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Trolls on the Bridge to Your Brand
The Medium

Canada’s Trade-marks Act has been radically amended, with those changes announced by the Canadian government to come into effect in “early 2019”.  But the effect of those upcoming changes for brand owners is already happening, and you should prepare for a more aggressive approach to protecting your brand and registered trademarks.

The “trolls” emerging from under the trademark bridge are the same type of sketchy entrepreneurs who pirated domain names of established brands in the early dot-com days, solely to hold the domain for ransom from the legitimate brand owner. The Trade-marks Act changes introduce a similar “rush to registration” opportunity that will also attract troll-like behaviour - the misshapen miscreants will file and register a trademark for your brand, or one that is confusing with your brand, to try to force you to pay a troll-toll to protect your brand rights.

The specific problematic change to the Trade-marks Act is the elimination of the current requirement for every applicant to actually be selling a product or service in association with their applied-for trademark, before a registration will be issued for their trademark. Eliminating this requirement to show “use” of the trademark before obtaining a registration, means many thousands of non-legitimate “troll” trademarks will be filed and registered in the coming years. Publicly available data from the Canadian Intellectual Property Office (CIPO) trademarks database shows that the number of characteristically troll-like trademark applications greatly increased in 2017 compared to past years. Even though these applications can’t be registered now, the CIPO trademark application process is extremely slow, currently taking 15 -24 months from filing of application to registration. That means these early-bird bad apples know they will still have a live application when the amendments take effect in 2019, and they will automatically receive a registered trademark without the need to have any legitimate associated business or products. (Insert sound of evil laughter here.)

How to slay these foul creatures that would take your fair brand captive and demand your gold for its return? Firstly, if you have not already applied for federal trademark protection for valuable brands you are using, or that you intend to adopt in the near future, you should do so as soon as possible. Having your own registration will greatly help to prevent a troll from registering a confusingly similar trademark, giving you the higher ground from which to defend your rights.

However, even with the shield of a trademark registration, you must keep your guard up and your sword at the ready, as the CIPO examination process will not be especially troll-proof. The second important step businesses operating in Canada should take is to start monitoring all new trademark applications at CIPO. This will allow you to take steps to oppose a trademark filing by any ill-intentioned ogre at the earliest possible opportunity.

Such monitoring is not difficult, nor expensive – commercial watching services can be obtained for as little as a few hundred dollars per year, and any alerts can be quickly assessed by your trademark agent or your own trademark administrator to identify the approach of any villainous cave dwellers. This kind of monitoring is valuable not only to head off the trolls – it will also alert you to potentially competing trademarks being filed by your competitors. (Who you may also regard as villainous cave-dwellers.)

This elimination of the “use” requirement for a trademark registration is only one aspect of the many changes to the Canadian Trade-marks Act and trademark system (they are even removing the hyphen from “the Trade-marks Act”!), so look forward to further trademark tidings from your faithful servants here at Field Law.

Contact our Trademarks Group to discuss how to protect your brand in advance of the upcoming amendments to Canada’s Trade-marks Act.