Until 2019 most Canadian brand owners doing business abroad had limited options for protecting their trademarks outside Canada. They had to file separate applications in each country of interest, except in the few areas where a regional application was available (eg, the European Union). Now there is a new option available to Canadian brands and businesses looking to expand and protect their trademarks beyond Canada's borders: international registration.
Comparative advertising can be a useful tool for marketers. However, there are legal limits to comparative advertising which are set out in federal statutes such as the Competition Act and the Trademark Act. The Federal Court recently explored these limits in a case involving the registered trademark PETSECURE.
The Canadian Intellectual Property Office (CIPO) was the first office to allow trademark applicants to use the Madrid e-filing system from day one. Under Canada's new Trademarks Regulations, CIPO is authorised to send correspondence only to the applicant or an appointed Canadian trademark agent and not to foreign representatives. Some but not all communications will also be sent to the International Bureau of the World Intellectual Property Organisation.
After five years of anticipation, sweeping changes to Canada's trademark law have finally come into force. Among other things, Canadian applicants can now file applications in more than 80 countries around the world through a single international application and declarations of use are no longer required to secure registrations.
Non-Canadian retailers can breathe a sigh of relief thanks to a recent Federal Court decision which reaffirms its position that providing retail store services does not require a bricks-and-mortar establishment or direct delivery of products to Canada to constitute 'use' of a trademark in Canada. The decision also reverses the Trademarks Opposition Board's longstanding trend of ignoring ancillary services as being sufficient to constitute 'use' in Canada.
In some cases, trolls (or 'squatters') apply for trademarks that are used by brand owners in other countries with the goal of forcing those owners to negotiate with the trolls when they enter the new market. In light of Canada's use-based trademark system, this had not previously been viewed as a serious problem. However, the announcement that amendments to the Canadian Trademarks Act will eliminate use requirements poses the risk of trolls targeting Canada.