As reported in our Alert of April 1, 2014, the Canadian government has been moving quickly to make amendments to the Trademarks Act.

Bill C-31, the omnibus budget implementation bill, which includes significant and several controversial changes to the trademarks regime in Canada, passed Third Reading in the Senate on June 18, 2014, and has now received Royal Assent.

Three key changes to note are:

  1. there will be no need to confirm use in Canada prior to registration. Registrations will issue once the period for oppositions has passed, without the need to file a Declaration of Use or a specimen of use. Neither applicants nor registrants are required under the Act to indicate a date of first use. We understand that regulations implementing the Act may ultimately incorporate the requirement to provide a first use date, but it is unclear at what stage that information would be provided, and applicants will nevertheless be able to obtain registrations without use anywhere in the world.
  2. Canada will finally be adopting the Nice Classification of goods and services. Trademark applications may become more expensive to prosecute, particularly for Canadian entities who have never before had to classify their goods and services using the Nice system. Also, applications may ultimately be more expensive to file in Canada, if a fee per class system is implemented, which we understand is under discussion.
  3. the term of registration will be decreased from 15 years to 10 years. It has yet to be determined whether the registration fee will decrease accordingly, although we understand that may be the case.

In the wake of these substantial changes, the new Canadian trademark landscape is likely to be fraught with uncertainty in the short term, though hopefully the regulations will provide further guidance to business owners for navigating the new regime. In the meantime, given that the question is now when, rather than if, these changes will be implemented, we recommend that businesses both inside and outside of Canada carefully consider where they stand vis-à-vis trademark protection, and whether there is additional protection that should be sought prior to implementation of these sweeping changes, particularly given the related potential increase in costs.

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