Intellectual Property

Canadian Trademark Developments and Trends – The 2018 IP Canada Report

by Allan Oziel on February 14, 2019 No comments

The Canadian Intellectual Property Office (CIPO) recently published its 2018 IP Canada Report summarizing trends in intellectual property usage both in Canada and by Canadians globally. Based on data gathered from CIPO and from the World Intellectual Property Organization (WIPO), the report discusses statistics relating to patents, trademarks, and industrial designs.

Some of the report’s central findings and key predictions for trademarks are summarized below:

  • Trademark activity is growing

Trademark applications in Canada have grown steadily over the past ten years, such that 29% more applications were filed in 2017 compared to 2008. In 2017, CIPO received 58,913 trademark applications, of which 56% were from non-residents. Canada is the first country of origin for trademarks filed with CIPO, representing 44% of the total applications received in 2017, followed by the United States (29%), China (4%), United Kingdom (3%) and Germany (3%).

  • Top international destinations for Canadian applicants

The United States is the top foreign destination for trademark applications by Canadians, with 7,889 filings in 2016. China and the European Union Intellectual Property Office (EUIPO) are also significant destinations for Canadian applicants, representing 17% and 7% of the share of all Canadian international trademark applications, respectively.

  • Implementation of the Madrid Protocol

With the implementation of the Madrid Protocol in June 2019, applicants will be able to apply for trademarks in multiple jurisdictions with a single application via the Madrid system. The report predicts that, in 8-10 years, 25% of all filings abroad by Canadians will use the Madrid system. Nonetheless, a higher market diversification is not expected as initial studies suggest that Canadian applicants will seek protection in four countries, on average.

The report shows that Canada continues to grow both as a filing destination and as a country of origin for trademarks. This growth reflects the need for business to protect their brand identities in the global marketplace.

Written by Thassiane Gossler and Allan Oziel

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Allan OzielCanadian Trademark Developments and Trends – The 2018 IP Canada Report

Trademarks Abroad: The Madrid System and Canada

by Kristine on July 27, 2017 No comments

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.

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KristineTrademarks Abroad: The Madrid System and Canada

Navigating Video Game Licensing

by Allan Oziel on February 23, 2016 No comments

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.

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Allan OzielNavigating Video Game Licensing

Bill C-56 – Combatting Counterfeit Products Act

by Allan Oziel on March 18, 2013 No comments

Whether strolling down Canal Street in New York City or searching for a bargain on Craigslist, many consumers have come across seemingly authentic luxury goods at a fraction of the original cost. As the saying goes, “if it is too good to be true, it likely is”. The knock-off Chanel purse or fake Beats by Dre headphones may look and feel real, but they are often made with inferior materials and break down relatively quickly. As such, counterfeit products that are passed-off as real can affect consumer confidence in both the primary and resale markets.

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Allan OzielBill C-56 – Combatting Counterfeit Products Act

Expunging a Registered Trade-Mark that is Not In Use

by Allan Oziel on February 22, 2013 No comments

Under the Trade-Marks Act (“Act”), registrants must “use” their trade-mark or risk expungement (losing their registration). Under Section 4 of the Act, use is essentially deemed to include use on the packaging/marketing of wares at the time of transfer and when it is displayed and advertised in the performance of services, whether by the registrant or a licensee under Section 50 of the Act.

The purpose of this is to ensure that the Trade-Mark Registrar is clean from trade-marks that have fallen into disuse. It is not the intention of the Canadian Intellectual Property Office to allow registrants to “hold onto” trade-marks.

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Allan OzielExpunging a Registered Trade-Mark that is Not In Use

What is a trademark?

by Allan Oziel on August 28, 2012 No comments

A trade-mark is a word or marking that is intended to distinguish the wares or services of one business from those of others. Typically a trade-mark is a word, design or combination of these elements. However, certain “distinguishing guises” (uniquely shaped goods or containers) and sounds can be trade-marked.

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Allan OzielWhat is a trademark?

Trade Secrets and Confidential Information

by Allan Oziel on August 16, 2012 No comments

To keep a competitive advantage, businesses may maintain the secrecy of valuable information that cannot otherwise be protected by intellectual property rights. Trade secrets may include ideas, formulas, designs, methodologies, processes, financial matters, pricing policies, business plans, salaries or other compilations of information. To be considered a trade secret, the information must be used in business, not be known to the public, must confer some benefit to its holder and must be the subject of reasonable efforts to maintain its secrecy.

In Canada, trade secrets or confidential information that cannot be otherwise protected by intellectual property rights (such as patents or copyright) can be protected by a duty of confidence recognized by common law. The recipient of a trade secret or confidential information is under a duty of confidence when that person received notice, or has agreed, that the information is confidential. To evidence this notice or agreement, businesses should mark all confidential information as such and require that all recipients of confidential information enter into a non-disclosure agreement (NDA) prior to disclosure. A non-disclosure agreement (also referred to as a confidentiality agreement) is a written agreement where one party agrees to disclose confidential information on the condition that the other party limits their use and any further disclosure of the information to preserve the confidential nature of the information disclosed. Implementing non-disclosure agreements may be necessary when obtaining funding from investors or working with manufacturers, designers, distributors, consultants and independent contracts. Despite a tendency to use “standard” agreements, non-disclosure agreements should be tailored to the particular circumstances of each matter.

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Allan OzielTrade Secrets and Confidential Information

Copyright Modernization Act Receives Royal Assent

by Allan Oziel on July 10, 2012 No comments

After several unsuccessful attempts to update the Copyright Act to deal with modern technology concerns, Bill C-11 “An Act to Amend the Copyright Act” (also known as the Copyright Modernization Act) received Royal Assent on June 29, 2012.

In an effort to align Canadian law with International Treaties, the Copyright Modernization Act balances the rights of both copyright holders and users.

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Allan OzielCopyright Modernization Act Receives Royal Assent

All Around Bad Night: Kevin Durant Loses Finals, Sued for “Durantula” Nickname

by Allan Oziel on June 22, 2012 No comments

Last night, in Game 5 of the NBA Finals, LeBron James and the Miami Heat delivered on their promise to bring home a championship by closing out the Oklahoma City Thunder, 121-106, in Game 5. LeBron was brilliant throughout the regular season, playoffs and especially the finals. In Game 5, LeBron registered a triple double, with 26 points, 13 assists and 11 rebounds, clearly cementing himself as the best player in the world and perhaps, one of the greatest players in the history of basketball.

While last night was a coronation for “King James”, it was an all around bad night for Kevin Durant. Durant, a 3-time scoring champ, led his team with 32 points, but also had 7 turnovers that contributed to Miami’s romp of OKC. While Durant may not affect the game in as many ways as LeBron, he is 23 years old, a deadly scorer and will only get better. I suspect we may see these two superstars square off in the finals several times within the next few years.

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Allan OzielAll Around Bad Night: Kevin Durant Loses Finals, Sued for “Durantula” Nickname

Just Like Ibaka! Supreme Court Rejects “Let’s Go Thunder” Copyright Claim

by Allan Oziel on May 30, 2012 No comments

Last night, the hyper-athletic and talented Oklahoma City Thunder fell prey to the majestic passing and wizardry of Tony Parker and the San Antonio Spurs to drop to 0-2 in the NBA’s Western Conference Finals. The Thunder will return home on Thursday for Game 3 in OKC where they will rely on their passionate home crowd to will them to victory in what is surely a must win situation for them.

In addition to the usual scoring from their big-3 of Kevin Durant, Russell Westbrook and James Harden, the Thunder will need stellar defence against Tim Duncan by the combination of Serge Ibaka and the scowl-faced Kendrick Perkins.

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Allan OzielJust Like Ibaka! Supreme Court Rejects “Let’s Go Thunder” Copyright Claim