Brand Finance has recently published its 2017 Global 500 Brand Rankings, where GOOGLE has overtaken APPLE in the number one spot for the world’s most valuable brand. APPLE’s five year dominance at the number one ranking follows a 27% fall in brand value in the past year. Bringing up third spot again this year is AMAZON.COM, which showed an impressive 53% growth in its brand value over the prior year. The top 10 includes a number of other top tech sector brands such as Microsoft, Samsung and Facebook. The list also includes a number of fast growing brands from China, including Alibaba, Tencent, WeChat, JD.com and Huawei.
The Canadian Intellectual Property Office (CIPO) has published a Fee-for-service proposal (the Proposal), seeking public input by July 5, 2016. As previously reported on this blog, the Canadian government significantly amended the Trade-marks Act (the Act) in 2014, in order for Canada to accede to the Singapore Treaty, the Nice Agreement and the Madrid Protocol. Those amendments have not yet come into force, however, pending the adoption of new Regulations on various matters, including fees. The Proposal is the first step in adopting new Regulations on the fees that will be applicable.
The two most significant changes in the Proposal are that:
– there will be one fee payable at the time an application is filed with CIPO, while the current requirement for payment of a registration fee will be done away with; and
– the application fee will include only one Nice Class of goods or services. Additional fees will be payable for each additional Class of goods/services that an applicant wishes to include in the application.
The proposed fees themselves will be in line with what applicants are currently used to in Canada, with reductions in some cases, particularly if the application covers only one Class of goods/services. Having said that, applications that contain more than two Classes of goods/services will face higher fees. Renewals will similarly be based on the principle of one fee for one Class of goods/services, with additional fees payable for additional Classes of goods/services. There will also be additional fees payable for applications and renewals that are filed on paper as opposed to online.
Also included in the Proposal are new proposed service standards for issuance of Filing Notices and processing of Renewal requests. The Renewal request processing standard will be different, depending on whether or not the goods/services have previously been grouped into Nice Classes.
CIPO has asked for public input on the Proposal by July 5, 2016 and depending on what complaints might be received by then, an independent advisory panel could be appointed by August 15, 2016. We will publish further posts regarding the status of the Proposal as matters progress.
The Canadian Intellectual Property Office has today posted proposed amendments to the Trade-marks Regulations at http://bit.ly/1xCOIEj The consultation period for these proposed amendments is from October 1 to November 30, 2014. As quoted in CIPO’s press release:
“The proposed regulatory amendments to the Trade-marks Regulations are required to enable Canada to accede to the Singapore Treaty on the Law of Trademarks, the Protocol relating to the Madrid Agreement concerning the International Registration of Marks and the Nice Agreement concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks.
The new regulations reflect the requirements of the trade-mark treaties and aim to increase legal certainty, streamline and clarify CIPO’s procedures, and align Canada’s trade-mark protection regime with international norms. The proposed amendments also include measures relating to the opposition regime and summary cancellation proceedings.”
A Private Members Bill was introduced in Canada’s federal parliament yesterday, which, if passed, will result in significant amendments to the official mark provisions in the Trade-marks Act. Section 9(1)(n)(iii) of that Act currently sets out a very simple procedure whereby public authorities can attain official mark status for virtually any mark that they have adopted and used. Once attained, official mark status prevents other parties from adopting, using or registering the same or a very similar mark in association with any wares (goods) or services, unless the public authority consents. Under the current Act, official mark requests cannot be opposed, there is no specified term or renewal process for such status and there is no process for expunging an official mark if it is no longer in use, unless the public authority voluntarily abandons that status.
Bill C-611 would, if passed, add a definition of public authority to the Act and set out an opposition procedure for third parties to challenge official mark requests. It would also provide for a 10 term for such status, with the ability to renew for further 10 year periods, each of which could also be opposed.
Time will tell if this Bill gains any traction. The Member who introduced the Bill is with the minority Liberal party. This Bill is unrelated to the wide ranging changes to the Act that are set out in Bill C-31.
This post is the first in a series discussing proposed changes to Canadian trademark law.
The Canadian Government dropped a bombshell on the trademark community on March 28, 2014, proposing massive changes to the Canadian Trade-marks Act (the Act), such changes being buried in a budget bill—namely, the Economic Action Plan 2014 Act, No. 1 (Bill C-31). The immediate response from practitioners and other stakeholders in the trademark space was one of consternation: the changes are extensive, and are being introduced with virtually no notice to stakeholders about these changes prior to the introduction of the bill.
According to Federal Government sources, the changes are intended to prepare Canada for accession to the Madrid Protocol, the Nice Agreement and the Singapore Treaty—and Canada has telegraphed its planned accession to these agreements for several years. However, many of the changes required for this purpose were already contained in Bill C-8, the Combating Counterfeit Products Act, which is expected to be enacted in the next few months. Bill C-31 contains many other proposed revisions to the Act that go far beyond what is required for accession to the above Treaties, and appear to be directed more at cost cutting for the benefit of the Federal Government.
Rather than simply listing some or all of the proposed changes, we have decided to examine, in some detail, the likely impact of the changes in a series of posts. In this first post, we examine some of the effects that the changes will have on the clearance of trademarks in Canada. In future posts we will examine the anticipated effects of Bill C-31 on Applications for Registration of trademarks in Canada, on Opposition practice, and on post-registration matters. We will attempt to do all of this from the perspective of prospective applicants, current applicants (where applications have been filed prior to Bill C-31 coming into force), existing registrants and other interested parties.
As we approach the opening ceremonies of the 2014 Olympic Winter Games in Sochi, the Canadian Olympic Committee (COC) has launched a lawsuit against outdoor apparel maker The North Face in the British Columbia Supreme Court, over allegations that it is infringing on Olympic trademarks through ambush marketing techniques.
The COC is seeking an injunction against The North Face and unspecified damages. Readers of this blog will recall that the 2010 Winter Olympic Games in Vancouver/Whistler featured many similar skirmishes and special legislation enacted to assist the COC in its ongoing battle against ambush marketing.
As reported in the Globe and Mail, the North Face is not a sponsor of the Olympic games, but introduced a new line of clothing in November 2013. The clothing line, originally launched as the Villagewear Collection, was renamed as the International Collection in response to complaints by the COC.
The clothing line, which includes jackets, toques and bags, is decorated with the colours and flags of various countries. This includes items bearing the Canadian flag which feature the colours red and white. Some items featured a patch with the symbol “RU 14” which, according to the COC, is a reference to the Winter Olympic games in Sochi, Russia. Other merchandise showed a world map with a red star where Sochi is located. A t-shirt featured the date of the opening ceremonies for the Games.
The Canadian Government tabled 5 intellectual law Treaties in the House of Commons on January 27, 2014. The purpose of this action is for Canada to harmonize its trademark, patent and industrial design laws with those of many other countries.
The Treaties tabled are as follows:
- the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks (“Madrid”),
- the Singapore Treaty on the Law of Trademarks (“Singapore”),
- the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks (“Nice”),
- the Geneva Act of the Hague Agreement Concerning the International Registration of Industrial Designs (“Hague”), and
- the Patent Law Treaty (“PLT”).
The first three Treaties in particular will have significant impacts on the procedures for trademark applications and registrations in Canada. The tabling of these Treaties is the first procedural step towards their ratification and implementation by the Government of Canada. Implementation will require amendments to Canada’s existing IP legislation, which could take a long time to be approved. The Canadian Intellectual Property Office published a paper in January of 2012 on the changes required to the Trade-marks Act in order for Canada to adhere to the Madrid Protocol. Until such amendments are approved by the Canadian Parliament, none of these Treaties will be binding in Canada.