Unlocking the Power of Digital Signature Legality for Trademark Assignment Agreement in Canada

How to eSign a document: digital signature legality for Trademark Assignment Agreement in Canada

hi and welcome to this week's episode of our trademark and IP video series today we'll be talking about life after you submit your trademark application in Canada no sorry the trademark registration registration process doesn't end after you submitted an application once a trademark is filed and even throughout the registration process you still need to have a plan in place to defend your trademark but don't worry we're here to help let's start by answering some fundamental questions you probably have about trademark protection post-filing first which courts are empowered to hear trademark disputes the federal court has both concurrent and exclusive jurisdiction to hear trademark disputes the jurisdiction is exclusive where statutory registration expungement or the grant of trademark rights is at issue jurisdiction is concurrent when the claim is one of infringement of those rights a party can elect to bring these claims before the federal court or before the provincial superior courts some points that I want to draw your attention to regarding jurisdiction the federal government was set out to have exclusive jurisdiction regarding trademarks in the Constitution Act of 1867 the federal government has exclusive jurisdiction regarding matters of statutory registration expungement and the granting of trademark rights matters of infringement can be heard at either the federal level or at the provincial Superior Court level under the trademarks Act the Federal Court has exclusive jurisdiction to hear trademark matters that said under the federal courts act the federal court has concurrent jurisdiction along with the provincial superior courts on certain matters such as infringement and passing off fun fact when it comes to language a trade trademark can be either in French or English a recent case in Quebec decided that registered trademarks do not have to be converted into the language of any given jurisdiction this is why you will see many trademarks in Quebec that remain English even though they have language laws in Quebec let's say you're dealing with the trademark ownership issue what actions can be taken against infringement eg is like civil criminal or administrative well for a civil collection only a registered trademark can be infringed infringement is a legal term which typically includes the sale distribution or advertisement of any goods or services in association with a confusing trademark or trade name a party can sue for trademark infringement based on sections 19 and 20 of the trademarks act before the federal court or the relevant provincial Superior Court in a criminal action the Criminal Code targets the sale offer for sale or distribution of counterfeit products on a commercial scale as well as the manufacturer caused to be manufactured possession import-export or attempt to export any counterfeit goods and any label or packaging for the purpose of sale or distribution on a commercial scale in transits shipments and personal use goods are executed are excluded what are the penalties for criminal trademark infringement offences well currently a fine up to Canadian dollars 1 million and up to five years in prison for an indictment and $25,000 fine and up to six months in prison for a summary conviction offence what remedies are available to owners of infringe marks are punitive it punitive damages allowed the owner of an infringed mark may seek injunctions permanent injunctions damages an accounting of profits or the destruction of other disposition of any offending goods packaging labels and advertising material and any equipment used to produce the goods packaging labels or advertising material punitive damages and exemplary damage may be awarded in exceptional circumstances the successful party is typically entitled to an award of costs what customs enforcement measures are available to halt the import or export of infringing goods Canada has adopted a new request for a system regime to halt the import or export of counterfeit goods whereby the owner of registered marks may register these rights with the Canada Border Services Agency or known as CBSA the CBSA may then detain goods for five to ten days in exchange information with trademark owners allowing them to take civil action to extend detention period brand owners will be RIT will bear the cost of detention there is no summary procedure allowing for the destruction of counterfeit goods what rules and procedures govern the assignment of trademark rights must an assignment be recorded to have legal effect well currently there are no specific rules or procedures governing the assignment of a trademark trademark rights a trademark whether it's registered or unregistered is transferable either in connection with or separately from the goodwill of the business and in respect of either all or some of the goods or services in association with which it has been used there's no requirement that an assignment be recorded to have legal effect an assignment may be recorded against a registration with SIBO but the assignment need only be signed by the assign or there is no requirement for notarization there is an official record a fee of $100 Canadian per mark what rules and procedures governed trademark licensing the trade marks act governs the licensing of trademarks a license license may be written or unwritten and may may relate to both registered and unregistered marks there is no provision to record a license against registered marks however the Canadian Intellectual Property Office will permit the placement of licensing agreements on the files of trademarks that have been licensed and a note to that effect will be entered on the register can trademarks be protected under under other IP rights like copyright or designs or industrial designs it is possible to protect a design mark via copyright where the conditions set out in the Copyright Act have been met generally an original artistic work authored by a citizen subject or resident of a Berne Convention country it is also possible to protect the trademark via industrial design to protect the visual features of shape configuration pattern or ornament or any combination of these features applied to a finished article so what else who governs the protection of trademarks online and domain names well currently the Canadian internet Registration Authority C IRA manages the dot CA Internet domain on behalf of all Canadians see IRAs dispute resolution policy provides a mechanism for arbitration for individuals and businesses which meet C IRAs Canadian presence requirements it is also possible to seek relief from federal court or the provincial superior courts based on passing off infringement and depreciation of goodwill of existing trademarks well that's all for today folks thank you for listening to our IP video series and there'll be a new one coming up in the next couple in the next week and we appreciate you listening thank you