Young Practitioners Committee Update: Young Practitioners Consider Canada’s Revamped Trademark Regime

With the recent enactment of the new Canadian Trademarks Act, it was with great anticipation that many of Toronto, Canada’s young practitioners gathered to discuss the details and emerging ramifications of the new law. Fortunately, the general consensus was that trademark pandemonium had been avoided, as Canadian practitioners navigate the most sweeping changes to trademark law in years.

After welcoming remarks by Brigitte Chan and Nadya Romanova (Bereskin & Parr LLP, Canada), panelist Steven Kennedy (Cassels Brock & Blackwell LLP, Canada) highlighted INTA’s work in education, advocacy, and as a networking resource. Mr. Kennedy encouraged young practitioners to learn from other INTA members, and to “be one of the best by applying to membership on an INTA committee.” He also encouraged new professionals to develop their leadership potential by applying for one of two Tomorrow’s Leader Awards in 2020.

The panel touched upon a variety of topics, including the new invalidation and opposition grounds of bad faith, the cost-effectiveness of third-party notifications, the practicality of filing using the Madrid System, and even banana-flavored envelopes.

While the overall consensus was that the transition had been very smooth since the new Canadian Trademarks Act came into force in June, there were still certain ambiguities in the legislation to be addressed. A recurring theme was the importance of co-learning between legal practitioners and the Canadian Intellectual Property Office. It was put forth that ambiguities in the law ought to be seen as an opportunity for collaboration and education among and between agents and examiners to find practical solutions where no clear legislative answer presented itself.

“A ‘let’s help each other out’ approach might work,” said panelist Marion Bailey-Canham (Gowling WLG, Canada) referring to the sometimes confusing changes to prosecution procedures. Panelists acknowledged that agents and examiners alike are working out the kinks in the new regime, with moderator Lonnie Brodkin-Schneider (Miller Thomson LLP, Canada) noting, “We’re sort of learning and teaching each other as we go.” Mr. Kennedy took a more cautious approach, stating, “it’s not always easier to ask forgiveness than permission.”

The panel also addressed Increased costs for clients. In particular, speakers predicted that the importance of common law searches would increase significantly in light of the elimination of the use basis. “Really leverage your common law searches,” commented Mr. Kennedy. He noted that the Internet archive, corporate profile reports, and hiring search companies and private investigators to undertake a thorough examination of the marketplace were pricey, but often warranted, consequences of the imminent dearth of information on dates of first use.

The law’s inclusion of a new bad faith ground for opposition sparked a lively discussion on how the courts may handle such cases, including looking to previous 30(i) and the Canadian Internet Registration Authority’s decisions, as well as looking to foreign jurisdictions.

Panelists agreed that there had not been any decrease in domestic trademark filings despite Canada’s accession to the Madrid Protocol, noting that it was too early to tell whether or not a predicted uptick in oppositions would materialize.

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