Nov 21 2018
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. The federal government recently announced that the new regime will come into force, along with new supporting regulations and practice notices, on June 17, 2019.
Here are the most significant changes and our recommendations:
No Use Information or Declaration Required for Filing or Registration.
Under the current system, applicants need to indicate whether the trademark to be registered has been used in Canada and if so, the date of first use. In order to rely on a foreign registration, the trademark has to be in use somewhere. After June 17, 2019, no use information will be required:
- actual or intended use will no longer need to be specified at the time of filing.
- it will no longer be possible to file an application based on use and registration abroad.
- a Declaration of Use will no longer be required to advance to registration (applies to both new and pending applications as of June 17, 2019).
Filing activity from “trademark trolls” is already on the rise in Canada as a result of the pending elimination of the use requirement. In view of the elimination of the use requirement, we recommend brand owners file promptly and broadly to protect their trademarks 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.
Currently Canada is one of the few countries that does not follow the Nice Classification System. As of June 17, 2019, Applicants and Registrants will have to classify their goods/services according to Nice. As a result, there will be increased government filing fees, both for a basic application in one class and for each additional class of goods/services.
Government application filing fees will be $330 CAD for the first class, and $100 CAD for each additional class. The current filing fee is $250 CAD, regardless of the number of classes. Applicants considering new multiple class applications are encouraged to file prior to June 17, 2019.
Duration of Registration Shortened.
The term of registration will be reduced from 15 years to 10 years.
Owners of existing registrations will also be required to classify their goods and services according to Nice at least by the first or next renewal. After June 17, 2019, the registration renewal fee will be $400 CAD for the first class, plus $125 CAD for each additional class. The current renewal fee is $350 CAD regardless of the number of classes. Trademark registration owners should consider renewing and voluntarily classifying their registrations before June 17, 2019.
Expansion of Definition of “Trademark”.
The definition of “Trademark” will be 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. We recommend reviewing your trademark portfolios to ensure complete protection.
Examiners Can Raise Distinctiveness Issues.
Under the current 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). As of June 17, 2019, Examiners will be able to make distinctiveness objections against any application and require proof of distinctiveness at the examination stage.
Divisional Applications Permitted.
Under the current system, 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. As of June 17, 2019, Applicants will be able to divide portions of their applications such that problematic portions can be carved out and dealt with separately while the rest of the application proceeds to registration. Divisional applications also can be a useful strategy for resolving disputes, such as in the context of opposition proceedings.
As of June 17, 2019, Canada will become a participant in the Madrid Protocol, a system which allows the filing of a single trademark application (through the World Intellectual Property Organization (WIPO)) and provides protection through designation of up to 116 countries. We recommend reviewing your trademark portfolios to ensure complete protection in Canada and abroad.
We will keep you apprised of all developments and provide our recommendations as we move toward June 17, 2019 and beyond. 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 and changes that are coming, contact one of our professionals
This article is for information purposes only and does not constitute legal or professional advice.
Authors: Elliott Gold, Joanna Pitkin, Janet Fuhrer (former partner)
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Tags: Advertising & Marketing, Joanna Pitkin, Madrid Protocol, Nice Classification System, Trademark Trolls