Canada's new trademark laws to make a significant impact

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Intellectual Property and Technology Alert

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Long awaited amendments to Canada’s trademark laws are set to come into force on June 17, 2019. The amendments will significantly alter the Canadian trademarks system as we know it. While some of the changes will benefit registrants, others will raise significant challenges. The following is a summary of the main changes which could affect you and your business:

  • Nice:  Canada will implement the Nice Agreement, requiring applicants to group their goods and services into international classes and pay additional government fees for each of those classes. However, applications filed prior to June 17 will be charged the current government filing fee regardless of how many products and services are included in the application, which will be significantly less expensive than the new fees, particularly for multi-class applications.
  • Registration Term:  The length of a trademark registration in Canada will be reduced from 15 years to 10 years. Renewal fees will also increase significantly. Existing registrations can be renewed prior to June 17 to avoid the higher renewal fees (even if the existing registrations are not due for renewal for 14+ more years);  however, the renewal term will be 10 years for registrations that were not due for renewal prior to June 17.
  • New Types of Marks:  New types of trademarks, such as holograms, scents, sounds, tastes, textures, moving images and colour per se, will be registrable.
  • Use:  One of the most controversial changes is that applicants will no longer be required to use their marks in Canada as a prerequisite to registering their marks in Canada. This change will significantly increase the number of conflicting marks on the Canadian register. It will also increase the number of objections, oppositions and disputes in Canada, and will make trademark clearance more difficult and expensive. Accordingly, it will become more important than ever to use trademark watching services to monitor the register for conflicting applications. 
  • Opposition:  There will be new grounds of opposition, some of which could slightly soften the impact of the changes to the “use” requirements. In particular, an opponent will be able to oppose an application based on bad faith filing, or on the basis that the applicant wasn’t using the mark and didn’t intend to use the mark in Canada. 
  • Distinctiveness: Examiners will be able to object to an application on the basis of distinctiveness, and can require that applicants submit evidence of a mark’s distinctiveness. This is most likely to happen for the new types of marks, such as sound, scent, and taste trademarks.
  • Division:  Applicants will be able to divide their applications, which is particularly useful if there is a problem with some of the goods and services in the application.
  • Madrid:  Canada will implement the Madrid Protocol, allowing foreign applicants to extend their international applications into Canada, and allowing Canadian applicants to extend their applications internationally. 
  • Priority: Eligible applicants will be able to claim priority based on a prior application for the same mark in association with the same goods and services in other eligible countries, even if the applicant doesn’t have a real and effective commercial establishment in those countries. 
  • Assignments and Mergers: Recordal of assignments and mergers filed by the existing owner of a mark will no longer require documentary proof, unless requested by the Canadian Trademarks Office.

Many of the upcoming changes should encourage numerous applicants to file their Canadian applications soon to avoid the undesirable changes in the new legislation while still taking advantage of the positive changes that will apply after the applications have been examined and allowed.

Recommendations

The following are a list of recommendations which could assist you and your organization to navigate the pitfalls of the upcoming changes:

  • Current Registrations:  Consider renewing your current registrations now, even for registrations that won’t expire for 14 more years. It will save you money, particularly for multi-class registrations.
  • Allowed Applications:  Consider registering your allowed applications now. This will give you the 15-year registration period rather than the new 10-year period.  However, you will still be required to file a declaration of Canadian use for the mark if the application was filed on an the basis of intended use in Canada. 
  • New Applications:  Consider filing new Canadian applications now. This will save you money, particularly for multi-class applications. 
  • Clearance Searches:  Consider conducting comprehensive clearance searches before selecting a new mark. This will help you identify potential issues before investing in the mark.
  • Watch Services:  Consider setting up watch services to monitor the Canadian Trademarks Office for confusingly similar marks filed by third parties. This will be critical after the “use” requirement has been abolished from Canadian law.

For further information on the upcoming changes to trademark laws please contact a member of our Canadian trademark team. 

This article provides only general information about legal issues and developments, and is not intended to provide specific legal advice. Please see our disclaimer for more details.