This on-demand webinar shines a light on global trademark cancellation strategies. Specifically, panelists explore how to defend against / avoid cancellation brought against your marks, as well as how to use cancellation proceedings offensively to remove potential problematic marks. The panel also discussed what evidence needs to be gathered, the limits of differentiating marks, and circumstances that may excuse non-use.
Speakers
- Kristen Kilroy - Associate, Gowling WLG
- Alexander Christophoroff - Partner, Gowling WLG
- Yan Gong - Partner, Law Firm
- Charlotte McDonald - Partner, Gowling WLG
- Jon Parker - Partner, Gowling WLG
- Kate Swaine - Partner & Co-Head of Intellectual Property, Gowling WLG
Watch previous episodes
This is the 17th installment in our Lifecycle of a Smart Idea series, dedicated to helping you maximise opportunity and minimise risk when taking innovative ideas to the global market. Watch more from the series »
*This program is eligible for up to 1 hour of substantive CPD credits with the LSO, the LSBC and the Barreau du Québec, and may be eligible for up to 1 hour of CPD/CLE credits in other jurisdictions.
Top tips from the panelists
- Cancellation proceedings in Canada are a great tool as they can be a simple and relatively quick way to remove a registration that is blocking your trademark application – and you can get extension for your pending application while the cancellation proceeding is ongoing.
- To protect yourself from cancellation make sure you are monitoring your trademark use in Canada and ensure that you are using your marks as registered. If the mark is being used under license, make sure that the license is memorized in writing in case you need to prove it later on.
- From an offensive perspective, it is important to act swiftly and decisively. Do not spend months debating whether to apply to revoke a mark, because in this time the proprietor of the blocking mark may then put it to use and the opportunity will be lost.
- From a defensive perspective, ensure your trademark portfolio is pro-actively maintained. Make sure marks are registered appropriately and being put to genuine use.
- Use your mark in the UAE so you do not face cancellation proceedings.
- If you are faced with a blocking registration, see if we can work around the issues with the Trademarks Office before resorting to cancellation. If cancellation is the last resort, consider the threat of cancellation to try and secure consent or an assignment if possible.
- Cancellation proceedings in China are cost-effective and have a high success rate.
- Initiating cancellation without delay is highly recommended because it may save you a lot of trouble and costs in parallel proceedings.
- The procedure in Russia is fast but the claimant must prove its legal interest, which is quite burdensome
- If you are the trademark owner, make sure that the mark is used in Russia for every position of goods and services that you want to keep, and all relevant papers are kept
Get in touch
Would you like to discuss these or other issues related to protecting and maximizing your intangible assets? We’re all about being connected. Get in touch with your trusted Gowling WLG IP adviser.