Canada's new Trademarks Act is expected to be in place in February 2019
In
June of 2014 the Canadian Government signed into law legislation
overhauling the Canadian Trademarks
Act. The changes to
the Act
pave the way for Canada joining the Madrid Protocol and Nice
Classification system. In addition “use” as a prerequisite to
registration in Canada has been eliminated. In the intervening
years, the Trademarks Office has been working on the critical
regulatory and system changes needed for implementation and the new
law is now expected to be in place in February 2019. Below are the most interesting changes and some suggestions for action going forward.
The Elimination of the “Use” Requirement
Under
the changes to Canada’s trademark laws, registration is available
whether or not the mark has been used in Canada or elsewhere. The requirement to declare a specific filing base for
applications has been eliminated; applications will include a standard statement that the applicant
has used or intends to use the mark in Canada.
Declarations
of Use will no longer be required and there are no maintenance
requirements based on use. Nevertheless, use will remain a
crucial element for protection and enforcement of marks. Indeed CIPO
has stated that without use no action for enforcement is available
within the first three years after registration.
Adoption of the Nice Classification System
Additional
fees will be charged for each class over one at both filing and
renewal.
The combined
filing and registration fee will be CDN $330 for the first class and
CDN $100 for each additional class. Since
the application fees will be higher after the new Act
comes into force (CIF), applicants who are planning to apply for a
trademark claiming more than two classes of goods or services should
consider filing the application before the CIF date to take advantage
of the lower fees. Such applications will not be subject to the
current use requirements (so long as CIF is not significantly
delayed).
The Renewal
fee will be CDN $400 for the first class, and CDN $125 for each
additional class. Since
the renewal fees will be higher after the new Act comes into
force, it is possible that trademark owners may save money by
renewing a registration early if the registration covers multiple
classes of goods or services. CIPO has provided inconsistent
information as to whether owners completing renewals before the CIF
date will be required to pay the difference in the renewal fee if the
renewal fee is greater under the new tariff of fees.
Shortened Renewal Period
Registration
and Renewal
terms
have been shortened to 10 years. Since
the renewal period will be
shortened from 15 to 10 years after the new Act comes into force, it
is possible that trademark owners can obtain the longer renewal
period by renewing a registration before CIF. CIPO has provided
inconsistent information as to whether owners completing renewals
before the CIF date will be accorded the longer renewal period.
Adherence to the Madrid Protocol
Foreign
applicants will now be able to secure protection in Canada under the
Madrid Protocol.
Introduction of Letters of Protest.
Third
parties will be able correspond with an Examiner to raise
registrability concerns about others' application at any point from
filing to publication.
Division of Applications.
Goods
and services in an application may be divided into two or more
applications during examination and opposition.
Associated Marks
Transferring
ownership of associated marks will now be permitted.
