Q: What will franchisees need to do differently?
The new trademark laws do not have any direct bearing on franchisees, since they are not owners but rather licensees of their franchise systems’ intellectual property. However, franchisees—particularly those of systems that are headquartered outside Canada—can be proactive in encouraging their franchisors to plan ahead and take rigorous steps toward trademark registration in Canada, especially with trademarks they may wish to use in the future. The failure to be proactive, after all, could soon allow for other parties to apply for those same trademarks and then try selling them back to the franchisor. Businesses with recognizable brands not yet protected in Canada may be ideal targets for these ‘trademark trolls.’
Chad Finkelstein is a partner at Dale & Lessmann LLP in Toronto. For more information, follow him on Twitter at @ChadFinkelstein and contact him at (416) 369-7883 or via e-mail at firstname.lastname@example.org.