Cognate's Trademark Blog

Article: Businesses should prepare for trademark trolls says Law Times article. –

Intellectual property lawyers expect to see an increase in trademark trolls or squatters after long-awaited amendments to the Trade-marks Act come into force early next year reports the Law Times in Canada

The amendments, which were approved in 2014, include: removing the requirement that an applicant prove they have been using their trademark before they file for registration in Canada; introducing registration fees for every classification; and broadening the definition of trademark to include non-traditional signs such as smells, tastes, textures and moving images, such as holograms.

The changes are meant to bring Canada’s laws more in line with international treaties such as the Nice Agreement Concerning the International Classification of Goods, the Singapore Treaty on the Law of Trademarks and the Madrid Protocol Concerning the International Registration of Marks. The federal government says these changes will simplify the registration process.

But intellectual property lawyers are concerned the new law will clutter the registry with applications for trademarks that could likely never be used.

“Today, legitimate brand owners can only get registrations for what they’re actually selling,” says Philip Lapin, partner at Smart & Biggar LLP and chairman of the firm’s trademark operations group. “In the new law, you’re going to have legitimate brand owners who are selling certain products, but they’re going to become more generous in that list of goods and services, so they’re going to cover a lot more than they’re actually going to sell. What’s going to happen is you’re going to have more marks coming into conflict with each other because there’s no longer a requirement of sales.”

Read the full article at

Share This Blog Post:

Leave a Comment