registered trademark owner obtain damages for that infringing use?
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Jean-Nicolas Delage Recognized as IAM Global Leader for 2021
Fasken partner, Jean-Nicolas Delage, has been recognized in the 2021 edition of IAM Global Leaders Guide.
Now into its second year, the IAM Global Leaders Guide brings together the world’s foremost private practice patent experts. Congratulations Jean-Nicolas! Read the full guide here.
Jean-Nicolas is the co-leader of the Technology, Media and Telecommunications group and specializes in intellectual property strategy for rapidly growing technological clients.
Learn more about our Technology, Media and Telecommunications group