With growing access to foreign markets, it’s no surprise that more Canadian businesses are looking to protect their trademarks abroad. In 2014, adopting an international trademark registration system was a distant and abstract concept. Now, following a series of changes to Canadian trademark laws, the Madrid Protocol is closer than ever to being implemented.
With increased access to foreign trademark protection on the horizon for Canadian businesses, what is the Madrid Protocol and how will it affect your business?
An International One-Stop Shop
The concept of the Madrid Protocol is simple: a business from a member nation can file one application and pay one set of fees to protect and manage a trademark in one or more of the 98 member nations through a centralized system overseen by WIPO.
Take for example a business in the United States that wants to expand its reach into the Singaporean market. The business has two marks: one is registered and the other is in the early stages of the U.S. trademark application process. Both of these can be submitted through the U.S. trademark office to the World Intellectual Property Office (WIPO).
WIPO reviews, approves, and records both applications. The U.S. business receives a certificate of the international registration for both marks. From there, the Singaporean trademark office has 12-18 months to review and approve or reject the applications. If the mark is accepted in Singapore, it is the same as if it had been registered directly with the Singaporean office.
Earlier in December, I posted a link to an article I wrote for Chinese News Group which was translated into Chinese. The following is the full article in English.
According to Tencent, China’s biggest social network and online entertainment company, its flagship live chat, calling and social media application is used by over a billion people worldwide. In Canada, the app is particularly popular within Asian communities.
Nerd Alert: I was into video games since as early as I can remember. I first remember playing early games long Pong, Breakout and Donkey Kong on the Atari 2600. I then remember when my dad got my brother and I the first generation Nintendo. We were lucky enough to have many games including all of the Mario Brothers games, Ice Hockey, Excite Bike, Zelda, Tetris, etc.
Through the years, my brothers and I ran through many consoles including the Sega Genesis, Playstation, Xbox, Xbox 360 and finally the Playstation 3. I also played video games on the computer! As my brothers and I got older, we were mostly into sports games but I also loved third person shooter games.
Despite loving games, I never thought I would have the opportunity to have my work intersect with the video game industry. Luckily, given my line of work, I have had the great fortune of being able to negotiate some very interesting video game licenses.
WeChat is an extremely popular social media application in Asia and in asian communities in Canada, however, there is a growing number of users who are falling victim to anonymous defamation on the social media platform. I wrote about the issues and potential strategies for those who have been defamed for the Chinese Newsgroup newspaper and website.
The article has been translated to Chinese and can be viewed by clicking here. An English version of the Article will be posted on the Oziel Law Blog shortly.
I get asked this question all of the time. It’s a loaded question.
Back in an earlier blog post, I explained what a trademark is. Essentially, a trademark could be a word, slogan, design or even a sound that distinguishes the goods and services of one business from those of other businesses. The reason why the question is loaded is because the common law affords certain rights to those who “use” a mark and have “become known” for that mark in relation to goods and services. Therefore, even without applying for a registered trademark, a user of such marks will be afforded some rights.
I was recently asked to prepare Terms and Conditions for a Hackathon. For those who don’t know, a Hackathon is basically a competition/event where the participants are asked to develop a piece of software under certain conditions (often within a one or two day period) that meets the theme of the competition.
Sometimes the Hackathon is sponsored with the intent that the entry will be owned or licensed by the sponsor.
When preparing Hackathon terms, you will want to make sure that you address the following:
When drafting Shareholders Agreements with clients, we often explore whether the corporation should consider taking out Key Person Insurance or whether we should create a requirement to obtain this type of insurance in the Shareholders Agreement.
I often get calls from clients asking what they require in order to do business in a particular province. Often these questions come from international clients who wish to do business in Canada, but we also have questions from businesses who operate in a particular province but wish to “do business” in another province.
Unfortunately, the quick answer is the dreaded “it depends”. Typically, to “carry on business” in a particular province in Canada, you need to be incorporated in that province or have a business license to operate in that province. If your company is already incorporated in a different jurisdiction (another province or foreign country), then you would need an Extra-Provincial License.
But what is considered “carrying on business”? Each province has legislation (whether their corporate statute or a specific extra-provincial corporations statute) that provides a definition of what is considered “doing business”.