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Imminent Changes to Canada’s Trademark Law

Imminent Changes to Canada’s Trademark Law

On June 17, 2019 a new trademark regime comes into force in Canada.  These changes are being adopted to align Canada with international standards and obligations.  This new regime contains several fundamental changes to our current trademark law that businesses should be aware of.  Some of the key changes are summarized below:

  • Expanded Definition of Trademark: The definition of a trademark will be expanded to include more non-traditional marks including holograms, moving images, scents, tastes, colour alone, and texture.  Such non-traditional marks must be distinctive at the time of filing in order to be registrable.
  • Adopting Nice Classification for Goods and Services: As of June 17, goods and services in a trademark application must be classified in accordance with the Nice Classification system which categorizes all goods and services under 45 different international classes.  This brings Canada in line with most other industrialized countries.
  • Increased Filing Fees: Presently, there is a flat rate of CDN$250 government filing fee regardless of the number of goods and services listed in a trademark application.  As of June 17, government filing fees will increase with the implementation of the Nice Classification system, namely CDN$330 for the first class and CDN$100 for each additional class of goods and services.
    • Cost Saving:  For applications covering multiple international classes, consider filing now under the present trademark regime to avoid the upcoming increased filing fees.
  • Use Requirement is Removed: Presently, an applicant must rely on use of the applied-for-trademark in Canada, or proposed use in Canada, or use outside of Canada when filing a trademark application.  On June 17, this “use” requirement will be removed.  Use of the trademark in Canada will remain relevant for entitlement and enforcement purposes.
  • Declaration of Use No Longer Required: Filing a Declaration of Use will not be required for new and pending applications.
    • For those applicants who filed based on “proposed use” in Canada and who have not yet used the trademark in Canada with all the goods and services listed in their pending application, they may wish to wait until after June 17 at which time filing a Declaration of Use will no longer be required. This way, you may obtain a registration without limiting the scope of the goods and services.
  • Divisional Applications Possible: It will become possible to divide applications in Canada which will be of strategic advantage during the prosecution and oppositions.
  • Canada adopts the Madrid Protocol: Canada becomes a member of the Madrid Protocol.  The Madrid Protocol enables Canadians to seek trademark protection in a number of countries by filing a single international application with the World Intellectual Property Organization (WIPO).  The system offers a simplified application process and cost savings for foreign filings.  Under the Madrid Protocol, Canadians need to first have a “home-country” application.
    • Consider filing Canadian trademark applications for your key trademarks and thus have “home-country” applications filed which can be relied upon to take advantage of the Madrid Protocol.
  • Registration & Renewal Changes:
    • Registration Fee Removed: The current CDN$200 government registration fee will not be required for new applications.
    • Term Reduced to 10 years: The term of registration will be reduced from the current 15 year period to 10 year period for new registrations.
    • Government Renewal Fees to Increase: Presently, the government fee to renew a registration is a flat rate of CDN$350 (online) regardless of the number of goods or services.  This will increase to CDN$400 for the first international class of goods or services and CDN$125 for each additional international class.
      • Cost Saving: To avoid the increase in government filing fees, trademark owners may wish to renew registrations before June 17.

CONCLUSION

If you wish to find out more about trademark strategies in light of the imminent changes to Canada’s trademark law, please contact Ahmed Bulbulia at Pallett Valo LLP at abulbulia@pallettvalo.com or by telephone at 905.273.3022 ext. 211.

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Haig DeRusha, DeRusha Law Firm