Friday, August 3, 2018
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.
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.
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.
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.
Foreign applicants will now be able to secure protection in Canada under the Madrid Protocol.
Third parties will be able correspond with an Examiner to raise registrability concerns about others' application at any point from filing to publication.
Goods and services in an application may be divided into two or more applications during examination and opposition.
Transferring ownership of associated marks will now be permitted.