Graham Hood and Olivier Jean-Lévesque of Smart & Biggar sat down with Lexpert to draw out the highlights of their recent article, Developing a sound global trademark filing strategy.
Here they discuss the state of the intellectual property space including the challenges it’s facing, the changes it’s expecting, and what advice they’re giving clients. To hear more on the topic, join the firm’s trademark experts for an insightful webinar that explores the complexities of global trademark filing.
Q: What are the challenges you are seeing in the IP space overall?
A: The biggest challenge, and one to which no organization — large or small — is immune, is balancing budgets with brand protection priorities. How do you make the most of your brand protection budget? Where is your money best spent? What are the best, most cost-effective strategies for protecting your brand, not only in Canada but also abroad.
Q: Are there any new developments you're keeping an eye on?
A: Several new amendments to the Trademarks Act are on the horizon and will eventually come into force. Some of those amendments relate to Canada’s “official marks” regime, which is a distinct, and unique, feature of Canadian trademark law. It is also, understandably, a cause of concern for brand owners whose applications may be blocked by public authorities which own official, or prohibited, marks that are identical to the brand owners’ marks. The new amendments will create a simple and efficient mechanism for the Registrar to give public notice that the prohibition to adopt or use a particular official mark no longer applies in circumstances where the rights holder is not a public authority or has ceased to exist, which will help brand owners and their counsel clear the way to registration.
Q: Why are global trademark filing strategies top of mind right now?
A: We live in a global, online economy in which every brand owner — from homegrown start-ups to Fortune 100 companies — must protect their brand identity and image, not only on “home soil” but also overseas, in foreign markets. Trademark rights are geographical in scope, and best protected by filings and use. Even if a brand owner has no immediate plans to expand its business into foreign markets, a comprehensive, global trademark filing strategy equips the brand owner with a “sword and shield” to enforce its rights abroad and defend against threats from competitors. When building your business, it is myopic and narrow-minded to think that one needs to only protect one’s rights in its local jurisdiction.
Q: What advice are you giving clients when they're registering a trademark across multiple jurisdictions?
A: We’re telling clients to take the long view; carefully consider what you want to be, and where you want to be, in three, five, ten years from now. Unfortunately, it takes time to shepherd an application to registration, both in Canada and abroad, so brand owners are best advised to consider what goods and services they might wish to offer down the road, and where do they see their business, and (perhaps more importantly) their industry, going in the years ahead. These considerations are critical to establishing a comprehensive, global trademark filing strategy that adequately protects your present and future interests and serves you well for years to come.
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Graham Hood is the firm’s Trademarks Practice Group Leader. As a highly experienced trademark lawyer, Graham’s counsel is sought after by brand owners focused on building and protecting their brands and reputations across Canada. Graham is trusted by clients for his actionable and business-minded advice.
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Olivier Jean-Lévesque brings a wealth of expertise in all aspects of trademarks and a broad range of IP-related services to both domestic and international clients. His practice includes assisting clients with selection, clearance, prosecution, opposition proceedings, use, cancellation and litigation proceedings.
Want to learn more? Register now for the Nov. 21 webinar, Developing a sound global trademark filing strategy.