SIGNIFICANT Changes to Canada’s Trade-marks Regime

Canada’s trade-mark regime was officially given a maaaaaajor dose of botox on June 19, when proposed changes to trade-marks legislation was given royal assent. Whereas some revisions were expected, others have brand owners and their trusty trade-mark lawyers up in arms.

First, let’s go over the expected changes. Canada is now a signatory to a series of international trade-mark treaties, Madrid, Nice and Singapore. This brings Canada into alignment with the global system and, frankly, makes sense if Canada is going to continue to be a player in the global marketplace.

The good news? What qualifies as a trade-mark is now expanded. In addition, the registration process will be streamlined.

The unfortunate news? Trade-mark applicants will now be required to adhere to a classification system with respect to their wares and services – this may increase costs as there will likely be a “per class” government fee.

The bad news? Canada is no longer going to be a use-based jurisdiction. Historically, any brand owner is required to use the trade-mark in Canada in order to obtain trade-mark rights. This has been foundational to Canadian brand protection. The impending revisions to the legislation do away with this concept. Thus, there is no longer a use requirement in order to obtain a trade-mark registration. This is less than ideal. This allows “brand pirates” to secure registrations in Canada, which can then be used to block legitimate brand owners from launching their brands in Canada. If you’ve ever had dealings with the Chinese trade-mark regime (and I’ve had many clients do so), it is a comparable regime. Bottom line, if you want to secure your trade-mark rights in Canada, you should do so quick before the “brand speculators” do so.

As with any type of new legislation, it takes time for the changes to come into practice, which is beneficial for the brand owner. I highly recommend that brand owners take advantage of this time lag to file their trade-mark applications now and secure their rights ahead of the onslaught of “brand speculators/pirates”.

If you want more information about this, feel free to reach out.

Wham, Bam…Now There’s No Spam

Starting July 1, Canada’s Anti-Spam Legislation (“CASL”) will come into effect, which could significantly impact your business’ marketing campaign.

CASL regulates how businesses generate business leads via electronic messages. In real talk, it means less unwanted e-mails! A “Commercial Electronic Message” extends to any means of telecommunications (including text, sound, voice or images), whose purpose is to encourage commercial activities. In reality, this extends to e-mails, texts, instant messages, or anything similar. Whether or not this extends to social media messaging is up in the air.

If e-blasts are a part of your marketing strategy, it is necessary for each recipient to expressly opt-in to being spammed. This can either be in writing or orally. The request for express consent must clearly set out:

- the purpose for the consent;
– the specific information being sought about the consenting individual; and
– a statement that the individual can withdraw his/her consent.

If, however, there is an existing business relationship, an existing non-business relationship or voluntary disclosures, the consent is implied. In specific instances, consent is not required.

CASL also regulates what information must be contained in the consented-to electronic message:

- information that identifies the sender;
– information enabling the recipient to contact the sender;
– a mechanism that enables the recipient to unsubscribe.

If your finger is on that trigger and you continue to spam, thereby violating CASL, monetary penalties could follow.

Word of advice: take a look at your marketing strategy and determine whether any of your electronic messages may be covered under CASL. If yes, determine whether consent is implied or needs to be expressly obtained. Finally, create internal policies that ensure that your business continues to comply with the CASL requirements.

If you have any questions on how your company can comply with CASL, feel free to reach out to CanadaFashionLaw directly.

Handbook to Social Media and Internet Laws

If your business is online and uses social media as part of its customer service/marketing strategy (and let’s face it, whose isn’t), you may be interested in a book that was recently released by Lexis Nexis. It’s a handy book that sets out the legal issues that can arise (stemming from creating social media policies, employment issues, domain name disputes, privacy considerations, and e-commerce).

CanadaFashionLaw was delighted to be a contributing author for this text book.

If you’d like to get your hands on a copy, click here.

3D Printing: The New Industrial Revolution?

CanadaFashionLaw recently participated as a panelist at a fashion law symposium in Chicago.  Overall, the theme of the symposium examined technology’s role in fashion.  Specifically, CanadaFashionLaw discussed intellectual property implications for the fashion world in its incorporation of 3D printing and scanning technologies.

Whereas another panelist heralded 3D printing as creating a new world order in the global supply chain, CanadaFashionLaw took a more measured approach.  This is not to take anything away from the sheer impressive awesomeness of 3D printing but to some extent we’ve seen similar digitization movements before.  So, will there be a new world order?  Likely, not.  Will it impact the marketplace and provide more opportunities?  Likely, yes.  Let us explain.

3D printing is exactly what it sounds like.  The ability to print 3-dimensional objects from a printer.  Although this technology has been around for a number of decades, it has only recently caught the attention of the mass market.  The foundational patents that provided market exclusivity expired and now the technology is open to all to use.  As such, given that there is a proliferation of 3D printing and scanning companies (and also given that the technology has evolved to iron out the kinks), 3D printing is cheaper and more accessible.  Whereas 3D printing was restricted to large companies and used for prototyping, 3D printing has now gone to mass market.  This facilitates the democratization of manufacturing, whereby small companies and individuals can build their own products with relative ease.

Of course, this raises huge intellectual property concerns.  If you start to print objects that are the subject of patent, copyright and trademark protection, are you infringing intellectual property rights?  Where does the liability fall: with the individual printing the object or with the CAD-file provider or both?  Will the proliferation of counterfeit products become even more rampant?  How practical are enforcement attempts?  Should there be a distinction between private and commercial use?

There is no doubt that technology is a hare and law is the tortoise in terms of evolution.  However, there are lessons to be learned from previous technological developments that can be applied to this new development.  For example, similarities can be drawn from the digitization of the music industry.  Yes, the retail model of the music industry was altered by the proliferation of MP3’s but the foundation of copyright protection afforded to the music industry largely remained the same.  Applied simply to the 3D printing world, if you start printing 3D objects where a 3rd party owns intellectual property rights to that object, you are exposing yourself to risk.

If you want to chat more about 3D printing and its application to the fashion industry, feel free to reach out to CanadaFashionLaw or check out the Spreading the Word page for upcoming and past speaking engagements, published articles and journalistic commentary.

Quebec Court: Canada’s Kinda Bilingual

Previously, CanadaFashionLaw covered retailers’ challenge to the Office Quebecois de la Langue Francaise (basically, the French language police).

The Quebec Superior Court issued their decision last week which put the reins on the French language police.

Public signage and marketing in Quebec is regulated by the Quebec Charter of French Language.  The French Charter requires that signage/commercial advertisements be predominantly in French.  However, there are exceptions when trade-marks are involved.  Generally, where the trade-mark is registered in English, the brand owner is not required to display the French equivalent.  In a recent decision that was issued last week, the Superior Court of Quebec held that a non-French trade-mark does not need to be accompanied with a French descriptor.  However, if the French equivalent is also a registered trade-mark, the brand owner is required to use the French version.

Ultimately, it is a business decision on whether your company wishes to register the French version.  If there are strong ties to the Quebec culture, using the French equivalent will certainly assist in fostering better relations with the Quebecois.  If, however, Quebec is a secondary market, it may streamline your company’s marketing materials by not registering in French as well.