May 11, 2021

Volume XI, Number 131


May 10, 2021

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Canadian "Trademark Trolls" on the Rise

In 2014, Canada announced significant changes to its trademark law. The Canadian government recently announced that the new regime will come into force, along with new supporting regulations and practice notices, on June 17, 2019.

Of most significant concern is Canada's elimination of the "use" requirement for registration of Canadian trademarks. Under Canada's current system, Canadian trademark applicants must indicate whether the trademark to be registered has been used in Canada and if so, the date of first use. In order to rely on a foreign registration (including United States trademark registrations), the trademark has to be in use somewhere. After June 17, 2019, no use information will be required and the following changes in the law will be enacted:

  • Actual or intended use will no longer need to be specified at the time of filing.

  • It will no longer be possible to file an application based on use and registration abroad.

  • A Declaration of Use will no longer be required to advance to registration (applies to both new and pending applications as of June 17, 2019).

The elimination of the use requirement is leading to an influx of "trolling" applications in Canada by entities seeking to secure rights in trademarks which they have no intention of using.

These “trademark trolls” are already on the rise in Canada as a result of the pending elimination of the use requirement and are potentially a threat to true brand owners. 

© 2021 Varnum LLPNational Law Review, Volume IX, Number 10



About this Author

Charles Gray, Intellectual property lawyer, Varnum

Charlie focuses on patent and trademark prosecution in both the U.S. and foreign jurisdictions. He works with clients to file and prosecute patents in a broad range of mechanical and electrical art fields, including automotive components, consumer products, medical devices, and industrial machines. Charlie also drafts software, trademark and patent license agreements and assists in due diligence related to intellectual property for mergers and acquisition agreements. He regularly conducts and analyzes novelty, state of the art and patent clearance searches and prepares freedom to operate...

Erin Klug, Varnum Law Firm, Intellectual Property Law Attorney

Erin focuses her practice in patent and trademark procurement to develop both domestic and international intellectual property strategies. Erin works with a wide range of clients from large companies to solo entrepreneurs. She has experience in both mechanical and electrical arts including automotive, chassis systems, brake assemblies, packaging, medical devices, consumer goods, mobile applications, sensors and control systems. Erin regularly prepares license agreements, clearance opinions, novelty opinions and infringement opinions, as well as assisting clients with...