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Changes to Canadian Trademark Law

In preparation for Canada’s 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 new regime has now officially come into force, along with new supporting regulations and practice notices, as of June 17, 2019.

Below is a list of downloads and resources that we have made available to better understand these upcoming changes, and how they may affect applicants.

On-Demand Webinars

Changes Coming to Canadian Trademark Law

Date: 27 February, 2019

Length: 46 min with Q&A

Category: Trademarks

Presented by: Elliott Gold

Changes Coming to Canadian Trademark Law

Agenda:

An overview of important changes:

  • Recommendations for Canadian and Global Brand Protection and Enforcement
  • Recommended steps for brand owners to take before the changes come into force on June 17, 2019
  • Immediate issues to consider – how they may affect you
  • Changes to fees
  • Elimination of use requirement
  • Implementing Nice Classification
  • Joining the Madrid Protocol

Downloads

Top Ten Reasons for Protecting Intellectual Property

Download Link

Changes to Trademarks Law - KEY TAKEAWAYS: Our immediate suggestions and actions to take

Download Link

Updates

There are several aspects of Canada's trademark registration process that are challenging, as compared to other countries. Because Ridout & Maybee LLP has been operating for over 125 years, we have developed practical solutions for dealing with these complications. While our clients’ associated frustrations have not been eliminated, we are happy to report that we have been able to drastically reduce them.

In a notice dated March 16, 2020, the Canadian Intellectual Property Office has announced that they are invoking “unforeseen circumstances” and “public interest” provisions to implement extensions of time limits for all deadlines fixed under the Patent Act, the Trademarks Act, and the Industrial Design Act.

As discussed previously, significant changes are coming to Canada’s trademark legislation, including an overhaul of use requirements and the adoption of the Madrid System.

On November 9, 2016, final amendments to the Regulation respecting the language of commerce and business and the Regulation defining the scope of the expression “markedly predominant” for the purposes of Charter of the French Language were published and registered in the Gazette officielle du Québec.

The International Classification of Goods and Services for the Purposes of the Registration of Marks was established by the Nice Agreement concluded on June 15, 1957. The 11th Edition of the Nice Classification, as it also is known, came into effect on January 1, 2017.

On August 26, 2016, the United States Court of Appeals for the Ninth Circuit issued the decision in the case of Trader Joe’s v. Michael Norman Hallatt, holding that the Lanham Act may be enforceable in cases even where most of the defendant’s infringing acts happen in Canada.

Doing business in Québec can sometimes pose unique challenges for trademark owners. The Québec Charter of the French Language defines French as the official language of Québec, including as the language of business and commerce.

The Canadian Intellectual Property Office (CIPO) has confirmed what many have suspected. Class-based fees are coming to Canada. As a result, Applicants with multi-class applications may benefit from filing now, before these changes come into effect, likely in 2018.

The historic United Kingdom vote to leave the European Union will have resounding effects, including upon some forms of intellectual property rights. At present there is tremendous uncertainty over what will happen next in the process, but the following is based on preliminary comments that we have received from our UK and European colleagues on the issue.

The most important changes include: (a) goods and services that are currently described using just a category heading (that is, without listing each type of product encompassed by the heading) will be limited to those specific goods identified in the heading unless a broader description is submitted by September 24, 2016;

Bill C-59, the Economic Action Plan 2015 Act, No 1, received Royal Assent on June 23, 2015 and has passed into law. The Bill presents amendments which introduce several changes to the Patent Act, Trademarks Act and Industrial Design Act.

The owner of a Canadian trademark registration can now file a Request for Assistance (RFA) application with the Canada Border Services Agency (CBSA), as can the owner of a registered or unregistered copyright.

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”).

On January 27, 2014, five multilateral treaties pertaining to patents, trademarks and industrial designs were tabled before the Canadian Parliament, thus beginning the process of ratifying and implementing these treaties.

The Internet Corporation for Assigned Names and Numbers (“ICANN”) is currently overseeing a process by which new generic top level domains (“gTLDs”) will be made available to the public.

As in the United States, Canadian trademark applications must contain a basis for registration (a claim to the right to register). Amongst these possible bases is use and registration in applicant’s country of origin pursuant to the provisions of Section 16(2) of the Trademarks Act.

The Canadian Government introduced Bill C-56 on March 1, 2013. The Bill focuses on curtailing counterfeit activity and amends the Copyright Act and the Trademarks Act to add new civil and criminal remedies and new border measures in both Acts, in order to strengthen the enforcement of copyright and trademark rights.

The Canadian Trademarks Office now is accepting applications for sound marks.

In September 2011, the rollout of the .xxx domain will commence. Domain names incorporating the .xxx top level domain (“TLD”) are intended to be used for adult entertainment websites. However, brand owners outside of the adult entertainment industry should take notice since a party may attempt to register a .xxx domain name incorporating a brand owner’s trademark.

Recently, the Internet Corporation for Assigned Names and Numbers (“ICANN”) voted to accept applications for new top level domains (“TLDs”).

In its May 26, 2011 decision, the Supreme Court of Canada reversed the Federal Court’s finding of no likelihood of confusion between Alavida’s registered trademark MASTERPIECE LIVING and Masterpiece Inc.’s previously-used trademark MASTERPIECE ART OF LIVING.

On April 26, parties who own a registered trademark in any jurisdiction may apply for a .co domain name. .co is formerly the top level country code for Columbia and .co domain names are regarded as having some value as an abbreviation for the term “company”. 

The Canadian Intellectual Property Office recently published a new practice notice titled “Extensions of Time in Examination”, which takes effect on March 11, 2010.

The plaintiff Atomic Energy of Canada Limited (AECL) was a Canadian crown corporation. The defendants AREVA and AREVA Canada were, respectively, a French majority state-owned corporation and its Canadian subsidiary. The parties competed in the provision of nuclear wares and services. All existing nuclear reactors in Canada used AECL’s CANDU technology.

Facebook recently announced that as of 12:01 AM EDT on Saturday June 13, 2009, it will permit users to register personalized usernames as URLs.

The Canadian Intellectual Property Office has recently published a new practice notice entitled “Practice in Trademark Opposition Proceedings” which, effective March 31, 2009, introduces a number of changes to opposition proceedings in Canada. 

What is a .TEL Domain Name? .TEL domain names will permit owners to manage and exchange contact information about people and companies.

Effective October 1, 2007, trademarks opposition practice in Canada is changing in several respects, most of which relate to the length of time for taking particular steps in the proceedings.

In a surprising turn of events, the Canadian Trademarks Office has reversed its practice with respect to disclaimers.