Amendments to Trademark Legislation
On June 17, 2019 the Trademarks Act will undergo substantial changes. The changes are an attempt to help align Canada with the rest of the developed world in regards to Intellectual Property legislation. This article will briefly summarize some of the proposed changes, and outline how it may affect Canadian businesses. Registering a Trademark Registration Requirements Currently, Canadian trademark legislation requires applicants to include details outlining the trademarks “use”.[1] Therefore, applicants need to claim or declare that they had “used” the trademark in Canada. Additionally, they would have to include a date of first use. Alternatively, if applicants had not “used” the trademark in Canada, then a Declaration of Use would need to be submitted before a registration could be filed.[2] On June 17, 2019 details of use and registration of the trademark abroad is no longer required.[3] Anyone will be able to file a trademark application regardless of whether they intend to use the trademark or whether the trademark was previously used.[4] Unfortunately, these changes have opened up Canadian trademarks to “trolls” (or “squatters”). Since the announcement that the Trademarks Act would undergo changes in 2014, trolling applications are on the rise.[5] In 2017 there were 427 “all-class” applications on the Canadian database.[6] Compared to the 4 filed in 2016, this represents a significant increase in the number of filings. This increase appears to be due to trademark trolls.[7] This increase in trademark trolling creates problems for brand owners. To avoid becoming a victim of these trolls, many intellectual property law firms are advising clients to file their applications in Canada promptly, especially in cases where a trademark has a reputation abroad but not in Canada.[8] Registration Process The amendments will require all goods and services listed in a trademark application to be classified in accordance with the Nice Classification system.[9] This differs from the current system which allows the registrants the option to indicate the classes of goods and services into which the trademark will be associated with.[10] Trademark term length and eligibility Trademark Term Trademark term length will be shortened from 15 years to 10 years, requiring trademark holders to apply for renewals more frequently.[11] Renewals will cost $400 CAD for the first class of goods and services, with an extra $125 CAD for every additional class the holder wants to renew in.[12] Therefore, if you are a current owner of a multi-class trademark that expires after June 17, 2019 it may be wise to renew while there are no fees attached to each class.[13] Trademark Eligibility Under the new amendments what may be considered an eligible trademark for registration purposes will be broadened. Colours, holograms, animated images, sounds, scents, tastes, and textures will soon be eligible for trademark protection.[14] These non-traditional trademark classes will be vetted for their distinctiveness at the time of use.[15] Distinctiveness will be determined based on the unique characteristics the trademark holds, not based on consumer recognition and goodwill.[16] Conclusion This post highlights just some of the changes to the Trademarks Act. If your business is looking to file a trademark in the near future, it will be beneficial to familiarize yourself with the proposed changes. If you have any questions related to trademarking in Canada feel free to contact the BLG Venture Clinic. Tyler Anthony is a member of the BLG Business Venture Clinic, and is a 2rd year student at the Faculty of Law, University of Calgary. References: [1] Christopher Heer, Toba Cooper and Daryna Kutsyna, “Amendments to the Trademarks Act will Come into Force of July 17, 2019 – Are you and Your Business Ready?” (26 January 2019), Heer Law Resources (blog), online: <https://www.heerlaw.com/upcoming-changes-trademarks-act/>. [2] Anna Loparco, “Upcoming changes to Canada’s trademark and anti-counterfeit laws” (19 July 2018) Dentons Insights (blog), online: <https://www.dentons.com/en/insights/alerts/2018/june/11/major-changes-to-canadas-trademark-laws/>. [3] Philip Lapin, “ The date is set: June 17, 2019 – Canada’s New Trademark Law will be in Force” (14 November 2018) Smart & Biggar Fetherstonhaugh Articles (blog), online <http://www.smart-biggar.ca/en/articles_detail.cfm?news_id=1491/>[Lapin]. [4] Ibid. [5] Ibid. [6] Kohji Suzuki and Jamie-Lynn Kraft, “ The Trolls have arrived: Suspicious trademark applications on the rise” (12 March 2018), Smart & Biggar Fetherstonhaugh Articles (blog), online <http://www.smart-biggar.ca/en/articles_detail.cfm?news_id=1368/>. [7] Ibid. [8] Lapin, supra note 3. [9] Heer, supra note 1. [10] Ibid. [11] Ibid. [12] Ibid. [13] Ibid. [14] Lapin, supra note 3. [15] Heer, supra note 1. [16] Ibid.
0 Comments
How CASL Affects your Ability to Market your Start-up
Canada’s Anti-Spam Legislation (“CASL”) came into effect in 2014.[1] CASL governs businesses or individuals (“the Sender”) that send promotional materials, through electronic channels, to a Canadian recipient (“the Recipient”). It is important to understand this legislation if you or your company is using emails, texts, or other electronic means for promotional purposes. Important Terms It is vital to understand the terminology used in CASL. CASL applies to any commercial electronic message (“CEM”) that is sent to an electronic address. Here are some terms you should be familiar with:
There are three elements the Sender needs to meet to send a CEM:
Consent is often an issue for a new start-up that lacks an extensive network of potential customers. It is important to note that consent can be implied or expressly given.[10] There are three situations for which consent can be implied:
Overall, relying on any type of implied consent is difficult. The onus of proving that there is implied consent lies with the Sender. The few cases that have discussed these sections of CASL have shown that the courts construe implied consent narrowly.[14] [15] It is best for any start-up to get express consent to send any type of marketing message. Contravening CASL by not getting consent can result in very high administrative monetary penalties.[16] Rick Josan is a member of the BLG Business Venture Clinic, and is a 3rd year student at the Faculty of Law, University of Calgary References [1] Parliament of Canada, “House Government Bill: 40th Parliament, 3rd Session” (20 February 2019), online: Parliament of Canada LEGISinfo <https://www.parl.ca/LegisInfo/BillDetails.aspx?Language=e&Mode=1&billId=4543582&View=6> [https://perma.cc/SW4M-PXTJ]. [2] An Act to promote the efficiency and adaptability of the Canadian economy by regulating certain activities that discourage reliance on electronic means of carrying out commercial activities, and to amend the Canadian Radio-television and Telecommunications Commission Act, the Competition Act, the Personal Information Protection and Electronic Documents Act and the Telecommunications Act, RSC 2010, c 23 [CASL] at s1(2). [3] Ibid at s 1(3) [4] Ibid at s 1(1). [5] Government of Canada, “Frequently Asked Questions about Canada’s Anti-Spam Legislation” (last modified1 February 2019), online: Canadian Radio-television and Telecommunications Commission <https://crtc.gc.ca/eng/com500/faq500.htm> [https://perma.cc/7FBV-C25E] [FAQ]. [6] Ibid. [7] Government of Canada, “Canada's Anti-Spam Legislation (Infographics)” (last modified 16 August 2018), online: Canadian Radio-television and Telecommunications Commission <https://crtc.gc.ca/eng/internet/infograph.htm> [https://perma.cc/XHX6-NPPA]. [8] CASL, supra note 2 at s 11. [9] FAQ, supra note 5. [10] CASL, supra note 2 at s 6(1)(a). [11] CASL, supra note 2 at s 10(9). [12] FAQ, supra note 5. [13] Ibid. [14] Blackstone Learning Corp, Re [2016] CarswellNat 12052, [2016] CarswellNat 12053. [15] PIPEDA Report of Findings No 2016-003, Re [2016] CarswellNat 2533, [2016] CarswellNat 2534. [16] FAQ, supra note 5. Quick Guide to Bankruptcy Law
Entrepreneurs seeking to expand their businesses must consider the law that applies when things turn sour. While unpleasant, organizing capital and planning for contingencies is a necessary step to prevent higher costs that may arise in the future. As for a potential bankruptcy, the following is information regarding its procedures. When consulting a lawyer in connection to planning for bankruptcy, according to professional ethics, he or she cannot provide advice on diverting assets in any way that might delay, defeat or hinder creditors. Doing otherwise may place him or her in risk of liability, professional disbarment or imprisonment. As a result, the retainer may not mention any form of guaranteed result. In addition, an accounting of assets would be required to determine whether there are sufficient funds to pay the creditors upon transfer. If a transfer renders a client insolvent, the courts may reverse it. This includes giving a trustee the power to reel-in any transfer that a client makes to gain a fraudulent exemption or place property outside the jurisdiction. An accounting of assets could go as far back as five years. This includes any accounting of corporations that the client controls, manages or acts as an agent for. How does this relate to business law? A client would be required to consider the rules of bankruptcy in the case of corporations, partnerships, or other business entities. In all cases, it is important to know whether the client is insolvent or in financial difficulties, or would be thus immediately subsequent to any transfer or reorganization. In the case of corporations, a shareholder would generally not be liable for all debts of the corporation; this is because liability is limited to the equity investment. However, the courts may render director shareholders liable to creditors by employing the oppression remedy in the Business Corporations Act. To reduce this risk, a corporation should split divisions into several subsidiaries and avoid any cross-collateralization or guarantees that would create interdependency. This way, liability to creditors would be narrowed to each corporate entity rather than the group as a whole. Furthermore, when there are multiple shareholders, the shareholder agreement should contain appropriate clauses for each remedy concerning shareholder bankruptcies, matrimonial issues or estate freezes. The same applies to franchises. If the client keeps the franchise separate and independent, there would be little risk of issues regarding creditor liability bleeding into the other business units. Finally, partnerships have a bit of a different application. Each entity is composed of separate units — the partners — that invest capital into the business. Liability extends to the partners jointly and severally, which means that a creditor may collect from one partner who may sue the others for the difference. However, limited partners or those within professional LLPs have liability restricted to their initial capital investment or each of their own negligence, respectively. Nick Konstantinov is a member of the BLG Business Venture Clinic, and is a 3rd year student at the Faculty of Law, University of Calgary. |
BVC BlogsBlog posts are by students at the Business Venture Clinic. Student bios appear under each post. Categories
All
Archives
February 2025
|