International Intellectual Property - Canada

International Intellectual Property - Canada

Published August 2019


John McKeown

Firm: Goldman, Sloan, Nash and Haber LLP
Country: Canada

Practice Area: Intellectual Property

  • 480 University Avenue
    Suite 1600
    Toronto Ontario M5G 1V2

Guide Content

We do this in at least two ways. First, for more basic matters we use fee schedules so that clients will have some idea of the expenses in proceeding with a matter. Second, we try to develop an approach specific to an individual client that will allow them to achieve what is required.

Challenges arise when the IP right that the client wants is not available or only available after a dispute. We do the best that we can for clients to overcome any impediments.

Filing trademarks and moving the applications forward is the most active area because virtually all clients need to secure a trademark.

Issues relating to social media, technology – AI – and consumer products are currently the most active. I believe this is because of marketplace factors and particularly our location in Toronto.

I recently helped to educate lawyers in Canada concerning the impact of trademark reform. I was asked by the CLE branch of a university to put on a programme to deal with the potential impact of the changes. We assembled a group of leading practitioners to deal with all of the relevant issues. The programme was very successful and unmatched. Subsequently, I was asked to write a lead article and organise a series of related articles on the same subject for the Lawyers Daily newspaper. Several years before, I did the same thing concerning copyright reform.

Decisions in contested oppositions and actions for infringement create more of an impression and stand out in my memory. The decision of the Federal Court of Appeal in Eli Lilly & Company v. O’Hara Manufacturing Ltd. changed the approach that Canadian courts take when interpreting the words of a patent claim. This was significant, and the approach adopted continues to be applied.

We have successfully used the uniform domain name dispute resolution policy to require that several domain names owned by various cybersquatters be transferred. The fact pattern of these cases tends to be similar. A cybersquatter secures a domain name confusingly similar to a brand owner’s trademark. If the cybersquatter cannot be convinced to transfer the domain name, it becomes necessary to bring proceedings.

Through my work with the Canadian Bar Association committee, we are currently reviewing and considering the relevant issues relating to trademark law. Similarly, my involvement with the American Bar Association and the committee keeps me up to date concerning issues in the US and internationally.

I have recently been involved in acting for a Canadian company that is in the process of extending its business to the US. There have been a multitude of issues relating to securing Canadian and US trademarks as well as compliance issues in both countries. Similarly, I have been involved in providing the same type of services to the Canadian company that was expanding into the European market, among others. I continue to act for a very large international supplier of goods and see various cross-border issues unfold in this context.

The brand management book was originally written as a blueprint for a large client. As it is gone through its various editions, I have tried to keep it up-to-date and relevant for all brand owners. The law concerning Copyright and Industrial designs is complex, and there are many lawyers across the country who rely on this text to keep them up-to-date. This is particularly so since this textbook is updated quarterly by publishing loose-leaf supplements. I frequently speak at conferences because I think it is important to share up-to-date and important information with other practising lawyers

I have devoted a significant amount of time and effort relating to trademark reform. I hope that it has reached the point where there are no current plans for additional changes in the immediate future. Although I would be pleased if the legislation was amended to reinsert a requirement for “use” in order to obtain a trademark registration.

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