Current Insights

What is the final deadline to enter the national phase in Canada under the PCT? (42 months)

It is possible to make a late national phase entry of a PCT application in Canada up to 12 months after the 30 month deadline.  This is possible by reinstating the application which is deemed to be abandoned as of the 30 month national phase entry deadline.  As such, it is possible to enter the national phase in Canada up to 42 months from the priority date .  One of the things to be aware of is that as the deadline for entry is stretched out to 42 months there can be multiple reinstatement or late entry fees payable – for example maintenance fees may be due at the time of entry since they are due annually starting on the second anniversary of the international filing date.  We can provide further information and definitive advice on this should you have a situation arise.

IP legal considerations when entering the Canadian market

Cory Furman spoke as a panelist at the Global Intellectual Property Law Symposium hosted by Gearhart Law in New Jersey and New York in the Spring of 2015.  His panel comments outline the Canadian legal environment for American SME’s and other companies considering entering the Canadian marketplace and the IP regime here.  The following link connects to a Youtube video of his remarks.

Public Authority Trademarks in Canada – Legislative Reform

On June 9, 2014 Bill C-611 (a private members bill) was put before Parliament with the intention of amending section 9 of the Trademarks Act,which deals with official marks. Section 9, and official mark protection thereunder, is the primary purview of governments and governmental authorities within Canada allowing for streamlined access to broader protection for public authorities and official marks than is available in most circumstances to regular trademark applicants. Currently, official marks are not subject to any opposition proceedings or renewal terms, and do not have to meet many of the typical requirements for trademark registration under the Act. The superior rights which attach to these types of advertisements and official marks have been attractive to those public authorities qualifying for their use in the past, but are somewhat idiosyncratic in Canadian trademark law as well as internationally, for the large majority of parties who cannot use them.

In 2013, the Standing Committee on Industry, Science and Technology recommended that the Government introduce amendments to the portions of the Trademarks Actdealing with official marks so as to “avoid stifling innovation and distorting markets”. Halifax MP Geoff Regan tabled his private member’s bill, the purpose of which “is to clarify what constitutes a public authority under section 9, as well as to create a review and objection process to ensure public marks do not unduly restrict the market”. The specific changes proposed by Bill C-611 are as follows:

  • Added definition of “public authority” – the term is not defined under the current legislation.
  • All public authority marks will be subject to a 10-year term, with the option to renew for a further 10-years, subject to a further opposition period.
  • The Bill’s transitional provisions state that all existing marks as of the coming into force of the amendments would be subject to an opposition period as well as a 10-year term. spike in opposition proceedings as a result.
  • Added objection process– within 3 months of the registrar giving public notice of the adoption and use of a mark by a public authority, any interested person can file an objection on the basis of:
    • lack of use;
    • the body is not actually a public authority;
    • the mark is confusing with a previously registered mark, or is identical or nearly identical to a registered trademark and may significantly undermine the ability of the trademark owner to fully exploit the mark;
    • the mark is a generic term; or
    • the granting of the mark does not serve the public interest.

Section 9 will continue to exist in its current form for the foreseeable future, as it was largely unaffected by the massive overhaul of the Trademarks Act in Bill C-31 earlier this year. However, regardless of the outcome of this particular bill, the text of it provides a catalyst for ongoing discussion around the future and scope of official marks in Canada, both for public authorities enjoying and urging their continued use, and other brand owners and parties in the market who wish to level the playing field by curtailing or eliminating their use.

Canadian government introduces new anti-counterfeiting measures

On March 1, 2013, the Government of Canada introduced new anti-counterfeiting legislation in draft form for consideration to Parliament.  The Combatting Counterfeit Products Act, if implemented in substantially its present form, would amend a large number of provisions in the Copyright Act and Trademarks Act in  Canada to provide enhanced counterfeiting enforcement mechanisms and increased penalties for parties liable for the distribution of counterfeit goods in Canada.  This legislation should be welcomed by international brand holders, who have in the past been critical of the available enforcement mechanisms available in Canada, as too lax or cumbersome.

One of the primary provisions in this Act as presented is the creation of enhanced customs and border enforcement and seizure mechanisms, which would allow law enforcement officials greater ability to seize or detain suspected infringing goods.