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Canadian "Trademark Trolls" on the Rise

January 10, 2019
Startup Advisory

Silhouette of man in front of monitorIn 2014, Canada announced significant changes to its trademark law. The Canadian government recently announced that the new regime will come into force, along with new supporting regulations and practice notices, on June 17, 2019.

Of most significant concern is Canada's elimination of the "use" requirement for registration of Canadian trademarks. Under Canada's current system, Canadian trademark applicants must indicate whether the trademark to be registered has been used in Canada and if so, the date of first use. In order to rely on a foreign registration (including United States trademark registrations), the trademark has to be in use somewhere. After June 17, 2019, no use information will be required and the following changes in the law will be enacted:

  • Actual or intended use will no longer need to be specified at the time of filing.
  • It will no longer be possible to file an application based on use and registration abroad.
  • A Declaration of Use will no longer be required to advance to registration (applies to both new and pending applications as of June 17, 2019).

The elimination of the use requirement is leading to an influx of "trolling" applications in Canada by entities seeking to secure rights in trademarks which they have no intention of using.

These “trademark trolls” are already on the rise in Canada as a result of the pending elimination of the use requirement and are potentially a threat to true brand owners. In view of the elimination of the use requirement, we recommend brand owners file promptly and broadly to protect their trademarks in Canada. For questions regarding filing trademarks in Canada, please contact one of Varnum's Intellectual Property attorneys.

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