Key Changes in Canadian Trademark Law – Implementation Date: 17th June 2019
For those client’s who trade ‘across the pond’ in Canada, today marks the day where some significant changes to the Canadian Trademarks Act are being implemented. Furthermore, as of today, Canada formally becomes a member of the “Madrid Protocol” (the International Registration system), as well as the Singapore Treaty of the Law of Trademarks and the Nice Agreement Concerning the International Classification of Goods and Services.
Below is a summary of the main changes to the Canadian Trademarks Act:
Until now, Canada has not adopted any kind of classification system and applications could be filed for many different types of ‘wares’ and/or ‘services’ for a single fee. However, Canada has now adopted the Nice Classification system which, is an International Classification system for goods and services, adopted by most countries around the world. Applications will now need to be filed in the relevant class and applications covering multiple classes will incur additional class fees.
Renewal Fees, like filing fees, will now be payable on a per class basis.
Historically, Canadian Trade Mark registrations fell due for renewal every fifteen years. The renewal term has, however, now been reduced to ten years and renewal will only be possible up to six months in advance.
When filing an application in Canada, it has always been necessary to state whether it was based on actual use, or an intention to use the mark, in Canada. If filed on the basis of intent to use, then the mark would not be registered until it was actually used in relation to the goods/services claimed in the application. These use requirements for registration have now fallen away. That is not to say that you should file defensively, and/or with no intention to use the mark, since registrations will become vulnerable to cancellation for non-use if they are not used within 3 years of registration and will still be able to be challenged on the basis of an absence of intent to use. However, it does mean that the requirement to prove use in order to secure registration, has been abolished and Applicants will no longer incur fees in the preparation and filing of Declarations of Use.
The Canadian Trademarks Act was amended in 2018 to enable registrations to be invalidated on the ground of bad faith. However, this has now be expanded and bad faith will now be a ground for opposing trade mark applications. This ground can, therefore, be used to challenge applications which are deemed to have been filed without any intention to use (which is important now that the use requirements for registration have been abolished). It can also be used to challenge unduly wide specifications of goods/services or applications filed by potential “squatters”.
Further Points to be aware of:
Accession to the Madrid Protocol
Today also marks the day that Canada joins the Protocol relating to the Madrid Agreement Concerning the International Registration of Marks (“Madrid Protocol”) and you will, therefore, now be able to designate Canada as part of any application for International Registration (or in a request for subsequent designation in connection with an existing International Registration). It also means that Canadian Applicants will be able to file International Registrations, based on a ‘home’ Canadian application or registration.
Progression of a Canadian Trademark application (whether filed nationally or via the International system) is much slower than in comparison to applications filed at the UK or EU. Currently it takes between 12-14 months for a Canadian Trademark application to be examined, and opposition proceedings can take years to resolve. If using the Madrid Protocol to designate Canada, applicants should expect to receive a provisional refusal within 18 months.
The Nice classification system is only a guide to the classification of goods and services and individual countries interpret the guidelines differently. Terms and specifications which have been accepted by the Intellectual Property Offices in the UK and EU may not necessarily be accepted by the Canadian IPO and it is not unusual to receive classification objections. Normally we can tweak the specification to make it acceptable, but do not be surprised to receive a request to clarify terminology, in connection with an application filed in Canada.
If you would like to discuss Trade Mark protection in Canada or elsewhere, please contact us at email@example.com or on +44 (0) 121 296 9164.