September 15, 2018
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CANADA: Trademark Trolls on the Rise
In 2014, Canada announced amendments to its trademark law, which included the removal of the requirement to claim or declare use of a mark prior to registration.
It was anticipated that this would lead to an influx of baseless “trolling” applications by entities seeking to secure rights in trademarks which they have no intention of using. While the implementation of the amendments is not anticipated to come into force until early 2019, data shows that such applications are already on the rise. In 2017, there was a sharp increase in the number of applications filed in all 45 Nice classes, evoking suspicion since it is unlikely that anyone has a genuine intention of using a trademark in association with every type of good and service.
As of December 2017, there were 427 “all-class” applications on the Canadian database, most of which appear to be held by known trademark trolls. Of those, only eight applications were filed in 2015 and 2016 combined. The remaining 419 applications were filed in 2017, representing a huge increase over the preceding years.
There are two reasons trolling activities have already started even though the amendments have not yet come into force.
First, once the amendments are implemented, it will no longer be necessary to file any declarations of use on pending applications. Second, under the changes, Canada will adopt a fee-per-class system. As a result, there are significant cost advantages to filing a multiclass application now rather than waiting until the amendments come into force.
It is important for companies to review their Canadian portfolios now to ensure that all important marks are protected, whether by filing new applications or maintaining existing registrations. It is also important to regularly monitor the Canadian Trademarks Office database to identify trolling applications as soon as possible, so that more options are available to defeat them.
Although every effort has been made to verify the accuracy of items in the INTA Bulletin, readers are urged to check independently on matters of specific concern or interest. Law & Practice updates are published without comment from INTA except where it has taken an official position.
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