Impact of Trade-marks Act amendments on cannabis companies

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Publication May 2019

The amendments to the Canadian Trade-marks Act, which are taking effect on June 17, 2019, will make it easier for Canadian cannabis companies to get their brands into the Canadian market, and more importantly, take them global, thereby ushering in a series of trademark changes for Canadian cannabis companies. 

While the national changes will ease the way for obtaining brands for Canadian cannabis company owners (with some caveats), the most significant impact will be the access to global brand protection.

National Impact

The Canadian Intellectual Property Office has seen an enormous influx of Canadian trademarks filed for cannabis and cannabis-related goods and services. The amendments will provide for easier and consistent classification of the goods and services associated with a trademark. Canada will now follow the international classification system under the Nice Treaty currently adopted in Europe and the United States. 

More importantly, Canadian cannabis companies will no longer have to provide a commercial sale of their product or advertisement of a food service prior to getting their trademark formally registered. The new rules will allow for immediate registration of a trademark once it has completed the advertisement period. Cannabis brand owners will be able to test a brand with the consumer more quickly without having to commit to sales and will enjoy greater flexibility to pivot to or from a brand depending on market acceptance. Keep in mind any cannabis branding strategy or selection should always march in step with the strict regulatory framework relating to advertising, packaging and labeling.

Global Impact

Protecting a cannabis brand globally presents unique challenges, as there are restrictions in certain jurisdictions for cannabis itself and cannabis-related goods and services. However, the new rules will enable cannabis companies to take advantage of the Madrid Protocol. This international trademark filing mechanism allows for the centralized filing of a brand in 120 countries while utilizing a foundational Canadian application or registration.  Brand owners will be able to launch products globally more cost-effectively, as the Madrid Protocol provides for a single filing negating the need for engaging foreign trademark counsel unless the application is refused at the local trademark office. Securing a global brand will become much more attainable and cost-effective starting June 17, 2019.

Conclusion

Given the upcoming amendments, cannabis companies should strategize on their global offering and review their current stable of brands to determine any gaps in key markets. Global brand clearance searches should provide initial clarity on availability of a brand, followed by a review of any local limitations related to cannabis itself or cannabis-related goods and services to ensure successful registration. Canadian registrations or pending applications can then be used to file a Madrid Protocol application to fill in any jurisdictional gaps and provide a more complete and robust portfolio.

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