Bear in mind this if you want to register a trademark in Canada

canada-1157521_960_720.jpgThe trademark registration process in Canada will have some significant changes this year as a result of the trademark law reform which has been addopted recently.

The main changes that have to be taken into account by all who want to protect a trademark in there are:

 1. The term of trademark protection will be reduced from 15 to 10 years.

2.  Declaration of Use will be no longer required from trademark applicants –  as it is well-known Canada, similarly to The US, has required until now such declarations which to show a real use of the sign on the market. This was one of the significant differences when it comes to trademark filing compare to Europe, for instance. But no more. Still, trademark use will remain an important element of the protection because it will be a ground for invalidation in the case of a lack of genuine use.

3. Canada will introduce Nice Classification for goods and services for the purpose of trademark filing. In that way, Canada has joined almost all countries around the world that already use this classification.

4. An additional fee will be paid for every class above the first in case of filling of a trademark application or trademark renewal.

Source: April L. Besl (Dinsmore & Shohl LLP), Lexology.

Canada joins three key agreements regarding international trademark protection

pexels-photo-756790.jpegWIPO reports for the accession of Canada to three important agreements for international protection of trademarks – the Madrid Protocol, Nice Agreement and the Singapore Treaty.

This by itself is a big relief and good news for every trademark applicant, especially an international one because until now Canada has been the last country, member of G8, which didn’t sign these agreements that facilitate significantly the process of trademark protection around the world.

All above-mentioned agreements will enter into force for the country on 17.06.2019, a date after which it will be possible for Canada to be designated in applications for international trademarks.

ISPs have a right to be compensated in some cases when providing information for copyright infringers

law-1991004_960_720The Supreme Court of Canada ruled in the case Rogers Communications v Voltage Pictures, where the point at issue is whether the internet service providers (ISPs) have to be compensated for their costs when they give information for potential infringers.

In the case at hand, movies owned by the US company Voltage were been illegally used by Rogers’s individual clients.

The Canadian internet provider agreed to disclose the required information for these persons but only against financial compensation. The US company disagreed.

According to the the Supreme Court’s decision in such cases, the ISP has right to receive a compensation for its reasonable costs but only in a case when the information is not required by the law.

For example, connecting the IP address of a customer to his real identity and submitting this information with the copyright holder is not covered by the law requirements.

Source: WIPR.

Canada Joins the Hague System

canada-1157521_960_720WIPO informs about the accession of Canada to the Hague Agreement for international registration of industrial designs. This makes Canada the 55th member state. The agreement will come into force for the country on 05.11.2018.

As it is well-known the Hague Agreement gives an opportunity for an easier filing of international applications for designs.

The concrete accession is one more step by Canada to facilitate all international applicants of intellectual property after the accession to the Madrid Protocol for international protection of trademarks.

A lawsuit awakens – a case regarding BB-8 robot from Star Wars


WIPR reports about a lawsuit which regards the BB-8 robot from “Star Wars Episode VII: The Force Awakens”.

The US company Sphero has developed a patented technology for user-controlled, self-propelled sphere robots, which has been selling by the company since 2011.

In 2014 Sphero started negotiations with Disney and receive a license to use the character of  BB-8 robot from the Star Wars series.

In 2016 the company discovered that the Canadian based toy manufacturer Spin Master had a prototype for the same toy robot that presumably used its technology. Based on this Sphero initiated a lawsuit in New York for patent infringement.

This case is interesting and indicative of the importance of intellectual property rights and their proper management. In the case at hand, we have copyrights over the original character from the movie, owned by Disney. Some trademarks and industrial designs can be added too.

On the other hand, we have a patent over the technology implemented in the end product.

Based on this bundle of rights, the relevant merchandising strategy can be very useful and profitable for the right holders giving them a serious market advantage over their competitors.


Captain Morgan prevailed over Admiral Nelson


The global drink producer Diageo won a lawsuit regarding its trademark Capitan Morgan in Canada.

The case at hand concerns a trademark Admiral Nelson used by Diageo’s competitor Heaven Hill for rum, which depicts a pirate image similar to that used by Diageo for its well-known trademark Capitan Morgan.

Diageo possessed a family of earlier trademarks for Capitan Morgan which are famous among the consumers.

The Canadian court ruled that the later mark is similar to that owned by Diageo. What’s more, the court considers that Heaven Hill’s trademark tries to mimic the well-known Capitan Morgan brand.

Based on the foregoing, the court ordered an injunction stopping the sale and distribution of Admiral Nelson’s rum in Canada and a destruction of all bottles bearing this brand.

Source: WIPR.