The Trademark Gold Rush

By Jeff  |  June 25, 2019

This isn’t a standard Helium blog post. This is extremely important information that all Canadian businesses should know.

I was recently at an open house for the newest band of TDS Law and had an interesting chat with one of the lawyers there. On June 19th an update passed to Canadian trademark law that make things a bit more complicated, and a lot less favourable for Canadian businesses that don’t have their brand trademarked.

Historically, to prove ownership of a brand identity (ie. a logo), all you had to do was prove that you had been using it before someone else started. Trademarks were reserved for big companies that were doing global business and had cash to burn. This is no longer the case.

In similar fashion to how people started registering copious amounts of domains at the birth of the internet; holding them hostage for big dollars to the brands that eventually picked up on the fact that websites were in fact a big deal, we might see something similar with logo trademarks. A non-trademarked logo could in fact be stolen, registered, and sold back to the business that rightfully created it.

One of the biggest changes to the law that makes this possible is stated perfectly by Silvia De Sousa of TDS. In a post made to their blog, Silvia states “Those applying for trademark registration will no longer be required to identify the date on which they first used the trademark or state that they intend to use the trademark. Dropping this requirement will make it easier for trademark trolls to register your trademark with the intent to exploit you and your business. To get your trademark “back” will be costly as you may need to consider litigation, an opposition or an expungement.

Like it or not, this is legal now and we need to respond accordingly. I reached out to Scott Hoeppner (no relation) from TDS for some additional information and here’s what he said.

“Canada will now also be participating in the Madrid Protocol, which allows registration of a trademark in up to one hundred and twenty countries.  However, registering pursuant to the Madrid Protocol, while carrying some real advantages, also contains some potential draw backs and so should be discussed with legal counsel before registering. TDS has a team of lawyers who are well versed in these matters such as Silvia De Sousa, Elmer Gomes and Danielle Grzybowski.”

If using legal counsel, you should expect fees and disbursements of at least $3000 to register your trademark. There are various classes available, and you may want to register in multiple classes, with each one having its own associated fee. The costs could creep up pretty high, pretty fast. In my opinion, it’s extremely important to talk to a lawyer specializing in intellectual property law before making any decisions.

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