In Canada, the Toronto Raptors’ successful drive for their first NBA Championship is all anyone can talk about. But behind the euphoria of the Championship lurks a dark cloud. Monster Energy has commenced a proceeding, known as a Trademark Opposition, to prevent the most recent versions of the Toronto Raptors’ logos from being registered as trademarks.
Effective June 17, 2019, Canada’s Trademarks Act (“Act”) will see some noticeable changes, and these amendments will significantly alter the landscape in Canada regarding filing applications, registrations, and renewals. Owners of Canadian Trademark Registrations, applicants in pending applications, and potential new applicants should carefully assess and review their options going forward.
Use has long been an integral component required to obtain, maintain and enforce registered trademarks in Canada.
Prior to June 17, 2019, applications for registration of a trademark filed in Canada required the identification of one or more basis of registration typically selected from proposed use in Canada, actual use in Canada, or registration and use in a foreign country of origin. If an application was based on proposed use, registration would not be granted until a declaration of use in Canada had been submitted. After June 17, 2019 an applicant no longer needs to identify a basis of registration.
Has Canada done an about face and eliminated use as a requirement for trademark protection in Canada?