New Canadian trade mark legislation announced
Posted in | Jan 28, 2019
From 17 June 2019, there will be significant changes made to trade mark law in Canada. These changes aim to modernise Canada’s intellectual property system and will enable them to meet the requirements for joining several international IP treaties.
Below we have outlined some of the key changes and the impact these will have on rights holders.
Elimination of the use requirement
From 17 June 2019, proving “use” will no longer be a requirement for trade mark registration in Canada. Any pending applications at this date will be able to proceed to registration simply by paying the registration fee. The elimination of the use requirement brings Canadian law into line with that in the EU (and most other countries). A consequence, though, is that it will be easier for trade mark “trolls” to register trade marks which they have no intention of using.
As with other jurisdictions it is therefore recommended that brand owners file promptly and broadly to protect their trade marks in Canada. Trade mark monitoring should also be considered.
We recommend that you now review your trade mark protection in Canada. The use requirement may be mean that protection you currently own in Canada is not as broad as you would ideally like.
Adoption of the Nice Classification system
Currently, goods and services in a Canadian trade mark application do not need to be classified and there is a flat filing fee regardless of the number of classes applied for. From 17 June 2019, goods and services in trade mark applications will need to be classified according to the Nice Classification system, as with trade mark systems in the EU most of the rest of the world.
Owners of existing Canadian trade mark registrations will be required to classify their goods and services by the first or next renewal. As a result, trade mark filing and renewal fees are set to increase.
If you are considering filing new trade mark applications in Canada with covering goods and/or services in multiple classes, it may be worthwhile filing before 17 June 2019 to take advantage of the current, lower, fee regime.
Similarly, where possible, you should consider renewing existing trade mark registrations before 17 June 2019 to benefit from lower renewal fees.
Term of registration reduced from 15 years to 10 years
Trade mark registrations in Canada currently need to be renewed every 15 years. From 17 June 2019, this will be reduced to every 10 years, again bringing Canada into line with the EU and much of the rest of the world.
Trade marks which are registered before the changes take effect will remain in force for 15 years until their next renewal date. Registration granted (or renewed) after 17 June 2019 will remain in force for 10 years.
As of 17 June 2019, Canada will become a member of the Madrid Protocol so trade mark protection can be sought cost-effectively in Canada via an international trade mark registration.
Non-traditional trade marks and distinctiveness
The definition of a trade mark will be expanded to include more non-traditional marks such as sounds, holograms, moving images, scents, tastes, three-dimensional shapes, mode of packaging goods, textures, or positioning of a sign. Trade mark examiners will, however, be given greater ability to reject applications that are deemed to be non-distinctive and challenge applicants to show that the mark has acquired distinctiveness (e.g. that the sign is capable of distinguishing your goods and services from other similar products and services) before it can be registered.
Divisional applications to be permitted
Under the new law, it will be possible to divide your trade mark application so that if certain goods and services are objected to or opposed, the rest of the application can proceed to registration without delay.
All of these changes are broadly to be welcomed in bringing Canadian trade mark law into line with that of other important territories.
If you would like to discuss your existing trade mark protection in Canada, or are considering seeking protection there, please get in touch to speak to one of our trade mark attorneys.