Trademarks + Brands by Corsearch

“Cannabis trademarks represent the new frontier in the legal brand clearance process.” 

As we hit the halfway mark in 2018, it's a good time to note that sweeping changes to Canada's trademark law are expected to come into force early in 2019. Amendments to the "Trade-marks Act" include:

• A date of first use will no longer be required.
• The definition of a trademark will be broadened to include nontraditional items like smells, tastes, textures, and moving images.
• Dividing trademark applications will be permitted.
• A Declaration of Use will no longer be required.
• The registration term will be change from 15 years to 10 years.
• Canada will become a member of the Madrid Protocol and adopt the Nice Classification of goods and services.
• Third party correspondence (i.e, Letters of Protest) will be permitted during prosecution. 
• The government registration fee will be eliminated.
• Registration fees for every classification will be introduced. 

The UK Supreme Court ruled that internet service providers (ISPs) no longer have to pay the cost of blocking websites that breach trademarks. The court's unanimous ruling, against French luxury goods maker Cartier means that companies that want to enforce blocks against, for example, companies that sell counterfeit goods, must now pay "reasonable costs" to ISPs.

Calling the ruling "a potential landmark win," Mobile News notes that the ruling raises questions in the legal community about whether the same principle could apply to illegal downloads of copyrighted music.

When you're clearing trademarks, you need a truly complete picture of potential showstoppers or other problems. This is particularly true in the case of the USPTO, where trademark requirements must adhere to exacting standards in order to ensure a smooth application process.

US-based energy drink maker Monster Energy Company (MEC) failed in a bid to stop Chinese investment company Tencent Holdings Limited from registering a trademark for Monster Castle in Singapore. Monster Castle is a "tower defense game" made by video gamemaker Sixjoy Hong Kong Limited. Tencent filed a trademark application in Singapore for the game's name in 2015.

MEC has eight registered trademarks in Singapore in Classes 9, 41, and 42, which include scientific, nautical, and digital media products; education, entertainment and sporting activities services; and scientific, technological services, and software and hardware design.