For better or for worse, Canada has been hitting the trademark newswire in 2019.
On June 17, 2019, a new Trademark Act took effect in Canada. The changes had a significant impact on the Canadian trademark laws, aligning them with the U.S. and Europe. Most notably, Canada became a member of the Madrid Protocol and implemented the Nice Classification system.
With the new act in place, can a US attorney file a Canadian Trademark?
Unfortunately, no. Communications regarding the status of a Canadian trademark application will not be sent to a foreign (U.S.) attorney. Canada requires Canadian representatives to be appointed to correspond with and represent applicants for Canadian trademarks if the applicant is not self-represented.
In fact, as of August 3, 2019, Canadian lawyers are no longer authorized to represent Canadian trademark applicants in the U.S.
While official notices from the Canadian Intellectual Property Office (CIPO) can be sent to the applicant who can forward them to U.S. attorneys for guidance, it is best to work with a qualified Canadian attorney familiar with Canadian Law and CIPO practice. Mistakes can easily and unintentionally be made, compromising an applicant’s trademark rights.
If you are seeking trademark rights in Canada, our trademark team can work with Canadian trademark lawyers to ensure the best results. We have a network of experienced attorneys who assist our US clients in international business matters.
Canada is also not immune to unusual trademark stories. In September 2019, as fantasy author James Bow was getting ready to release a novel named The Night Girl, which features cover art that include part of the CN Tower, he received a sternly written letter from CN Tower management claiming that Bow was infringing on the likeness of Toronto’s famous building.
While the Canadian Trademark Act is clear that reproduction of architecture is not infringement, that didn’t stop the building’s management legal team from attempting to get Bow to scrap his cover. The parties are currently in discussion for a resolution.
The new Trademark Act in Canada expanded the definition of trademark to include non-traditional marks like colors, scents, sounds, and tastes. If you have an existing trademark in Canada, you may need to update your business practices, so your brand is fully protected. The new act and the interpretation of it only reinforces the need to consult with an attorney for your trademark whether you are an artist, writer, creator or business owner.
Tracy Jong is a patent and trademark attorney at Tracy Jong Law Firm. Tracy focuses her practice on client counseling related to patent and trademark prosecution for a range of clients including small startup companies, restaurants and bars, craft beverage companies and product manufacturers. She may be contacted at TJong@TracyJongLawFirm.com. Connect with her at: Twitter, Facebook, Linkedin, Instagram. Visit her website at www.TracyJongLawFirm.com.