Monthly Archives: March 2025

Are you a Canadian innovator, entrepreneur, or startup looking to supercharge your growth and innovation potential? ElevateIP is your ticket to success! In this interactive post, we’ll explore how ElevateIP is transforming the Canadian business landscape and how UIPatent can help you make the most of this game-changing program.

What is ElevateIP?

ElevateIP, a visionary initiative, is poised to take Canadian startups to new heights. Developed as an extension of the National Intellectual Property Strategy, this program is a testament to the Government of Canada’s commitment to fostering innovation, startup growth, and technological advancement. With a substantial investment of $90 million over four years starting in 2022-2023, ElevateIP is here to supercharge your journey.

ElevateIP: Your Growth Catalyst

ElevateIP is all about empowering startups with the knowledge, tools, and support needed to harness the potential of Intellectual Property (IP). But what exactly does it offer?

Facilitated IP Support: ElevateIP teams up with Business Accelerators and Incubators (BAIs) to provide startups with tailored IP support. This support isn’t just about patents and trademarks; it’s about unlocking your innovation’s true potential.

Boosting IP Capacity: ElevateIP aims to enhance the entire IP ecosystem in Canada. How? By educating BAIs and their startups about IP matters, encouraging collaboration, and providing greater access to IP advice.

Customized Support: Startups aren’t one-size-fits-all, and ElevateIP knows that. It enables BAIs to offer personalized support that meets each startup’s unique needs, helping them secure and maintain IP rights.

The Power of Knowledge

In the world of IP, knowledge is power. ElevateIP offers a wide array of activities to boost your IP awareness, including workshops, programs, conferences, and peer-to-peer learning opportunities. It’s all about building the foundation of IP knowledge you need to succeed.

The Role of UIPatent

And here’s where UIPatent steps in. As your go-to destination for IP-related services, we’ve got a multidisciplinary team of experts at your service. Lawyers, patent agents, engineers, technicians, draftsmen, and marketing experts – we’ve got them all. We can advise you on all things IP, including patents, trademarks, and patentability opinions on your inventions.

Our team comprises experts in various scientific and engineering disciplines, including mechanical, electrical, chemical, aerospace, and more. We serve clients of all sizes, from universities to large corporations and individual inventors. No matter where you are on your IP journey, we can tailor our expertise to suit your unique needs.

ElevateIP and UIPatent: A Winning Partnership

ElevateIP and UIPatent go hand in hand. We’re here to ensure that your ElevateIP journey is a resounding success. Whether you’re drafting your proposal, navigating the intricacies of IP, or seeking guidance on patentability, we’ve got you covered.

So, what’s next? Reach out to UIPatent to explore how we can assist you with your ElevateIP proposal or address any IP-related matters. We’re here to help you unlock the potential for growth, job creation, and strategic impact. Contact us and embark on a journey to success in the world of intellectual property.

Elevate your IP game with ElevateIP and UIPatent. Your innovation journey starts here!

What is trademark infringement?

A trademark helps distinguish your company’s goods or services from others in the marketplace. If someone is using your trademark without your permission, they are committing trademark infringement. If someone is using a confusingly similar trademark, they may also be committing trademark infringement.

Infringement can be serious. Not only can an unauthorized user be sued by the trademark owner, but certain unauthorized activities can lead to fines and prison penalties.

Abandoned or expunged trademarks and infringement

The trademark owner is responsible for using the trademark on the goods and services covered in the registration. Keep evidence of the use on an ongoing basis. Otherwise, your competitor may argue that you have abandoned your trademark due to non-use. Your competitor may also request that the Trademarks Office expunge your trademark if you haven’t used it within the last 3 years. This means that the Trademarks Office will remove the trademark from the Register.

Caution: Your trademark can be invalidated on several grounds:

initial unregistrability, because a trademark cannot be any of the following:

• confusing with a registered trademark
• a generic mark or generic symbol
• mistaken for an official or prohibited mark
• offensive
• falsely suggesting a connection with a living or recently deceased individual
• a name or surname, unless distinctiveness is shown
• a descriptive or deceptive mark, unless distinctiveness is shown
• the application being filed in bad faith
• material misrepresentation or non-disclosure of information during registration
• lack of distinctiveness
• the registrant not being the person entitled to secure the registration
• abandonment (requires non-use and intention to abandon)
• the trademark not having been used for 3 years

Examples of trademark infringement

Trademark infringement can include activities such as the following:

• producing, without the owner’s permission, a visual imitation of their trademark so that the public is likely to confuse the imitation with the owner’s trademark (note that there are instances where an exact replica is fine, such as when an exact shape is functionally required)
• using a registered trademark that is so similar to another trademark that people will be confused
• importing falsely branded goods (“knock-offs”), which is becoming more common with the advent of online ordering (counterfeiters may advertise using images of original products but ship fake goods)
• using a trademark in a manner that will depreciate the value of the goodwill attaching to it

Note: Trademark and domain name issues can go hand in hand. For example, having a registered trademark can help you fight against unauthorized uses of the trademark as a domain name.

Enforcement

While the Canadian Intellectual Property Office grants intellectual property (IP) rights such as trademarks, patents, industrial designs and copyright, it does not police granted rights or monitor the marketplace for potential infringement.

Enforcement of IP rights is the responsibility of the IP holder, not the IP office.

Who can sue for trademark infringement

• The owner of the registered trademark
• Licensees of the registered trademark (under certain conditions)
• For unregistered trademarks, the owner of a business whose competitor is using the same or a similar trademark that might cause confusion (using common law tort of “passing off”; in Quebec, the Civil Code of Québec acts as a functional equivalent)

What you need

To enforce your trademark rights, you need the following:

• your valid (registered) trademark
• proof that another party is using the same or a similar trademark that might cause confusion

When to sue for trademark infringement The deadline to start a lawsuit depends on the laws where the infringement took place. For cases where the infringement, and damages, all occurred within a single province, the provincial limitation period of that province applies. For example, in Ontario, the limitation period is 2 years, and in Quebec, the limitation period is typically 3 years. In other provinces, the deadline for starting a lawsuit can be as long as 6 years. If the cause of the action, including damages, arises in more than a single province, the deadline is also 6 years from the act of infringement.

If you are thinking about starting a lawsuit for trademark infringement, you should consider consulting an IP lawyer for more details.

Get professional help

Solving conflicts involving IP rights is often complex. Consult an IP professional, such as an IP agent or lawyer, to discuss the next steps if you believe your IP rights are being infringed upon.

If IP infringement is happening in another country, a Canadian IP professional may be able to coordinate with an IP professional in the other country to enforce your IP rights.

Source: https://ised-isde.canada.ca/

You can only obtain a trademark registration in the United States (US) when you use or intend to use your trademark on goods and/or services. You should be selling goods and services under the mark and prominently using your trademark in connection with those goods and services.

2. When you file a trademark application with the US Patent and Trademark Office (USPTO), you need to submit proof of use for each class of goods and services associated with the mark.
3. In the US, you can file a trademark application based on intent-to-use if you have not yet started using it. After the trademark application is examined, advertised, and allowed by the USPTO Examiner, you will still need to submit a statement of use (including proof of use) for each class. The US trademark will not register before the statement of use is filed.
4. If you file a trademark application in another country first (e.g., Canada), you can file a trademark application in the US within 6 months and claim priority to the filing date of the earlier corresponding application. In this case you can rely on the foreign registration to obtain the US registration (without proving use) or opt to obtain registration by filing a statement of use.
5. Proof of use is required to maintain your trademark registration in the US. You are required to submit a declaration of use (including proof of use) at 5 and 10 years after registration and then every 10 years after that. If you do not continue to use your mark, it will become vulnerable to cancellation by the USPTO or third parties.
6. In the US, rights or ownership are established by first proper use of the trademark on goods and/or services, regardless of whether someone has already filed an application for the same or similar trademark. If you can prove that you used the mark first, you may be successful in opposing or litigating that trademark application, after which you can request refusal or cancellation of the third-party trademark.
7. Proper use of a trademark on goods (e.g., clothing, downloadable software) could be one of the following:

• Displaying the mark on the goods themselves (e.g., showing the logo on your t-shirts) or on their packaging or label
• If the product does not allow marking (e.g., semiconductor chips), prominent use of the mark on invoices might suffice
• Displaying the mark on a webpage in proximity to the goods and including information on how to purchase the goods (e.g., “add to cart”)
• For downloadable software, displaying the mark on the website with download information, on the launch screen, or in the software itself may suffice

Please note: To establish the date of first use for your trademark, you will need to have sales or transport in commerce in the US in the ordinary course of trade

Example 1: You are selling shoes under your trademark and your first customer is a resident of the US who ordered via your website. If the shoes are manufactured in Canada and shipped directly to an end purchaser in the US, then the first date of use in commerce will be the date of first sale via the website. Proper proof of use is a picture of the mark shown on the shoes or their label or packaging. It can also be a screenshot/printout of the website where you are displaying the mark in close proximity to the product with information on how to purchase the shoes.

8. Proper use of a trademark on services (e.g., IT services, SaaS, cleaning) could be one of the following:

• • Displaying the mark while performing the services (e.g., you are wearing a t-shirt with the mark while performing IT services at a client site)
  • In advertisements, brochures or on your website where the mark is shown properly in proximity to a description of the services
  • The mark is included on your invoice for the services rendered

Please note: The date of first use for services is when you first rendered the services in the US in the normal course of trade.

Example 2: If you wish to provide consulting services under your trademark, the date of first use is the date when you have performed those services for actual customers. Merely offering the services to the public is not enough to obtain a trademark registration. Proper proof of use can be a screenshot/printout of the website displaying the mark near a description of the services.

9. Proper trademark use does NOT mean incorporating a company, purchasing a domain name, developing a trademark or design, putting your trademark on letterhead and creating a business plan, and other uses that do not relate to the goods and services you are selling under the trademark.
10. It is good practice to employ continuous use of the trademark and to let your trademark stand out (in larger font) in text on your website and advertisements. Mark your trademark on your website or in advertisements and on all of your product names. You can use ™ on goods and services if you haven’t filed a registration. If the trademark is registered, you can use the registration symbol ®. Proper marking alert your competitors that you are claiming trademark rights.
11. No matter how small, do not make any deviations from your mark (e.g., dropping a word – if your trademark is for “Puzzles Bar & Grill” and you put “Puzzles” on your coasters; or if you make updates to your logo) as use of a deviated trademark may not be protected under your registered trademark.
12. Do not allow unauthorized third-party use of the trademark or use your trademark as a noun or verb. If you allow people to use the trademark in such a way, it can lose its distinctiveness and you can lose your rights to the trademark.

Example 3: Mad Dogg Athletics Inc. owns the rights to the registered trademark for the term “spinning” and uses it to identify their brand of indoor cycling equipment and instruction. Because the term has become generic to the sport, the trademark is vulnerable to cancellation and has been subject to several attempts.

Example 4: The “Pilates Method” was created by Joseph Pilates as a version of exercise known as “Contrology.”  The trademark to the term “Pilates” was owned by a New York studio, however, in 2000, a judge ruled that the term “Pilates” referred to a type of exercise and invalidated the trademark stating that as, “consumers identify the word ‘Pilates’ as a particular method of exercise, the plaintiff cannot monopolize [it]”.

Key considerations for Canadian companies regarding proof of use for trademarks:

• After confirming your trademark’s availability via on-line searching and in the USPTO trademark database, consider using your trademark and filing your trademark application as soon as possible (ideally before or concurrently with first use). If a trademark has been used in the US prior to your use or your trademark application by a third party, that third party can claim US trademark ownership rights.
• Follow USPTO guidelines for proper use of a trademark to establish trademark rights and keep your trademark. Using a trademark merely as a company or domain name is not proper trademark use. Consider putting a ™ next to your mark and changing it to an ® symbol if your trademark is registered in the US.
• Monitor for use of your trademark (identical or confusingly similar) by third parties. Consider taking immediate action against unauthorized use.

According to Kim Capiau, Registered Trademark Agent at Stratford Intellectual Property, “Use is key in trademark law – it allows you to establish ownership and to maintain your trademark. You can either use your trademark properly or risk losing your trademark, even if you have obtained a trademark registration”.

Source: https://ised-isde.canada.ca/