Trademark Research and Protection Services
Various amendments to the Trademarks Act (RSC, 1985, c. T-13) (the “Act”) came into force in the summer of 2019. One of these changes is such that those applicants filing for a Canadian trademark registration are no longer required to declare that they have actual use of the trademark in Canada before the registration can be issued. Because applicants will no longer need to show proof of use when filing, “squatters” and others with ill intent can more easily register brands in Canada that do not belong to them. Squatters do this so that they can essentially ransom the marks to the actual brand owner if, and when, they seek to register in Canada, while others may simply seek to profit off of the distribution of goods with another’s mark displayed. Accordingly, brand owners should move swiftly to file their applications to register all of their trademarks in Canada.
Another change that came into effect is the ratification and implementation of the Madrid Protocol (concerning the International Registration of Marks). The Madrid Protocol is an international system that allows applicants to file a single application for the registration of a trademark with the World Intellectual Property Organization and designate multiple other member countries – resulting in an “international registration”. This effectively means that applicants from around the world can apply for protection of a trademark in up to 125 countries in one single application.
Third Party Trademark Research and Protection Services
Given the changes to the Act discussed above, and the rapidly evolving trademark landscape, brand owners, both domestic and international, should consider engaging companies that offer trademark research and protection services. These service providers generally offer a wide range of services that can be tailored for the individual needs and concerns of brand owners, including monitoring and notification services.
Third party trademark research and protection services generally include:
- Worldwide trademark monitoring (the service provider will provide reporting on word and design marks internationally);
- Worldwide ownership monitoring (the service provider will report on competitors’ activities, their use of trademarks, and monitor and report on the use of the client’s own trademarks worldwide);
- USPTO Pending Application monitoring (the service provider will compare the client’s pending application against newly filed applications on a weekly basis, and notify the client of any potential conflicts before the client’s trademark is published for opposition);
- USPTO Official Gazette monitoring (the service provider will monitor the newly published USPTO trademark applications and identify the client of any potential conflicts);
- Domain Name monitoring (the service provider will monitoring and reporting on any relevant domain names as they become available); and
- Auction monitoring (the service provider will monitor the sale of the client’s branded goods on eBay, Alibaba and Taobao auction sites globally, in order to identify potential counterfeiters).
Trademarks are some of the most valuable intellectual property that businesses, especially franchisors, may own. At Sotos LLP, we have acted for hundreds of trademark owners in every aspect of protecting their intellectual property for more than 40 years. We have extensive knowledge of intellectual property issues, and regularly act in the procurement and licensing of trademarks, as well as in defending our clients’ trademarks rights and opposing trademark applications on behalf of our clients.