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

When Should You Trademark?

by Allan Oziel on December 15, 2015 No comments

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.

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Allan OzielWhen Should You Trademark?

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?

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

Jeremy Shoots for Linsanity

by Allan Oziel on May 25, 2012 No comments

Jeremy Lin became an international sensation when he became the New York Knick’s starting point guard in early 2011. During 12 starts before the All-Star break, Lin averaged a ridiculous 22.5 points and 8.7 assists, leading the Knicks (playing mostly without star Carmelo Anothony) to a 9-3 record during that time. His success led to many media outlets referring to the Jeremy Lin phenomenon as “Linsanity”, clearly a play on the phenomenon known as “Vinsanity”, which was used to describe the attention Vince Carter received when he was playing at an incredible level for the Toronto Raptors. Lin, Harvard graduate, was quick to understand his limitless marketing potential. Lin was not only the starting point for the world’s largest market in New York, he is also of Asian-American descent, a devout Christian, and by all accounts, a pretty nice dude.

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Allan OzielJeremy Shoots for Linsanity