IP NEWS

Major Changes to Canadian Trademark Registration System On The Way

08/10/2014

In preparation for Canada’s upcoming adherence to the Madrid Protocol and Singapore Treaty (together, the main system for registering trademarks in multiple jurisdictions), substantial amendments to the Trademarks Act were passed into law in June 2014 (“2014 Amendments”). The new regime will come into effect when the Canadian Intellectual Property Office (“CIPO”) has prepared the supporting regulations and practice notices, which is expected to occur by early- to mid-2018.

Here are the most significant changes:

No Use Information or Declaration Required for Filing or Registration. Under the old system, applicants needed to indicate whether the trademark to be registered had been used in Canada and if so, the date of first use. In order to rely on a foreign registration, the trademark had to be in use somewhere. Gathering this information could delay filing, and incorrect information could form the basis of an opposition. Under the 2014 Amendments, no use information will be required for filing. An application may be filed if the applicant has used or intends to use the mark in Canada. Actual or intended use need not be specified. It no longer will be possible to file an application based on use and registration abroad. A Declaration of Use no longer will be required before a proposed use application goes to registration. The new single basis of application does not alter the first-to-use entitlement regime that has always been in effect in Canada. As before, an application may be opposed on the basis of prior use, filing or registration. CIPO will continue to examine applications for confusion with pending and registered trademarks, as well as other registrability issues such as descriptiveness.

Adoption of Nice Goods and Services Classification System. Until the 2014 Amendments, Canada was one of the few countries that did not follow the Nice classification system. When the 2014 Amendments come into force, Applicants will have to classify their goods and/or services according to Nice. Presumably, there will be increased government filing fees depending on the number of classes involved. (Until now, there have been no additional fees when applications cover goods and services falling into multiple classes.) Owners of existing registrations may be required to classify their goods and services according to Nice.

Expansion of Definition of “Trademark”. The definition of “Trademark” is expanded to include the following: word, personal name, design, letter, numeral, colour, figurative element, three-dimensional shape, hologram, moving image, mode of packaging goods, sound, scent, taste, texture and the positioning of sign.

Examiners Can Raise Distinctiveness Issues. Under the old system, with some exceptions, examinations were confined to confusion and other registrability issues such as descriptiveness (in addition to technical issues such as the description of goods and services). When the 2014 Amendments come into force, Examiners will be able to make distinctiveness objections against any application and require proof of distinctiveness at the examination stage.

Divisional Applications Permitted. Prior to the 2014 Amendments, a confusion citation (or other registrability objection or opposition) against an application for a broad range of goods and services would hold up the entire application. Now, by creating a divisional application, the problematic portion of the application can be carved out and dealt with separately so that the rest of the application can proceed to registration.

Duration of Registration Shortened. The term of registration will be reduced from 15 years to 10 years.

Changes in Terminology. “Trademark” will now be spelled as one word, rather than the hyphenated “trademark” in use since 1990s. In addition, “goods” will now be used instead of “wares”.

Other aspects of the Canadian trademark regime remain unchanged. For example, summary non-use cancellation proceedings cannot be commenced until 3 years after a registration has issued. As before, a registration may be renewed without filing proof of use, or even asserting use.

We are carefully monitoring CIPO’s progress as it moves toward implementation of the 2014 Amendments. We will keep our clients and colleagues informed of developments as they unfold. This is an exciting period of change for Canada’s trademark registration system, and we are committed to ensuring our clients’ rights are protected and enforced to the greatest extent permitted by the new law.

For more information on the Canadian trademark registration system, please contact one of our professionals.

This article is for information purposes only and does not constitute legal or professional advice.

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