Page 14 - CCCA 243725 Magazine_Winter 2015

{ PRactice ManaGeMent }

the mark may be contested in Canada by Should you be making defensive flings to culties because of trademark trolls who
third parties. broaden the scope of your existing regis- have registered and asserted “their” trade-
trations? marks against them in foreign countries
What steps should be taken now? where their suppliers and manufacturers
Set Up Trademark Monitoring. are located. ❚
Review Your Company’s Brands and File. Canadian in-house counsel should ensure
In view of the anticipated food of trade- a mechanism is already set up so the Ca-
mark applications fled in Canada by nadian trademark register is monitored Mark Evans and Keltie Sim Luft are partners in the
both trademark pirates and foreign brand and reviewed for potentially confusing Toronto offce of Smart & Biggar, Canada’s largest
owners for marks not used in Canada, trademark applications. Trademark mon- frm practicing exclusively in IP law.
Canadian businesses should take steps itoring services will become especially im- Mark provides trademark protection, management
to promptly fle for all currently unregis- portant as the volume of trademark ap- and counselling services. He represents many of the
tered brands. Additionally, by fling now, plications increases in Canada, including world’s most famous brand owners and has been
increased government fling fees will be for unused trademarks. chosen as Canada’s leading trademark litigator. He
avoided for multi-class applications. can be contacted at mkevans@smart-biggar.ca.
In-house counsel should therefore re- Protect Your Brands Internationally. Keltie focuses on the domestic and international
view their trademark portfolios with their In-house counsel should not wait until the clearance, prosecution, portfolio management,
marketing departments to determine Madrid System is in force in Canada be- acquisition and licensing of trademarks for clients
based in Canada and internationally and operating
what should be protected. For instance, fore protecting their brands internation- within a vast array of industries. She has been
are all product names registered? Is your ally. Key markets, present and anticipated, widely recognized as a top practitioner in the feld
corporate name registered as a trade- should be protected. Also, many Canadian of trademarks. Keltie can be contacted at ksluft@
mark? The corporate logo? Sub-brands? companies have faced considerable diff- smart-biggar.ca.

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14 CCCA MAgAzInE | WIntEr 2015 HIVEr