Canadian Trademark Law Changes: Are You Ready for the June 2019 Effective Date?
Key Changes in Registration, Nice Classification System, Application and Opposition Procedure
Recording of a 90-minute premium CLE webinar with Q&A
This CLE course will provide guidance on the Canadian trademark rules and amendments, critical changes in registration, classification, applications, oppositions, and more. The panel will discuss the implications for U.S. IP owners and will guide counsel operating under the new system to protect IP rights.
Outline
- Applications
- Use and revised basis of filing
- New administrative procedures
- Implications of adoption of Nice Classification (including cost)
- Examination
- Expanded coverage for nontraditional marks
- New examination for distinctiveness provisions
- Divisionals
- Allowance, term and renewal
- New allowance provisions
- Changes in registration term
- New renewal processes and procedures
- Letters of protest
- Opposition and Section 45 proceedings
- Process changes
- Registrar-initiated non-use proceedings
- New “bad faith” ground of opposition/expungement
- Madrid Protocol
- Processes and important differences
- Best practices
- Existing applications before advertisement
- Allowed applications
- New applications
- Renewals
Benefits
The panel will review these and other key issues:
- The adoption of the Nice Classification system and the Madrid Protocol
- Improved protection for nontraditional marks
- Potentially more rigorous examination for certain types of marks
- Enhanced customs, civil and criminal prohibitions against counterfeit products
Faculty
Stuart C. Ash
Partner
Gowling WLG
Mr. Ash is a leading practitioner in the field of trademarks and intellectual property transactions. He has over 20... | Read More
Mr. Ash is a leading practitioner in the field of trademarks and intellectual property transactions. He has over 20 years of experience assisting clients in registering, protecting and managing their trademarks in Canada and internationally. He also has extensive experience in advising clients on transactions that involve the sale, transfer and licensing of intellectual property, with a particular focus on trademark license agreements. He regularly works with clients across a wide range of industries, including local tech companies, global media and entertainment companies, and companies in the consumer goods, financial services, and food and health product industries.
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Reed W. Taubner
Partner
Gowling WLG
Mr. Taubner’s practice is centered on helping clients secure, enforce and commercialize their trademarks. He has... | Read More
Mr. Taubner’s practice is centered on helping clients secure, enforce and commercialize their trademarks. He has acted on behalf of many leading brand owners and has extensive experience helping clients manage global trademark and domain name portfolios. Mr. Taubner has represented clients operating in a variety of fields, including entertainment, technology and software, natural resources, and packaged consumer products. He guides clients through each distinct stage of a trademark's lifecycle, including conducting searches to clear new marks, filing trademark applications and guiding them past objections and challenges, through to maintaining and managing established portfolios.
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