The long awaited implementation of Canada’s new trademark legislation has been set to June 17, 2019. The Canadian Trademark Act and Regulation have been endowed with significant revisions that will have a huge global impact on trademark protection strategies in Canada. At the same time, the changes to the law will facilitate in many ways trademark filings and registration.
June 17, 2019, is also the date when Canada will accede to major international treaties including the Singapore Treaty, the Madrid Protocol, and the Nice Agreement that will help harmonize intellectual property protection practices in Canada.
We have identified the following most significant changes that will affect your trademark protection strategies in Canada:
1. Filing and prosecution
As of this date, use of a trademark will no longer be a requirement for filing and a Declaration of Use will not be required for registration for all new and pending applications. Since this simplifies the filing procedure, it will likely also increase the number of filings, including many trolling activities. Accordingly, it will be important to implement trademark monitoring services in Canada in order to proactively take action against trolling or any similar trademarks.
2. Madrid Protocol
Besides filing applications directly with Canadian Intellectual Property Office (CIPO), Canadian applicants will be able to extend their home applications to other countries, members of the Madrid Protocol, through World Intellectual Property Association (WIPO). Similarly, applicants from other countries will be able to designate Canada when filing their international trademark applications with the International Bureau of WIPO, which would allow significant cost saving and simplified portfolio management.
3. The Nice Classification
The Nice Classification system will be applicable in Canada as well, which will make trademark portfolios more harmonized. CIPO has already been encouraging voluntary classification to simplify the process and avoid missing a classification deadline later on when the Nice Classification becomes mandatory.
As of June 17, 2019, the Canadian trademark law will change significantly. For trademark owners that file in numerous classes, it might be more advantageous to proceed with the multi-class filings before that date.
4. The definition of a trademark
The definition of a trademark has been expanded to include color per se, 3D shapes, holograms, motion images, sounds, scents, tastes, textures, etc.. Nevertheless, the registration of non-traditional trademarks will likely be rendered difficult due to the examination for distinctiveness that has also been expanded in scope.
5. Division of applications
It will be possible to divide applications, which may be beneficial during prosecution or opposition proceedings in case some of the goods or services are objected or opposed.
6. The term of protection
The trademark protection term has been reduced from 15 years to 10 years, and renewal fees will increase as per below.
There will no longer be an official registration fee, however fees per class will be introduced. The trademark application fee will be $330 CAD for the first class, and $100 CAD for each additional class, as opposed to the flat fee of $250 currently in place. The renewal of trademark registration will also increase from the current flat fee of $350 CAD per trademark, to $400 CAD for one class and $125 CAD for each additional class. Therefore, for trademark owners that file in numerous classes, it might be more advantageous to proceed with the multi-class filings prior to June 17, 2019.
Vanja is a European Trademark and Design Attorney at Dennemeyer & Associates and active in IP
law since 2010. Her area of expertise is trademark and design law, international public and private
law and anti-counterfeiting. She holds a Bachelor in Communications and Law, as well as an LL.M. in
International Law and has acquired experience in various IP issues at the European Commission.
Currently, she represents and advises clients ranging from start-ups to large corporations in
trademark and design prosecution and enforcement.
The authors contribute to this blog in their personal capacity. The views expressed are their own and do not necessarily represent the views of Dennemeyer IP Solutions, Dennemeyer & Associates, or Dennemeyer Consulting.