Canada’s New Trademark Regime: The Practical, Tactical Guide to Navigating the Sweeping Changes

Date

Tuesday, April 30, 2019

Location

Osgoode Professional Development Centre
Toronto, Ontario


Overview

Get prepared for Canada's new trademark regime. 

The changes are dramatic with broad-reaching implications across many industries and practice areas, at both national and international levels. Whether you’re in law, business or finance, you need to know how to protect IP rights or avoid costly lawsuits and how to effectively adapt to the new legal reforms impacting on your Trademark practice.

This intensive OsgoodePD program was designed with industry and legal experts to provide you with a practical understanding of the impacts and the implementation required by the sweeping legal reforms under the new Trademark regime. Using real-world examples to work through some of the most pressing new practice challenges, you will be able to read from their playbook of best practices and obtain effective and strategic tactics you can put to immediate use. The interactive, problem-solving approach will enhance your understanding of crucial principles – including implementation – in a zero-consequence environment.  Topics include:

  • The New Trademark Regime – how did we get here and why is it important?
  • Understand the most pressing changes and implementation issues under the new regime, with both domestic and foreign considerations, and new practice directions, including:
    • Strategies for searching, filing and advising clients
    • A comprehensive overview of renewals, prosecutions, and oppositions
    • Enforcement and litigation tactics
    • Trademark refresher – how did we get here and why is it important?
    • How will brand clearance, filing, and prosecution differ in a “use-less” regime?
    • What to do about the “universal” Madrid Protocol and the new rules for Official Marks and Geographical Indications
    • How will prosecutions, oppositions, and Section 45 proceedings differ in the new regime?
    • Expert Roundtable: Impacts on brand strategy and portfolio management

11:30 am 
The New Rules for Official Marks + Geographical Indications May Cheng

  • Limitations on Official Marks – impact in clearance and prosecution
  • What is a Geographical Indication?
  • The Canada-European Union Comprehensive Economic and Trade Agreement (CETA)
  • Implementation
  • Schedule 6 Indications
  • The Prohibition
  • The Exceptions • Objections

2:00 pm
The New Opposition Grounds +  Section 45 Proceedings - Donna White

  •  Section 45 of the Trade-marks Act – opposition grounds under the new regime
  • “Bad faith” – how to prove? Onus?
  • Changes to proceedings – evidence, cross-examination, written arguments and hearing procedure
  • Section 45 proceedings – changes to procedure
  • Pilot project on Registrar-initiated Section 45 proceedings

For more information about the event, please click here.

CLE/CPD Credit Information

Ontario – Equality and Inclusion Professionalism - 0.25

Ontario – Professionalism - 0.75

Ontario – Substantive - 6

Speaking
Speaker

May Cheng

Partner, Intellectual Property

Speaker

Donna White

Ottawa Managing Partner