File early and watch closely as Canada’s IP rules change

Donna White

Apr 27, 2015

Janet Guttsman, Canadian Lawyer InHouse

(Recap)

Far-reaching changes to Canada’s intellectual property laws will force companies to keep an eagle eye on their trade-mark and patent applications, watching deadlines and actions by their competitors, filing before the new rules bite, and getting ready for a heftier bill.

“The fear is that there’s going to be a bit of a gold rush, a race to the trade-marks office by all of the ill-intentioned applicants,” says Donna White, a trade-mark expert who is the managing partner at the Ottawa office of Osler, Hoskin & Harcourt LLP.

“One challenge for applicants, for business owners, for professionals is just going to be to keep on top of the volume of applied-for marks and try to engage in some policing action to protect legitimate interests in marks. I have a very robust opposition practice now, I think it’s going to be much more robust.”

In a response to queries, Industry Canada says it is meeting the service standards outlined on the CIPO website, and notes these standards are reviewed annually.

But White says CIPO already appears to have stepped up the volume of doubtful case notices, where the agency notifies a trade-mark holder that it plans to approve an application that could be deemed confusingly similar to one they already hold. That gives the prior holder a chance to oppose the application, but also brings costs. Some opposition proceedings are resolved by settlement, but others can be complex matters involving boxes of evidence and hearings with lengthy cross-examinations. Costs, over several years, can exceed $25,000 or even $50,000.

“They are effectively trying to download cost, download diligence on business,” White says. “To download on business an increased burden of vigilance and an increased burden to oppose is very significant. A lot of businesses don’t have the resources, and even if you do have the resources it takes a long time to resolve these things.”

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