There is a lot of talk about blockchain. The technology is changing the way businesses operate and creating new ways of doing everyday transactions. This blog is an overview of recent developments in the area of blockchain and global trademarks rights.

The United Nations Convention on International Settlement Agreements Resulting from Mediation (‘Singapore Convention’) was formally signed on August 7, 2019. The Convention sets requirements for reliance on settlement agreements, standards for enforcing the agreements, and grounds for refusing to grant relief.

As a legal business development and marketing professional in a past life, I picked up a few tips that most junior practitioners may not know or may not have the confidence to implement early in their careers. I am using these tips in my own practice and hope that they will help other young practitioners to build their networks and their businesses.

I had the honour to represent the Intellectual Property Institute of Canada (IPIC) at the 29th session of the Nice Committee of Experts in Geneva from April 29 to May 3, 2019, where the Committee dealt with hundreds of remaining proposals from the 28th session, as well as the hundreds of proposals and 4 related projects presented this year. Not surprisingly, the Committee will be carrying over a few hundred proposals and a few projects into 2020.

In 108 Media Corporation v. BGOI Films Inc., 2019 ONSC 880, the Ontario Superior Court of Justice re-affirmed the predominant line of case law in Ontario holding that when parties insert the words “final and binding” into an arbitration agreement, they intend to preclude an appeal under section 45 of the Arbitration Act, 1991, S.O. 1991, c. 17, either as of right or with leave.

The United States Patent and Trademark Office (USPTO) has launched a pilot program to explore the effectiveness of instituting expedited cancellation proceedings at the Trademark Trial and Appeal Board (TTAB) for challenges to registrations based on abandonment or non-use

The world around us is becoming more reliant on technology, and the practice of IP law is no exception. There are already numerous resources offered by national IP offices and agencies around the world. For instance, Google Patents, a search engine for prior art, indexes more than 87 million patents and patent applications with full text from 17 patent offices. Similarly the World Intellectual Property Organization offers numerous resources and databases to conduct international trademark, patent, and industrial design searches. Here at home, CIPO's website has a large collection of resources on Canadian IP law and how to register, enforce, and find IP.

Like any proprietor wishing to protect its trademark rights, those adopting marks having “shock value” may also create valuable rights and wish to pursue stronger, enforceable trademark rights through registration. These parties have faced obstacles as IP offices in various countries enforce the provisions of their trademark laws that relate to immoral or scandalous marks. Arguments related to “free speech” have often been used as a defense.

On December 20, 2017, the Court of Appeal in Stockholm, Sweden, convicted 20 people for fraud in relation to sending fake invoices to applicants who had previously applied to register Community trademarks with the Office for Harmonization in the Internal Market (“OHIM”, now the European Union Intellectual Property Office (EUIPO)). From 2011 to 2014, the fraudsters sent hundreds of fake invoices under the misleading name “OMIH” that appeared to have been sent by the OHIM to recipients in various countries.

Like Canada, Mexico is introducing some significant substantive and procedural changes to its trademark law. The changes are to align its practice with that of its foreign commercial partners and are expected to come into force 60 working days from the May 18, 2018 publication in the Mexican Federal Gazette.

The Venezuelan Patent and Trademark Office has temporarily suspended payment of official fees by foreign applicants, pending the publication of new official fees. As a result, some services including renewals, final granting taxes, patent annuities, and changes of ownership have been halted. Other services, including trademark filings, remain unaffected, as do proceedings involving domestic applicants, or those paid in local currency.

I recently had the pleasure of representing IPIC at the 28th Session of the Committee of Experts of the Nice Union (the Committee) held in Geneva, Switzerland, from April 30 to May 4, 2018.