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Guest Blog: Cannabis Regulation in Mexico. Is it really happening?

By: Carlos Allan Malacara & Felipe Gutierrez Serrano, Panamericana de Patentes y Marcas More than two years have passed since Mexico took the first step in the regulation on the use of cannabis, amending important provisions in the General Health Law and the Federal Criminal Code. This was a pivotal moment and a shift from a prohibitionist system, to a model where effective cannabis regulation could be developed. Such significant changes in the federal laws still required a clear regulatory framework for implementation. Since June 2017, the Ministry of Health was instructed to design and execute public policies aimed at regulating the medicinal use of cannabis, within six months. Attempts have been made, but all have failed, to adequately regulate the use and rules for commercialization of cannabis for medical and scientific research purposes. For instance, in November 2017, Mexico’s Federal Commission for Protection against Health Risks (Cofepris) approved the Regulations of the General Health Law involving Health Control of Cannabis and its Derivatives, which were never published and hence did not enter into force.  In October 2018, Cofepris issued Guidelines involving Health Control of Cannabis and its Derivatives, which were in force for a short period of time. However, these guidelines were flawed as they did not follow the legal protocols upon issuance and contravened several other legal bodies so they were finally revoked in March 2019. At the legislative level, eight different bill proposals are currently being discussed in Congress. The initiative presented by the Interior Minister in November 2018, has been well received by many as it balances free market principles but also considers public health concerns...

Upcoming Changes to Canadian Trademark Law

We love our Canadian neighbors! Significant changes to Canadian trademark law are taking effect on June 17, 2019, and here is what you should know: ►   As of that date, Canada will be a member of the Madrid Protocol, an international filing system in nearly 120 countries, which allows you to file applications through the World Intellectual Property Office filing system, at a lower cost and maintain marks through renewals at a lower cost. (Note: This filing system has disadvantages in certain circumstances.) ►  Canada is adopting the Nice Classification System, the same class system the majority of the world already uses. Meaning, when filing in Canada you will have to classify goods and services into the 45 different classes, as we presently do in the U.S. This will result in significant cost increases for Canadian filings as the Trademark Office will be imposing a “per class” filing cost. ►   Canada will no longer require proof of use prior to registration. This will apply to pending applications as well as new applications. Meaning, you will no longer have to submit a “Declaration of Use” to obtain a registration certificate. This allows for you to effectively reserve your brand name for 3 years from the date of registration, after which, a registration may be vulnerable for non-use. [Evidence of use in Canada will be necessary during the first 3 years if you enforce your rights from a trademark registration through litigation.] ►  The registration fee is being eliminated for new applications filed after June 17th. If your application is pending, there will still be a registration fee due after...

Guest Blog: The “Green Rush” to Register Cannabis Trademarks in Canada

Guest authors John H. Simpson & Shan Arora of Shift Law discuss the current landscape of cannabis trademark applications in Canada. On October 17, 2018, the sale of recreational cannabis became legal in Canada and the “green rush” to profit from the industry is on. For many months, industry players have been hurrying to stake claims to market share and to various forms of intellectual property rights in recreational cannabis products and services. However, when it comes to selecting and protecting cannabis-related brand names, in reality, the “green rush” has become a game of hurry up and wait. Currently, there are approximately 2200 trademark applications pending in the Canadian Intellectual Property Office (CIPO) with claims for cannabis or cannabis-related goods or services that have yet to be examined. This backlog of applications is partly responsible for the increasingly lengthy processing time for Canadian trademark applications. It is now taking more than 12 months for a first examiner’s report on a trademark application and the total time from filing to registration is now about 18-24 months. The vast majority of these applications were filed prior to legalization on the basis of “proposed use,” meaning the applicant has not yet used the mark with the applied-for goods or services as of the filing date. Filing proposed use applications is a wise strategy. During examination at the CanadianTrademark Office, as in the U.S., the first person to file an application has priority over subsequently filed confusingly similar proposed use trademarks. The examination considers all trademark applications for a likelihood of confusion with trademarks in prior-filed applications and registrations. At the outset, the...

International Trademark Protection

Trademark protection outside of the U.S. can be important for a number of reasons. You should at least consider filing for trademark protection internationally if your sales, distribution, and/ or manufacturing position is as follows: You conduct business in another country You plan conduct business in another country You manufacture, distribute, and/or advertise in another country A country of future interest is known for counterfeiting or intellectual property infringement Your products come into contact with nationals from another country, e.g., through tourism Owning trademark registrations outside of the U.S. may be the only means of enforcing trademark rights. Unlike the U.S., many countries recognize trademark rights based on the first-to-file, rather than the first-to-use. Additionally, most international countries do not require use of a mark prior to issuing a registration; meaning, you can effectively reserve your brand name for 3-5 years (depending on the country), when a registration could become vulnerable for non-use. Keep in mind, if you file international applications in most other countries within 6 months of the filing date of a U.S. application, your international applications may obtain the filing date of the U.S. application for priority. This is because the U.S. is party to the Paris Convention treaty, which allows applicants to obtain their U.S. filing date as the priority date in many foreign countries that are also parties to the Paris treaty. There are two main ways to apply to register a trademark and obtain international protection: (1) filing an application through the World Intellectual Property Office (WIPO), aka “Madrid system,” based on a prior-filed U.S. application/registration, or (2) filing a “national application” directly through a country’s trademark office. A third...

Guest Blog: Opportunities in Canada: Intellectual Property Protections

By: Christopher N. Hunter, Partner, Norton Rose Fulbright  & Fahad Diwan, Articling Student, Norton Rose Fulbright The expected legalization of cannabis in Canada this summer presents unique opportunities for cannabis companies from Canada, the United States and abroad. Most importantly, cannabis companies can register trademarks in Canada that are expressly associated with cannabis. The Canadian Intellectual Property Office (CIPO), the authority responsible for regulating trademarks, permits applicants to apply for trademarks covering all types of cannabis goods or services. This differs from the U.S., where the United States Patent and Trademark Office bars applicants from expressly identifying or implying the applied-for goods or services that “touch the plant.” With new amendments to the Canadian Trademarks Act (the Act), businesses with a license to produce cannabis and cannabis-based products may apply for trademarks for a wide variety of cannabis products without first having sold the underlying products. The amendments remove the ‘use’ requirement from the trademark registration process (this amendment is expected to come into force in 2019), allowing Applicants to register a trademark without demonstrating that they have used it in association with their goods or services. Accordingly, cannabis businesses will be able to obtain trademark protection on a variety of products without first having to develop the product and test it in the marketplace. Irrespective of the proposed amendments, cannabis businesses presently do not need to wait for legalization to register and protect their trademark rights as Canada allows businesses to file applications based on proposed use. The amendments to the Act will also permit cannabis businesses to register a variety of non-traditional marks. Once the amendments are in...