Trademarks: Trolls at the gate — Lexpert

Donna White

Oct. 3, 2016

Sweeping changes to trademark legislations and regulations implemented by Stephen Harper’s Conservative government have left the door open for anyone to register a mark, which could create its own set of issues, according to an article in Lexpert. In his article, Julius Melnitzer explains the trickle-down effect of Bill C-31, which eliminated previous use of a trademark as a pre-requisite for registration. This means a trademark can be registered whether for commercial use or not. This is where concerns about trademark trolls arise, explains Donna White, Managing Partner of Osler’s Ottawa office and a partner in Osler's National Intellectual Property Group. 

“The real fear about abolition of use as a requirement of registration is that it will create opportunities for trademark trafficking,” Donna tells Lexpert. “It also shifts the costs of policing registration from government to business, which will now have to spend significant sums to keep confusingly similar brands off the market.”

The article also explains how this prior use amendment will raise the cost of trademark protection for Canadian businesses, and describes how opposing trademark applications can become a costly endeavour.

For more information, read Julius Melnitzer’s full article “Trademarks: Trolls at the Gate” in Lexpert.