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EVERYTHING YOU NEED TO KNOW
ABOUT TM PROTECTION
NORTH OF THE BORDER
Wednesday, October 5, 2016
1:00 pm - 2:00 pm
1
Meet Your Moderators
Nehal Madhani
nehal@altlegal.com
Hannah Samendinger
hannah@altlegal.com
2
How To Interact Today
Raise your virtual hand to ask an
audio question at the end
Type your comments and
questions here ...
3
Our First Presenter
John Lee
Lee IPT Law
john@leeipt.com
4
Agenda
Overview of Canadian Trademarks
Canadian Records in Alt Legal
5
Our Key Message
With changes to the law pending, now is a
good time to help your client’s protect their
trademark rights...
6
Who Will Benefit The Most From This Hour?
Focus is on providing a practical overview for
US Trademark Professionals.
Inde...
7
Webinar Goals
Understand the advantageous of registering
in Canada
Understand the process and costs of
registration
See ...
8
Why Canada Matters
Common market
Limits of “Making Known” in Canada
Registration gives best protection
Change in Canadia...
Protecting your client’s rights in Canada
can make you look like a genius.
9
10
Trademarks In Canada
Business Name & Trade Names
Common Law Trademarks
Registered Trademarks
Certification Marks
Industr...
11
Official Marks
Official Marks are “UberMarks” for
“Public Authorities”
12
Registration Process
1. Filing
3. Approval & Advertisement
2. Examination
4. Opposition Proceedings
5. Allowance & Regi...
13
Filing Part 1
An application can be made with one or more
claims:
• Intent to Use in Canada
• Use in Canada
• Making Kn...
14
Filing Part 2
Goods & Services Descriptions
• “Ordinary Commercial Terms”
• Canada is moving to a Class system
15
Examination
a. Formalities
b. Entitlement
16
Approval & Advertisement
Two-month window for Opposition after
publication in Trademarks Journal
17
Opposition Proceedings
Canadian Oppositions are typically less
expensive than US Oppositions.
90% of Oppositions settle
18
Allowance & Registration
Presently: 15 years
No interim Declarations of Use similarly to s. 8 & 15
Soon: 10 years
19
Costs of a Typical Application
Government Fees
@ Filing CAD $250
@ Registration CAD $250
Legal Fees vary but typically
...
20
Post Registration Life
Non-use and cancellation proceedings
Incontestability* after 5 years
21
Changes On The Horizon
New and expanded definition of “Trademark”
10-year registration Term
Classes for goods and servic...
22
Recommendations
• File now and take advantage of Use and
Registration Abroad.
• File now to get establish priority and
...
Canadian Trademark Records
in Alt Legal
Questions?
nehal@altlegal.com
hannah@altlegal.com
john@leeipt.com
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Trademark Protection in Canada

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Alt Legal presents a webinar explaining how U.S. intellectual property professionals can extend their practices and offer additional protections for their clients.

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Trademark Protection in Canada

  1. 1. EVERYTHING YOU NEED TO KNOW ABOUT TM PROTECTION NORTH OF THE BORDER Wednesday, October 5, 2016 1:00 pm - 2:00 pm
  2. 2. 1 Meet Your Moderators Nehal Madhani nehal@altlegal.com Hannah Samendinger hannah@altlegal.com
  3. 3. 2 How To Interact Today Raise your virtual hand to ask an audio question at the end Type your comments and questions here throughout
  4. 4. 3 Our First Presenter John Lee Lee IPT Law john@leeipt.com
  5. 5. 4 Agenda Overview of Canadian Trademarks Canadian Records in Alt Legal
  6. 6. 5 Our Key Message With changes to the law pending, now is a good time to help your client’s protect their trademark rights in Canada. Alt Legal introduces Canadian Intellectual Property Office integration.
  7. 7. 6 Who Will Benefit The Most From This Hour? Focus is on providing a practical overview for US Trademark Professionals. Independent and small firm US trademark practitioners with clients that have US trademark rights, who may or may not have service Canada or sell goods in Canada.
  8. 8. 7 Webinar Goals Understand the advantageous of registering in Canada Understand the process and costs of registration See how Canadian records are tracked in Alt Legal See how you may confidently and competently advise clients with an integrated solution
  9. 9. 8 Why Canada Matters Common market Limits of “Making Known” in Canada Registration gives best protection Change in Canadian trademark law pending
  10. 10. Protecting your client’s rights in Canada can make you look like a genius. 9
  11. 11. 10 Trademarks In Canada Business Name & Trade Names Common Law Trademarks Registered Trademarks Certification Marks Industrial Designs Official Marks
  12. 12. 11 Official Marks Official Marks are “UberMarks” for “Public Authorities”
  13. 13. 12 Registration Process 1. Filing 3. Approval & Advertisement 2. Examination 4. Opposition Proceedings 5. Allowance & Registration 6. Post-Registration Life
  14. 14. 13 Filing Part 1 An application can be made with one or more claims: • Intent to Use in Canada • Use in Canada • Making Known • Use & Registration Abroad
  15. 15. 14 Filing Part 2 Goods & Services Descriptions • “Ordinary Commercial Terms” • Canada is moving to a Class system
  16. 16. 15 Examination a. Formalities b. Entitlement
  17. 17. 16 Approval & Advertisement Two-month window for Opposition after publication in Trademarks Journal
  18. 18. 17 Opposition Proceedings Canadian Oppositions are typically less expensive than US Oppositions. 90% of Oppositions settle
  19. 19. 18 Allowance & Registration Presently: 15 years No interim Declarations of Use similarly to s. 8 & 15 Soon: 10 years
  20. 20. 19 Costs of a Typical Application Government Fees @ Filing CAD $250 @ Registration CAD $250 Legal Fees vary but typically around CAD $1,400 to $1,600 but can be higher owing to various issues Trend towards fixed fees. (Ask me!)
  21. 21. 20 Post Registration Life Non-use and cancellation proceedings Incontestability* after 5 years
  22. 22. 21 Changes On The Horizon New and expanded definition of “Trademark” 10-year registration Term Classes for goods and services *No Use required as a condition for Registration*
  23. 23. 22 Recommendations • File now and take advantage of Use and Registration Abroad. • File now to get establish priority and entitlement. • There is uncertainty about trademark squatting and increased opposition activity is expected. • Reach out to clients to discuss Canadian trademark protection strategies.
  24. 24. Canadian Trademark Records in Alt Legal
  25. 25. Questions? nehal@altlegal.com hannah@altlegal.com john@leeipt.com

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