Will Changes to Canadian Trademark Laws Impact Your Business?

If you conduct business in Canada or are a trademark owner in Canada, it's imperative that you are familiar with changes on the horizon for Canadian trademark laws, specifically with registration and fees.


Beginning June 17, 2019, sweeping changes to Canadian trademark laws will finally be in effect. United States entities that conduct business in and are trademark owners in Canada should be aware of some of these key changes, which aim to align Canadian practice with those of other jurisdictions worldwide.

Requirements of Filing Applications and the Prosecution Process

First, new Canadian applications will be required to comply with the classification system of goods and services that is already used in the U.S. Historically, Canadian applications had all goods and services included together. This change means that attention will need to be paid to the various classes of goods and services with which U.S. trademark registration owners should already be familiar.  

Second, new trademark applications filed in Canada will no longer have to include dates of first use. Furthermore, asserting actual use will not be required for a trademark application to proceed to registration. As a result, an intervening party could potentially secure a Canadian registration without proving use in Canada.  In other words, there could be an increase in squatters or trolls obtaining Canadian trademark registrations, to the detriment of valid Canadian trademark owners. A valid trademark owner in Canada might have to address this intervening registrant, which could complicate the owner’s ability to secure its own registration in Canada. This emphasizes the importance of filing applications in Canada sooner rather than later when there is trademark use in Canada, or when it is anticipated in the near future. There will clearly be an increased value in “first to file” under the new Canadian system.

Third, the expansion of Canadian laws to help protect non-traditional trademarks (such as colors, scents, tastes and moving images) is an interesting development. Other jurisdictions, including the U.S., have already been affording protection to non-traditional trademarks, so this will be a welcome change that will increase the range of Canadian trademark protection. However, non-traditional trademarks will still be subject to examination for distinctiveness, much like in the United States. It could therefore prove difficult to obtain registrations of non-traditional marks unless the trademark owner can provide substantial evidence of extensive use and promotion in the Canadian market.

Registration Term and Renewals

The term of a Canadian trademark registration will be 10 years for registrations issued after June 17, 2019, instead of the 15-year term that exists under the current system. The term for registrations that are already in existence before June 17, 2019 will remain at 15 years. Importantly, they will not be converted to a 10-year term until the next renewal deadline arises. Furthermore, any Canadian registration renewed after June 17, 2019 will need to be amended to place the goods and/or services into appropriate separate classes. This means that there could be a cost savings in renewing a Canadian registration prior to June 17, 2019.

Fees

The adoption of the classification system mentioned above will require the creation of a new filing fee system. As is done in the United States, the trademark application filing fee will be based on the number of different classes of goods and services. In the new Canadian system, this fee will be $330 (CDN) for the first class, plus $100 (CDN) for each additional class of goods and/or services. This is a significant change; instead of having a single filing fee, regardless of the number of classes of goods and services, new applications could have drastically higher filing fees if many different classes are included. The current $200 registration fee, however, will be eliminated.

It may be worthwhile for U.S. trademark owners to review and audit their own portfolio to determine if any cost-savings steps should be taken before June 17, 2019. If you have trademark questions or concerns, either in the United States or in Canada, please reach out to our intellectual property team. We’d be happy to help.

Sean Mellino is an attorney with Walter | Haverfield who focuses his practice on intellectual property law. He can be reached at smellino@walterhav.com or at 216-928-2925. 


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  • Next up: Workers' Comp: What to Know About Starting, Buying or Moving Your Business
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    If you are looking to start a new business, buy an existing business or move your business, there are some things you need to know about workers’ compensation coverage. 

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  • Next up: Workplace Violence: 36 Warning Signs to Watch for
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  • Workplace Violence: 36 Warning Signs to Watch for

    Would you know the signs of potential violence in your workplace? Don’t go guessing or get caught off-guard. In the first of this two-part series, become familiar with these 36 warning signs to look for to keep your company and team safe, and then join us next month as we provide specific next steps.

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    As a business owner, it is crucial that you know and can recognize the warning signs of potential workplace violence. While it can be very difficult to know when a person is going to be violent, and not all people will show the exact signs we discuss here, workplace violence can often be prevented by understanding the behaviors that may result in physical injury or even death. While every situation is unique, there are some warning signs that are generally exhibited by individuals in need of assistance.

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    It is important to note that just because someone exhibits one or more of these behaviors, it does not necessarily mean they are going to become violent. However, you should always be aware of sudden behavior changes.

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    Warning sign No. 1

    Crying, sulking, throwing temper tantrums, or being unable to handle criticism.

    Warning sign No. 2

    Exhibiting excessive absenteeism or lateness.

    Warning sign No. 3

    Pushing the limits of acceptable conduct, or disregarding the health and safety of others.

    Warning sign No. 4

    Showing disrespect for authority or testing the limits of behaviors.

    Warning sign No. 5

    Increasingly making mistakes and errors, producing unsatisfactory work quality, making poor decisions or refusing to acknowledge job performance problems.

    Warning sign No. 6

    Swearing or making inappropriate or emotional statements.

    Warning sign No. 7

    Being forgetful, confused, distracted or unable to focus.

    Warning sign No. 8

    Blaming others for mistakes, complaining of unfair personal treatment, or insisting that he or she is always right.

    Warning sign No. 9

    Misinterpreting communication from supervisors or co-workers.

    Warning sign No. 10

    Being socially isolated.

    Warning sign No. 11

    Having poor personal hygiene, complaining of unusual and/or non-specific illnesses.

    Warning sign No. 12

    Holding grudges or making threats, especially against his or her supervisor.

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    There are also some specific physical signs that you should be aware of.

    Warning sign No. 13

    Flushed or pale face, sweating, pacing, restlessness, or repetitive movements.

    Warning sign No. 14

    Signs of extreme fatigue.

    Warning sign No. 15

    Trembling, shaking, clenched jaws or fists, exaggerated or violent gestures.

    Warning sign No. 16

    Changes in voice, loud talking or chanting.

    Warning sign No. 17

    Shallow, rapid breathing.

    Warning sign No. 18

    Scowling, sneering or use of abusive language.

    Warning sign No. 19

    Glaring or avoiding eye contact.

    Warning sign No. 20

    Violating someone’s personal space (getting too close).

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    And lastly, be aware of anyone who shows these traits.

    Warning sign No. 21

    Has a history of, or is enthralled with, episodes of workplace violence.

    Warning sign No. 22

    Shows an extreme interest in or an obsession with weapons.

    Warning sign No. 23

    Has demonstrated violent, intimidating or threatening behavior toward a person or objects.

    Warning sign No. 24

    States intentions to hurt someone (verbal or written).

    Warning sign No. 25

    Holds grudges or exhibits excessive behavior (repeated phone calls, stalking, gift giving).

    Warning sign No. 26

    Is argumentative and uncooperative, displays unwarranted anger, is impulsive or easily frustrated, or appears to be unusually stressed.

    Warning sign No. 27

    Challenges peers and authority figures.

    Warning sign No. 28

    Has an unreciprocated romantic obsession.

    Warning sign No. 29

    Is experiencing stressful family or financial problems.

    Warning sign No. 30

    Displays negative personality characteristics, is suspicious of others, feels victimized or has a difficult time with criticism.

    Warning sign No. 31

    Displays a sense of entitlement.

    Warning sign No. 32

    Shows a lack of concern for the safety or well-being of others.

    Warning sign No. 33

    Is socially isolated or blames others for his or her problems or mistakes, appears depressed or exhibits a sense of hopelessness or heightened anxiety.

    Warning sign No. 34

    Shows low self-esteem, changes in mood or extreme behavior and/or irrational beliefs and ideas, or demonstrates a sudden or a drastic change in his or her belief systems.

    Warning sign No. 35

    Sees the company as their "family" or displays an obsessive involvement with his or her job; and

    Warning sign No. 36

    Abuses drugs or alcohol.

    Even as a small business, it is important to have a workplace violence prevention policy and program that takes a comprehensive approach to identifying hazards and reducing the risks for your organization. Remember, employers have a legal obligation to provide employees with a safe workplace.

    Be sure to check out the second of this two-part series next month as we discuss specific action steps you should take if you do suspect an employee exhibits any of these signs toward physical violence.

    President, SACS Consulting & Investigative Services, Speaker, Trainer, Corporate Security Expert Timothy A. Dimoff, CPP, president of SACS Consulting & Investigative Services, Inc., is a speaker, trainer and author and a leading authority in high-risk workplace and human resource security and crime issues. He is a Certified Protection Professional; a certified legal expert in corporate security procedures and training; a member of the Ohio and International Narcotic Associations; the Ohio and National Societies for Human Resource Managers; and the American Society for Industrial Security. He holds a B.S. in Sociology, with an emphasis in criminology, from Dennison University. Contact him at mailto:info@sacsconsulting.com.


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